DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-10 of U.S. Patent No. 11,703,173; Claims 1-25 of U.S. Patent No. 8,998,538; and Claims 1-15 of U.S. Patent No. 12,292,152. Although the claims at issue are not identical, they are not patentably distinct from each other because they are all drawn to an expander that receives a cable gripper therein, the expander also receiving a cutter and a hammer.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tjader (U.S. Patent Application Publication No. 2007/0048091).
As to Claim 1, Tjader discloses a pipe replacement device, comprising:
An expander (108);
A lateral (“Lateral” is relative to the position of the viewer) insertion pocket (406) in the expander (108);
A towing cable anchor (200; Paragraph 0024: “A collet 200 is shown at an end 202 of the cable 106. In another example, the collet 200 is placed at a point along a length of cable 106, for instance between a winch at one end of a pipe to be split and a spool of cable at the other end of the pipe. The collet 200 is sized and shaped to grasp the cable 106. As further described below, the collet 200 securely grasps the cable when the collet engages against an interior surface of the expander 108”) adapted to fit (at 408) within the lateral insertion pocket (406), wherein the towing cable anchor is adapted to grip a side surface (via 502) of a bare end of a towing cable (106; Paragraph 0037: “Optionally, the jaws 500 include a roughened interior surface 502 (e.g., serrations, knurling, projections and the like) configured to grasp the cable 106 and substantially prevent movement of the collet 200 along the cable 106, as described below”), and is removable from the towing cable (106); and
A jointed cutter (102) that abuts a front end of the expander (108).
As to Claim 2, Tjader discloses the invention of Claim 1 (Refer to Claim 1 discussion). Tjader also discloses wherein the towing cable anchor (200) includes a tapered wedge tightener.
As to Claim 3, Tjader discloses the invention of Claim 2 (Refer to Claim 2 discussion). Tjader also discloses wherein the tapered wedge tightener includes a threaded fitting (502) to actuate tightening.
As to Claim 4, Tjader discloses the invention of Claim 1 (Refer to Claim 1 discussion). Tjader also discloses further including a jack screw (204) to push the towing cable anchor out laterally from the lateral insertion pocket.
As to Claim 5, Tjader discloses the invention of Claim 2 (Refer to Claim 2 discussion). Tjader also discloses wherein the towing cable anchor (200) includes an outer surface that matches a tapered surface on the expander.
As to Claim 6, Tjader discloses the invention of Claim 1 (Refer to Claim 1 discussion). Tjader also discloses wherein the jointed cutter (102) abuts the front end of the expander using a ball joint (302).
As to Claim 7, Tjader discloses the invention of Claim 1 (Refer to Claim 1 discussion). Tjader also discloses further including at least one replaceable blade (104. The are capable of being replaced by cutting off an old blade and welding a new one in the same space) on the jointed cutter.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 8-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tjader (U.S. Patent Application Publication No. 2007/0048091) in view of Tjader (U.S. Patent Application Publication No. 2007/0036613) “Tjader 613”.
As to Claim 8, Tjader discloses a pipe replacement device, comprising:
A head unit (108);
A lateral (“Lateral” is relative to the position of the viewer) insertion pocket (406) in the head unit (108);
A towing cable anchor (200; Paragraph 0024: “A collet 200 is shown at an end 202 of the cable 106. In another example, the collet 200 is placed at a point along a length of cable 106, for instance between a winch at one end of a pipe to be split and a spool of cable at the other end of the pipe. The collet 200 is sized and shaped to grasp the cable 106. As further described below, the collet 200 securely grasps the cable when the collet engages against an interior surface of the expander 108”) adapted to fit (at 408) within the lateral insertion pocket (406), wherein the towing cable anchor (200) is adapted to grip a side surface (via 502) of a bare end of a towing cable (106; Paragraph 0037: “Optionally, the jaws 500 include a roughened interior surface 502 (e.g., serrations, knurling, projections and the like) configured to grasp the cable 106 and substantially prevent movement of the collet 200 along the cable 106, as described below”), wherein the towing cable anchor (200) is removable from a towing cable (106); and
A jointed cutter (102) that abuts a front end of the head unit (108).
However, Tjader is silent about the head unit for a reciprocating hammer. Tjader 613 discloses a reciprocating hammer (130) received in a head unit (120). Before the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art to provide a reciprocating hammer in the head unit. The motivation would have been to assist in the penetration of the cutter.
As to Claim 9, Tjader as modified teaches the invention of Claim 8 (Refer to Claim 8 discussion). Tjader as modified also teaches wherein the head unit includes a male thread (120) for coupling to a female thread (Thread inside 121) of a reciprocating hammer.
As to Claim 10, Tjader as modified teaches the invention of Claim 8 (Refer to Claim 8 discussion). Tjader as modified also teaches further including a jack screw (204) to push the towing cable anchor out laterally from the lateral insertion pocket (406).
As to Claim 11, Tjader as modified teaches the invention of Claim 8 (Refer to Claim 8 discussion). Tjader as modified also teaches further including an adapter component (314) to bridge a diameter between a first diameter of the jointed cutter (102) and a starting diameter of the head unit (108).
As to Claim 12, Tjader as modified teaches the invention of Claim 8 (Refer to Claim 8 discussion). Tjader as modified also teaches wherein the towing cable anchor includes an outer surface (Figure 5) that matches a tapered surface (408) on the head unit.
As to Claim 13, Tjader discloses a pipe replacement device, comprising:
A leading tapered head (108);
A lateral (“Lateral” is relative to the position of the viewer) insertion pocket (406) in the leading tapered head (108);
A towing cable anchor (200; Paragraph 0024: “A collet 200 is shown at an end 202 of the cable 106. In another example, the collet 200 is placed at a point along a length of cable 106, for instance between a winch at one end of a pipe to be split and a spool of cable at the other end of the pipe. The collet 200 is sized and shaped to grasp the cable 106. As further described below, the collet 200 securely grasps the cable when the collet engages against an interior surface of the expander 108”) adapted to fit (at 408) within the lateral insertion pocket (406), wherein the towing cable anchor (200) is adapted to grip a side surface (via 502) of a bare end of a towing cable (106; Paragraph 0037: “Optionally, the jaws 500 include a roughened interior surface 502 (e.g., serrations, knurling, projections and the like) configured to grasp the cable 106 and substantially prevent movement of the collet 200 along the cable 106, as described below”), and is removable from the towing cable (106); and
A jointed cutter (102) that abuts a front end of the leading tapered head (108).
However, Tjader is silent about a reciprocating hammer in the leading tapered head. Tjader 613 discloses a reciprocating hammer (130) received in a leading tapered head (120). Before the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art to provide a reciprocating hammer in the leading tapered head. The motivation would have been to assist in the penetration of the cutter.
As to Claim 14, Tjader as modified teaches the invention of Claim 13 (Refer to Claim 13 discussion). Tjader as modified also teaches wherein the towing cable anchor (200) includes a tapered wedge tightener (Figure 5).
As to Claim 15, Tjader as modified teaches the invention of Claim 14 (Refer to Claim 14 discussion). Tjader as modified also teaches wherein the tapered wedge tightener (Figure 5) includes a threaded fitting (502) to actuate tightening.
As to Claim 16, Tjader as modified teaches the invention of Claim 13 (Refer to Claim 13 discussion). Tjader as modified also teaches wherein the towing cable anchor (200) includes an outer surface that matches a tapered surface (408) on the leading tapered head (108).
As to Claim 17, Tjader as modified teaches the invention of Claim 13 (Refer to Claim 13 discussion). Tjader as modified also teaches wherein the towing cable anchor (200) includes a lateral cross section that substantially matches a lateral cross section (Figure 4B) of the lateral insertion pocket (406).
As to Claim 18, Tjader as modified teaches the invention of Claim 17 (Refer to Claim 13 discussion). Tjader as modified also teaches wherein the lateral cross section is substantially rectangular (Figure 4B).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWIN J TOLEDO-DURAN whose telephone number is (571)270-7501. The examiner can normally be reached Monday through Friday: 10:00AM to 6:00PM EST.
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/EDWIN J TOLEDO-DURAN/Primary Examiner, Art Unit 3678
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