DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claim 3 is objected to because of the following informalities:
Line 4 – add --a-- between “at” and “second”.
Correction is required.
Claim 7 is objected to because of the following informalities:
Applicant is advised that should claim 6 be found allowable, claim 7 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 706.03(k)..
Correction is required.
Claim 13 is objected to because of the following informalities:
Lines 4-5 – add --a-- between “at” and “second”.
Line 6 – replace “its larger diameter” with --the larger outer diameter--.
Line 6 – delete “end” between “tube” and “portion”.
Line 7 – replace “its” before “smaller” with --the--.
Correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4-7 and 17 are rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 4 recites “The collar of claim 3, wherein said first section is generally triangular in said cross-section defining a tapered surface reducing in diameter in an axial direction”. However, claim 3, from which claim 4 depends, has already set forth the same limitation. Therefore, claim 4 fails to further limit the subject matter of claim 3 from which it depends.
Claims 5-7 are rejected herein due to their dependency on claim 4.
Claim 17 recites “The tube assembly of claim 16, wherein the tapered surface comprises two tapered surface portions tapering at different angles in cross-section as measured along the axially extending plane”. However, claim 16, from which claim 17 depends, has already set forth the same limitation. Therefore, claim 17 fails to further limit the subject matter of claim 16 from which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21-30 of U.S. Patent No. 12,372,188 (“Patent ‘188”). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
With regard to claims 1-11 of the instant application, the broader recitation of an annular collar comprising a first end, a second end, an inner surface and first and second sections as presently claimed in the current application are merely a broadened form of the limitations as disclosed in claims 26-30 of Patent ‘188 where Patent ‘188 discloses an annular collar comprising:
a first end axially opposite a second end (Claim 26, 14:7 – note this designation refers to the column and line of the patent); and
an inner surface, wherein the collar in cross-section as viewed along a plane extending axially along a diameter of the collar comprises a first section and a second section radially adjacent to the first section, wherein the second section surrounds the first section, wherein the collar comprises a fiber reinforced composite comprising fibers and resin, wherein fibers forming one of the first and second sections are oriented along a hoop direction, and wherein the other of the first and second sections comprises fibers oriented generally transverse to the hoop direction (Claim 26, 14:8-18).
However, Patent ‘188 does not disclose that the collar is thicker at a first end and thinner at a second end. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the collar be thicker at a first end and thinner at a second end with a reasonable expectation of success to provide a collar that will fit more securely in a tapered connection and because a change in the size of a prior art device is a design consideration within the skill of the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955).
With regard to claims 12-17 of the instant application, the broader recitation of a tube assembly comprising a fitting, a tube and an annular collar as presently claimed in the current application are merely a broadened form of the limitations as disclosed in claims 21-25 of Patent ‘188 where Patent ‘188 discloses a tube assembly comprising:
a fitting having a first end opposite a second end (Claim 21, 13:2);
at least a section of the fitting having an annular outer tapered surface reducing in diameter in a direction axially along an axial direction toward one of said first and second ends (Claim 21, 13:3-6);
a tube having a portion over the annular outer tapered surface (Claim 21, 13:7-8); and
an annular collar having an inner surface over an outer surface of the portion of the tube, wherein the collar in cross-section as viewed along a plane extending axially along a diameter of the collar comprises a first section and a second section radially adjacent to the first section, wherein the second section surround the first section, wherein said collar comprises a fiber reinforced composite material comprising fibers and resin, wherein fibers forming one of the first and second sections are oriented along a hoop direction, and wherein the other of the first and second sections comprises fibers oriented generally transverse to the hoop direction (Claim 21, 13:9-21).
However, Patent ‘188 does not disclose that the tube portion has an outer surface tapering from a larger outer diameter to a smaller outer diameter. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the tube portion have an outer surface tapering from a larger outer diameter to a smaller outer diameter with a reasonable expectation of success to provide a tube that will fit more securely in a tapered connection and because a change in the size of a prior art device is a design consideration within the skill of the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955).
However, Patent ‘188 also does not disclose that the collar is thicker at a first end and thinner at a second end to surround the tube portion outer surface. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the collar be thicker at a first end and thinner at a second end with a reasonable expectation of success to provide a collar that will fit more securely in a tapered connection and because a change in the size of a prior art device is a design consideration within the skill of the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955).
Conclusion
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/F.K./Examiner, Art Unit 3679
/Matthew Troutman/Supervisory Patent Examiner, Art Unit 3679