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 Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1, 2, 3 & 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jones (US 4,907,732).
Interpretative note 1. Torgue is defined as “a force that produces or tends to produce rotation or torsion.” (https://www.merriam-webster.com/dictionary/torque.) Consequently, any element(s) that causes a pipeline to rotate is a torque.
Interpretative note 2. With respect to applying a “first torque” in claim 1, line 16”, lacking recitation of a applying a second torque any reference that discloses applying a single torque is equivalent to applying a first torque.
Interpretative note 3. The preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Interpretative note 3. Claim 1 does not require that the sections be coupled. Only that a torque applied to a section rotates another section. In other words under the broadest reasonable standard allowed by the MPEP the step of applying a first torque to one section does not preclude an interpretation of applying a respective first torque to both a first section and a second section, e.g. applying independent torques to each respective section. This achieves rotation of a second section without having to couple the sections to each other.
With respect to claim 1, Jones discloses a method comprising:
supporting a first section 32 at a plurality of points 54, 56, 58, 60, 62, 64;
applying a first torque (see powered rollers 60, 64 rotating section 32; C5/L53-55) to a first pipe element 32 and applying a first torque (see powered rollers 72, 74; C5/L55-58) to a second pipe element 30 about a longitudinal axis at one point 60, 72, thereby rotating first and second pipe elements through a first angular displacement about a longitudinal axis.
With respect to claim 2, Jones discloses supporting a first section 32 between first and an second ends as at points 60, 62, 64
With respect to claim 3, Jones discloses supporting a section 32 by supporting a pipeline proximate to a first end (indicated generally as 60) and a second end (indicated generally as 64) of a first section 32.
With respect to claim 6, Jones discloses that a first torque is applied at a plurality of points (see powered rollers 60, 64 rotating section 32; C5/L53-55) between first and second ends of first section 32, thereby rotating a first section through a first angular displacement about a longitudinal axis.
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.
Claim 1-15 & 17-20 & 29 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,422,070. Although the claims at issue are not identical, they are not patentably distinct from each other because elimination of an element or its functions is deemed to be obvious in light of prior art teachings of at least the recited element or its functions (see In re Karlson, 136 USPQ 184, 186; 311 F2d 581 (CCPA 1963)), thereby rendering the elimination of any elements recited in the claims of the related patent (that are not recited in the instant claims) obvious. Elements recited in the instant claims (but not recited in the claims of the related patent) are addressed by the art rejection(s) set forth above.
The ‘070 patent recites:
rotating a pipeline section;
section comprising multiple pipe elements;
first and second rotation-permitting end couplings;
supporting section;
applying torque at least one point between ends;
rotating through an angular displacement.
Except for the removal of the limitation of coupling first and second sections the claims of the instant application mirror those of the ‘070 patent. The instant application claims:
rotating a pipeline section;
a pipeline comprising multiple pipe elements;
supporting a section;
applying torque at least one point between ends;
rotating through an angular displacement such that a second section of pipe rotates.
In other words, the removal of the “coupling step” in the instant application results in merely an obvious variant of the earlier claims. But for linguistic differences claims 2-20 & 29 mirror the claims in the ‘070 patent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY W ADAMS whose telephone number is (571)272-8101. The examiner can normally be reached Mon - Fri, 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Saul Rodriguez can be reached at (571)272-7097. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GREGORY W ADAMS/Primary Examiner, Art Unit 3652
