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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “sprinkler body including a first side and a second side opposite the first side…wherein the first and second sides extend to the hanging member” of claim 1 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 21 is objected to because of the following informalities: the claim erroneously repeats the language “transverse to the central longitudinal axis of the first and second connection arms” and the first mention of “transverse” is spelled incorrectly as it has left the “e” off from the end.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-7, 9 and 18-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 recites “a sprinkler body including a first side and a second side opposite the first side…wherein the first and second sides extend to the hanging member,” however the sprinkler body, as described in applicant’s specification and only demonstrated as element 106 in figure 1, element 406 in figure 6, and element 506 in figures 7A and 7B, is only shown as cylindrical. For practical purposes one could say there is a top end and a bottom end of said cylindrical sprinkler body that can be considered “first and second sides” which would also be connectable to the first flexible conduit, but this top and bottom would not both “extend to the hanging member” as now claimed. Applicant’s specification does not point out what is considered to be a “first side” or a “second side” of the sprinkler body and as best seen from applicant’s figures there is no apparent first or second side of the disclosed sprinkler body that would appear to meet this newly amended limitation.
Claims 3-7, 9 and 18-20 are also rejected under 35 USC 112(a) due to being dependent from claim 1.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-7, 9 and 18-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “a sprinkler body including a first side and a second side opposite the first side…wherein the first and second sides extend to the hanging member,” however the sprinkler body, as described in applicant’s specification and only demonstrated as element 106 in figure 1, element 406 in figure 6, and element 506 in figures 7A and 7B, is only shown as cylindrical. For practical purposes one could say there is a top end and a bottom end of said cylindrical sprinkler body that can be considered “first and second sides” which would also be connectable to the first flexible conduit, but this top and bottom would not both “extend to the hanging member” as now claimed. As such, the limitation appears generally confusing as one having ordinary skill in the art cannot ascertain the metes and bounds of the claim in light of applicant’s specification and thus the claim is rendered indefinite.
Claims 3-7, 9 and 18-20 are also rejected under 35 USC 112(b) due to being dependent from claim 1.
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.
Claims 10 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cook (US Pat No 3,194,590).
Re claim 10, Cook shows a hanging connector (Figs. 1-3) comprising:
a body (2) including a sidewall (6) defining a first side (see annotated figure) opposite a second side (see annotated figure);
a first connection arm (2 extending over 1’) extending from the first side of the sidewall and a second connection arm (2 extending over 1”) extending from the second side of the sidewall, the first side and the second side separated by the sidewall (6), and the first and second connection arms being coaxial (Fig. 3) along a central longitudinal axis (extending through 2) of the first and second connection arms;
a hanging member (12) extending outwardly from the sidewall and comprising an opening (13), a central longitudinal axis (extending through 13) of the opening extending vertically and transverse to the central longitudinal axis (extending through 2) of the first and second connection arms, and offset from the central longitudinal axis (extending through 2) of the first and second connection arms,
wherein the first (see annotated figure) and second sides (see annotated figure) extend outwardly to the hanging member (12) forming first and second sides of the hanging member (12); and
a metallic rod (14; col. 3, line 41) secured by a nut (15; col. 3, lines 41-42), the metallic rod extending through the opening (13) of the hanging member (12) and extending between the hanging member (12) and a support structure (S).
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Re claim 21, Cook shows the metallic rod (14) is a direction transverse (Fig. 3) to the central longitudinal axis (extending through 2) of the first (2 extending over 1’) and second connection arms (2 extending over 1”), and transverse to the central longitudinal axis of the first and second connection arms.
Claim Rejections - 35 USC § 103
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 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 1, 3-5, 7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Hattori (US Pat No 5,327,976) in view of Cook (US Pat No 3,194,590).
Re claim 1, Hattori shows a sprinkler assembly (Fig. 2) comprising:
a sprinkler body (15) including a first side (end connected to 14) and a second side (free end) opposite the first side, the sprinkler body coupled to a first flexible conduit (12) extending from the first or second side and having a central longitudinal axis therethrough;
a hanging connector (13) coupled to the first flexible conduit (12) and to a second flexible conduit (14),
wherein the first and second sides extend to the hanging connector (sprinkler body 15 extends upward toward connector 13 in the same way that the sprinkler body extends toward the hanging connector/member in applicant’s disclosure).
Hattori does not teach the hanging connector including a hanging member extending in a first direction outwardly from a sidewall of the hanging connector, the first direction being transverse to the central longitudinal axis, and
a metallic connector secured by a nut, the metallic connector extending through the hanging member in a second direction different than the first direction and different from the direction of the central longitudinal axis, and between the hanging member and a support structure.
However, Cook shows a hanging connector (2) coupled to a first flexible conduit (1’) and to a second flexible conduit (1”), the hanging connector including a hanging member (12) extending in a first direction (along the length of 12) outwardly from a sidewall of the hanging connector, the first direction being transverse to a central longitudinal axis (extending through 2) of the hanging connector; and
a metallic connector (14; col. 3, line 41) secured by a nut (15; col. 3, lines 41-42), the metallic connector extending through the hanging member (12) in a second direction (Fig. 1; through 13) different than the first direction (along the length of 12) and different from the direction of the central longitudinal axis (extending through 2), and between the hanging member (12) and a support structure (S).
The substitution of one known element (hanging connector in Cook) for another (hanging connector as shown in Hattori) would have been obvious to one of ordinary skill in the art at the time of the invention since the substitution of the hanging connector shown in Cook would have yielded predictable results, namely, an interconnection of fluid components in Hattori to facilitate fluid flow through the system.
Re claim 3, Hattori as modified by Cook discloses the metallic connector is a threaded rod (Cook - 14).
Re claim 4, Hattori as modified by Cook show a sprinkler head (Hattori - head of 15) coupled at one end of the sprinkler body (Hattori – 15); and
a t-joint connector (Hattori – 10) coupled at another end of the sprinkler body (Hattori -15), wherein the t-joint connector is directly coupled to the first flexible conduit (Hattori – 12).
Re claim 5, Hattori as modified by Cook show the hanging connector comprising:
a body (Cook - 2) including a first side opposite a second side; and
a first connection arm (Cook – 2 extending over 1’) extending from the first side and a second connection arm (Cook – 2 extending over 1”) extending from the second side.
Re claim 7, Hattori as modified by Cook disclose the claimed invention except for the t-joint connector is directly coupled to the first connection arm or the second connection arm. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the t-joint connector directly coupled to the first connection arm or the second connection arm, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japiske, 86 USPQ 70. Further, no criticality is apparent for the claimed limitation.
Re claim 9, Hattori as modified by Cook show the first flexible conduit (Hattori – 12) and the second flexible conduit (Hattori – 14) are coupled together end-to-end by the hanging connector (Hattori – 13/Cook - 2).
Re claim 19, Hattori as modified by Cook show the hanging connector (Cook - 2) and the hanging member (Cook - 12) are formed as a single unit.
Re claim 20, Hattori as modified by Cook show the hanging member (Cook – 12) has an opening (Cook – 13) formed therein to receive the metallic connector (Cook – 14).
Hattori as modified by Cook does not teach the hanging member is a rectangular block.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the hanging member a rectangular block, since there is no invention in merely changing the shape or form of an article without changing its function except in a design patent. Eskimo Pie Corp. v. Levous et al., 3 USPQ 23. Further, no criticality is apparent for the claimed shape.
Claims 6 and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Hattori (US Pat No 5,327,976) in view of Cook (US Pat No 3,194,590) further in view of Shemtov (US Pat No 7,793,988 B1).
Re claim 6, Hattori as modified by Cook show all aspects of the claimed invention but do not teach the first connection arm and the second connection arm including threading for connection with corresponding threading of the first flexible conduit and the second flexible conduit.
However, Shemtov shows a first threaded connection arm (Fig. 1, 13) and a second threaded connection arm (15).
Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to have the motivation to have the connection arms of Hattori as modified by Cook be threaded as taught by Shemtov to allow for engagement with a threaded conduit (Shemtov – col. 1, lines 51-53).
Re claim 14, Hattori shows a sprinkler assembly (Fig. 2) comprising:
a sprinkler body (15) coupled at one end to a sprinkler head (head of 15) and at another end to a first flexible conduit (14), and having a central longitudinal axis; and
a hanging connector (13) coupled to the first flexible conduit (14) and to a second flexible conduit (12).
Hattori does not teach the hanging connector comprising:
a sidewall defining a first side and a second side opposite the first side, and the sidewall extending between the first side and the second side;
a hanging member extending in a first direction outwardly from the sidewall, the first direction being transverse to the central longitudinal axis; and
a first threaded connection arm extending from the first side and a second threaded connection arm extending from the second side, wherein the first flexible conduit is secured to the first threaded connection arm and the second flexible conduit is secured to the second threaded connection arm; and a metallic rod secured by a nut, the metallic rod extending through the hanging member in a second direction, different than the first direction and extending between the hanging member and a support structure.
However, Cook shows a hanging connector (Figs. 1-3, #2) comprising:
a sidewall (6) defining a first side and a second side opposite the first side, and the sidewall (6) extending between the first side and the second side;
a hanging member (12) extending in a first direction (along the length of 12) outwardly from the sidewall, the first direction being transverse to a central longitudinal axis (extending through 2) of the hanging connector; and
a first connection arm (2 extending over 1’) extending from the first side and a second connection arm (2 extending over 1”) extending from the second side, wherein a first flexible conduit (1’) is secured to the first connection arm and a second flexible conduit (1”) is secured to the second connection arm; and a metallic rod (14; col. 3, line 41) secured by a nut (15; col. 3, lines 41-42), the metallic rod (14) extending through the hanging member (12) in a second direction (through 13), different than the first direction (along the length of 12) and different from the direction of the central longitudinal axis (extending through 2) and extending between the hanging member (12) and a support structure (S).
The substitution of one known element (hanging connector in Cook) for another (hanging connector as shown in Hattori) would have been obvious to one of ordinary skill in the art at the time of the invention since the substitution of the hanging connector shown in Cook would have yielded predictable results, namely, an interconnection of fluid components in Hattori to facilitate fluid flow through the system.
Further, Shemtov shows a first threaded connection arm (Fig. 1, 13) and a second threaded connection arm (15).
Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to have the motivation to have the connection arms of Hattori as modified by Cook be threaded as taught by Shemtov to allow for engagement with a threaded conduit (Shemtov – col. 1, lines 51-53).
Re claim 15, Hattori as modified by Cook and Shemtov show the metallic rod (Cook -14) extends through an opening (Cook – 13) of the hanging member (Cook – 12).
Re claim 16, Hattori as modified by Cook and Shemtov show the first flexible conduit (Hattori – 14) and the second flexible conduit Hattori – 12) are arranged linearly end-to-end, and wherein the first flexible conduit and the second flexible conduit are substantially perpendicular to the sprinkler body (Hattori – 15).
Re claim 17, Hattori as modified by Cook and Shemtov show the metallic rod is a threaded metallic rod (Cook - 14).
Re claim 18, Hattori as modified by Cook and Shemtov show the hanging member (Cook - Fig. 3, 12) is a rectangular block having an opening (Cook - 13) formed therethrough for receipt of the metallic connector (Cook – 14).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Cook (US Pat No 3,194,590) further in view of Shemtov (US Pat No 7,793,988 B1).
Re claim 13, Cook discloses all aspects of the claimed invention but does not teach the first connection arm includes threading for connection with a first flexible conduit, and wherein the second connection arm includes threading for connection with a second flexible conduit.
However, Shemtov shows a first threaded connection arm (Fig. 1, 13) and a second threaded connection arm (15).
Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to have the motivation to have the connection arms of Cook be threaded as taught by Shemtov to allow for engagement with a threaded conduit (Shemtov – col. 1, lines 51-53).
Response to Arguments
Applicant's arguments filed 9/18/2025 have been fully considered but they are not persuasive. Regarding applicant’s argument of the newly recited language of claim 10, as the annotated figure above demonstrates, Cook does in fact show a body, 2, with first and second sides, wherein the first and second sides extend outwardly to the hanging member, 12, to form the first and second sides of the hanging member.
Regarding applicant’s argument of newly amended claim 1, specifically about halfway down page 8, where applicant states “the cited art, either alone or in combination, does not teach or suggest at least ‘a hanging connector … the first and second sides extend to the hanging member’” which applicant has shortened, however in shortening this part of the claim language, applicant has left out that the newly amended language states that it is the sprinkler body which includes the recited first and second side, not the hanging connector. Thus applicant’s claim actually recites that it is the first and second sides (of the sprinkler body) that extend to the hanging member which has led to the 112a rejection above. Thus, applicant’s argument appears to be mistaking what the claim amendment actually requires.
Regarding applicant’s argument of newly amended claim 14, applicant refers back to the argument of claim 1, to which applicant merely stated that Cook “fails to disclose or suggest the hanging member oriented in a second direction different than the first direction and different from the direction of the longitudinal axis” however as can plainly be seen in Cook, metallic rod 14 extends through hanging member 12 in a different direction than the first direction, which extends along member 12 and different from the direction of the central longitudinal axis which extends through hanging connector 2.
In light of these remarks, all prior art rejections shall be maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN MICHAEL CERNOCH whose telephone number is (571)270-3540. 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, Arthur Hall can be reached at (571)270-1814. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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STEVEN MICHAEL CERNOCH
Primary Examiner
Art Unit 3752
/STEVEN M CERNOCH/ Primary Examiner, Art Unit 3752