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 .
Election/Restrictions
Applicant's election without traverse of Invention I, Group I subspecies “a”, Group II subspecies “a”, drawn to claims 1, 2 and 4-9, in the reply filed on June 9, 2025, is acknowledged.
Claims 1, 2, 4-9, 28 and 29 are allowable. The restriction requirement between Inventions I and II, and among the respective species of Inventions I and II , as set forth in the Office action mailed on April 16, 2025, has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of April 16, 2025, is withdrawn. Claims 3 and 10-19 , directed to Invention II and a non-elected species of Invention I are no longer withdrawn from consideration because the claim(s) requires all the limitations of an allowable claim. Additionally, claims which were previously drawn to non-elected Inventions III and IV have been canceled.
In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim Objections
Claim 14 is objected to because of the following informalities:
In claim 14, line 2, the recitation “a closed position” should read –[[a]]the closed position--.
Appropriate correction is required.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 30, 32 and 34, as best understood, is/are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by US4991745 (“Brown”).
Regarding claim 30, Brown discloses (see figs. 6 and 7) a check valve comprising:
a valve body (1) formed from a resilient material (see specification col. 5, lines 42-55), the valve body having an inlet side (lower side, relative to the orientation of fig. 1, exposed to discharge opening 19) and an outlet side (upper side, relative to the orientation of fig. 1, exposed to atmosphere) and comprising:
a rim (30) forming an outer periphery of the valve body;
a hinge section comprising an annular groove (groove 4) formed on the inlet side of the valve body radially inward of and adjacent to the rim; and
a plurality of lips (lips 47 and 48) formed at a center of the valve body by one or more slits (8) extending radially outward from the center of the valve body towards the hinge section, and
wherein a thickness of the plurality of lips (see thickness at valve area 5 in figs. 6 and 7) is greater than a thickness (see thickness of rim 30 in figs. 6 and 7) of the rim.
Regarding claim 32, Brown discloses an open position (see by example position illustrated in fig. 12) wherein the plurality of lips (47 and 48) are hinged outward from the valve body (1) allowing fluid communication (55) from the inlet side (upper side, relative to the orientation of fig. 12) to the outlet side (lower side, relative to the orientation of fig. 12), wherein a pressure (“threshold pressure”; see specification col. 6, line 64, through col. 7, line 10) to maintain the check valve in the open position is less than a check pressure (“sealing pressure”; see specification col. 6, line 64, through col. 7, line 10) of the check valve.
Regarding claim 34, Brown discloses a surface (40; see fig. 7) extending at least from the center (center defined by slit 8; see fig. 7) to and including the hinge section (portion including annular groove 4) is planar on the outlet side (upper side, relative to the orientation of fig. 7) of the valve body (1).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over Brown, as applied to claims 30 and 32, in view of engineering expedient.
Regarding claim 33, Brown discloses invention as claimed except for the check pressure of the check valve being between 6-7 psi.
However, Brown teaches that the check pressure (“threshold pressure”; see specification col. 7, lines 11-27) would be designed to be slightly higher than head pressure of the enclosed liquid, while obtaining the desired flow rate and pattern, without requiring extensive pressure to be applied.
It would have been obvious to one having ordinary skill in the art at the time of filing of the invention to modify the invention of Brown by designing the check pressure of the check valve to be between 6-7 psi, to effect a desired flow rate and pattern of flow through the check valve, operating with a desired fluid.
Claim 35 is rejected under 35 U.S.C. 103 as being unpatentable over Brown, as applied to claim 30, in view of US2644663 (“Klingler”).
Regarding claim 35, Brown discloses the invention as claimed except for being silent to a thickness of the hinge section being less than a thickness of the rim.
Klingler teaches (see fig. 3) a check valve having a hinge section (see area defined by groove 11; see fig. 3) defining a first thickness, which is less than a second thickness of a rim (rim defined by surfaces 8 and 9; see fig. 3).
It would have been obvious to one having ordinary skill in the art at the time of filing of the invention to modify the invention of Brown by configuring the thickness of the hinge section is less than a thickness of the rim, as taught by Klingler, to achieve a desired threshold pressure to open the check valve.
Allowable Subject Matter
Claims 1-13, 17-19, 28 and 29 are allowed.
Claims 14-16 would be allowable if rewritten or amended to overcome the claim objection(s), set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claims 1 and 10, the closest prior art does not disclose or render obvious the invention, wherein, in a closed position, a thickness of the plurality of lips extends past the inlet side surface of the rim on the inlet side of the valve body, and wherein the rim is co-planar with the plurality of lips on the outlet side of the valve body when in a closed position, in combination with the remainder limitations of the claim.
Regarding claim 31, the closest prior art does not disclose or render obvious the invention, wherein an overall height of the valve body being defined by the thickness of the plurality of lips and being greater than a thickness of the rim, in combination with the limitations of the base claim.
Claims 2, 4-9, 11-19, 28 and 29 are allowable because they depend on an allowable base claim.
Response to Arguments
Applicant’s arguments filed March 4, 2026, have been fully considered.
Applicant’s arguments concerning the rejoinder of claims 10-19, since independent claim 10 drawn to a dispensing system comprising all the elements of allowable claim 1, claims 10-19 are now rejoined. Additionally, previously withdrawn claim 3, drawn to a non-elected species, is now rejoined because it depends upon an allowable base claim.
Regarding the objection of claim 1, Applicant’s current amendments have overcome this objection, and the objection is now withdrawn; however, rejoined claim 14 is now objected to, see Office action above.
Regarding the 35 U.S.C. 112(d) rejection of claim 31, Applicant’s current amendments have overcome this rejection, and the rejection is now withdrawn.
With regards to the rejection of claim 30 over Brown, Applicant argues that
“The Office Action alleges that an un-dimensioned, not to scale figure in Brown discloses this feature. Office Action, p. 6. However, the Office's allegation contradicts long standing law on this point. "[I]t is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue." Hockerson-Halberstadt Inc. V. Avia Group Int'l, 222 F.3d 951, 956 (Fed. Cir. 2000). The MPEP also explains that "[w]hen the reference does not disclose that the drawings are to scale and is silent as to dimensions, arguments based on measurement of the drawing features are of little value." MPEP §2125.”
The Examiner respectfully disagrees. While a drawing, not indicated as being drawn to scale, can not be relied upon to show precise proportions or dimensions, the things patent drawings show clearly are not to be disregarded. A test of simple observation of the unscaled drawing of Brown clearly reveals the claimed “a thickness of the plurality of lips is greater than a thickness of the rim” to one skilled in the art. Although Brown can not be utilized to indicate specific proportions of dimensions between the thickness of the plurality of lips and the thickness of the rim, a general observation of Brown indicates that the thickness of the plurality of lips is greater than the thickness of the rim. For this reason, the rejection of claim 30 over Brown, and applicable subsequent claims, is 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 Hailey K. Do whose direct telephone number is (571)270-3458 and direct fax number is (571)270-4458. The examiner can normally be reached on Monday-Thursday (8:00AM-5:00PM ET) and Friday (8:00AM-12:00PM ET).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisors, Kenneth Rinehart at 571-272-4881, or Craig M. Schneider at 571-272-3607. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HAILEY K. DO/Primary Examiner, Art Unit 3753