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 .
Status of the Claims
Examiner acknowledges receipt of Applicant’s Appeal Brief filed with the Office on September 16th, 2025 in response to the Final Office Action mailed on October 16th, 2024. Claims 1-5 remain pending in the application.
Claim Objections
Claims 1-5 were objected to for minor informalities. In the Appeal Brief filed September 16th, 2025, Applicant argues that the proposed grammatical correction is unnecessary. The Examiner has reconsidered the grammatical correction and agrees with Applicant. Therefore, the previous claim objection is hereby withdrawn.
Claim Rejections - 35 USC § 112
Claims 1-5 were 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. In the Appeal Brief filed September 16th, 2025, Applicant argues that the 112(b) rejections are improper. The Examiner has reconsidered the previous 112(b) rejections and agrees with Applicant. Therefore, the previous 112(b) rejections are hereby withdrawn.
Response to Appeal Brief
The Appeal Brief filed on September 16th, 2025 is acknowledged. The Examiner has carefully considered each of Applicant’s arguments within the Appeal Brief, and the Examiner is ultimately persuaded by Applicant’s arguments. As such, prosecution is hereby reopened. The Examiner further notes that this Office Action is being made NON-FINAL.
In regards to Applicant’s argument that “The Examiner argues that the limitation of a “valve outlet” is being read upon the passage 49 in Wegman. FIG. 2 of Wegman. This is improper, as the passage 49 is not plausibly a “valve outlet” into chamber C2 as marked by the Examiner at page 7 of the rejection. Specifically, the structure 49 in combination with the ball 41 defines the valve inlet from chamber C1 as defined by the Examiner during the downstroke of the piston. The outlet into chamber C2 is defined by apertures 43. Notably, the PTAB in the parent to this application interpreted a similar limitation as follows:
In view of the foregoing, we consider it useful to construe the disputed claim
recitation, "[a] valve having a moving ball with a peripheral surface that defines ...
a valve exit for fluid and debris to escape the valve into [a] first chamber." Appeal
Br. 8-9, Claims App. When this recitation is read in its entirety and interpreted in
light of the Specification as understood by one of ordinary skill in the art, it refers
to the moving ball's peripheral surface providing a limit for the most restrictive
space for fluid and debris to escape the valve.
Decision on Appeal, Appeal 2019-005334 at 6-7 (Attached as an Appendix)
[W]e agree with Appellant that escaping from the valve into the second chamber
implies a direct connection. 7here is no intermediate structure between the valve
exit and the second chamber and whatever is escaping the valve is proceeding
directly to the second chamber. In other words, the valve opens into the second
chamber, it does not merely allow fluid to flow from the valve via intermediate
paths and ultimately into the second chamber.
Decision on Appeal, Appeal 2022-003854 at 3 (Attached as an Appendix).
The same analysis applies to claim 1 of the present application. The Examiner has defined the second chamber into which the valve exits, and from which fluid is expelled from the pump, as chamber C2 as marked by the Examiner. But the structure 49 is not a part of the exit by which fluid passes into this second chamber. For these reasons, the Examiner’s rejection of claim 1 was improper, as were the rejections of claims 2, 4, and 5”, the Examiner agrees. Applicant ultimately alleges that the previously applied mapping of Wegmann’s “valve outlet” conflicts with the PTAB Decision rendered in the parent application, which ultimately defines what may (or may not) be considered a “valve outlet” in the current application. In view of this, the previous rejection is hereby withdrawn. However, a new rejection using Wegmann, which applies a new mapping of the claim limitations that fully matches the interpretation required by the PTAB Decision, follows below. Applicant is directed to the updated rejection below for further details.
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 & 4-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 3,906,845 to Wegmann.
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In regards to Claim 1, and with particular reference to Figure 2 shown immediately above, Wegmann discloses:
(1) A pump (1; Fig. 2) comprising: (a) an outer housing (3, 11, 13) defining an enclosure (cylinder body 9); (b) an inlet (16) for admitting fluid into a first chamber (C1, as labeled by the examiner above, for clarity) of said outer housing and an outlet (29) for expelling fluid from a second chamber (C2, as labeled by the examiner above, for clarity) of said outer housing; (c) a plunger (5), said plunger selectively isolating said first chamber from said second chamber (via check valve 41) and operating a ball of a valve (17; valve ball clearly shown in Fig. 2; col. 2, lines 27-42), the valve (17) having a length defined along the direction of movement of the plunger (i.e. the vertical length of the valve cage, as seen in Fig. 2) and a valve outlet (labeled by the Examiner above, for clarity; in particular, the valve cage in combination with the moving ball's peripheral surface provides a limit for the most restrictive space for fluid and debris to escape the valve 17 into chamber C1, thus constituting the valve outlet, as articulated in the PTAB Decision of parent application 15/158,244) releasing fluid into a respective one of the first chamber and the second chamber (the valve outlet releases fluid directly into the first chamber C1; col. 2, lines 27-31), the plunger capable of a first movement (i.e. upward) and a second movement (i.e. downward) opposite to the first movement, where said fluid is admitted into said first chamber and expelled from said second chamber and out of the pump during said first movement, and said fluid is expelled from said second chamber and out of the pump, but not admitted into said first chamber during said second movement (col. 2, lines 27-42); where (d) the ball (of valve 17) is laterally retained over a major portion of its length by at least two retaining members (the two retaining members, labeled by the Examiner above, for clarity) spaced from each other (i.e. circumferentially spaced apart) to thereby define at least a portion of the boundary of the valve outlet (the lateral boundaries of the valve outlet are at least partially defined by the edges of the retaining members, as is apparent in Fig. 2), where the ball has an outer surface that crosses the boundary (apparent in Fig. 2; the ball of valve 17 has a peripheral surface that crosses over the valve’s outlet boundary)
In regards to Claim 4, the plunger (5) (which includes the valve 41 at its lower end) isolates a first fluid pressure (i.e. a suction pressure) associated with a location proximate to said inlet (via the valve 41).
In regards to Claim 5, the plunger (5) (which includes the valve 41 at its lower end) isolates a second fluid pressure (i.e. a discharge pressure) associated with a location proximate said outlet (via the valve 41).
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.
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 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wegmann (applied above) in view of US 1,746,524 to Corson.
In regards to Claim 3, although Wegmann discloses that his pump is a double-acting pump that discharges fluid on both plunger strokes, he does not specifically disclose that the volume of the second chamber (C2) is approximately half of the volume of the first chamber (C1) (Wegmann does not disclose any particular volume relationship between the two chambers).
However, such a chamber size arrangement is well known in the art of double-acting piston pumps, as shown by Corson (discussed in previous office action). In particular, Corson discloses another double-acting piston pump in which the plunger (26) includes a ball valve (34, 38) for isolating a first fluid chamber (i.e. the chamber directly below the plunger 26 and above valve 23, as seen in Fig. 2) from a second fluid chamber (29; surround the plunger, as seen in Fig. 1), wherein the volume of the second chamber is approximately half of the volume of the first chamber (col. 4, lines 72-100). In these disclosures, Corson makes clear that by sizing the second chamber to have approximately one half the volume of the first chamber, a continuous flow of fluid out of the pump can be realized, thereby ensuring optimum pump flow with minimal effort. Therefore, to one of ordinary skill desiring a piston pump that provides a continuous discharge flow of fluid, it would have been obvious to utilize the techniques disclosed in Corson in combination with those seen in Wegmann in order to obtain such a result. Consequently, it would have been obvious to one of ordinary skill in the art at a time before the effective filing date of the claimed invention to have modified Wegmann’s two chambers (C1, C2) to have the volume ratio taught in Corson in order to obtain predictable results; those results being a reliable and continuous flow of fluid out of the pump, thereby ensuring optimum pump flow with minimal effort.
Allowable Subject Matter
Claim 2 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Claim 2 requires the inlet to includes a primary check valve; that is, an inlet primary check valve that is distinct from the valve already recited in Claim 1. Wegmann lacks a teaching of the inlet 16 having a primary check valve in addition to the inlet check valve 17. Furthermore, there is no valid motivation or reasoning for adding a primary check valve to Wegmann’s inlet 16 since inlet check valve 17 already provides this structure and functionality. Additionally, US 1,746,524 to Corson and US 2,354,265 to Horvath are considered to be the most relevant remaining prior art references as it relates to Claims 1-5. However, Corson and Horvath suffer the same deficiency as Wegmann; that is, while they each disclose an inlet check valve having a valve outlet releasing a fluid directly into a first chamber, neither reference further discloses that the inlet has a primary check valve that is separate and distinct from the inlet check valve, and there does not appear to be any valid motivation or reasoning for adding such a duplicative check valve to Corson’s or Horvath’s inlet.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER BRYANT COMLEY whose telephone number is (571)270-3772. The examiner can normally be reached Monday-Friday 9AM-6PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Laurenzi can be reached at 571-270-7878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER B COMLEY/Primary Examiner, Art Unit 3746
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