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 with traverse of invention Group I in the reply filed on November 12, 2025 is acknowledged. The traversal is on the ground(s) that the Restriction Requirement mailed November 7, 2025 “does not set forth a serious search burden amongst each Group”. This is not found persuasive because Applicant’s traversal is irrelevant. Since the instant application was submitted under 35 U.S.C. 371 (not 35 U.S.C. 111(a)), the unity of invention restriction mailed November 7, 2025 was not required to establish that a substantial search and examination “burden” exists, since a proper restriction requirement for a national stage application filed under 35 U.S.C. 371 does not take a search and/or examination burden into account.
The requirement is still deemed proper and is therefore made FINAL.
Claims 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on November, 12, 2025.
Information Disclosure Statement
The IDS forms filed on May 24, 2023 and March 21, 2025 are hereby acknowledged and have been placed of record. Please find attached a signed copy of the aforementioned IDS forms.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
Reference number “262” (Fig. 3) is not found in the specification.
Reference number “264” (Fig. 3) is not found in the specification.
Reference number “310” (Fig. 3) is not found in the specification.
Reference number “1108” (Fig. 11) is not found in the specification.
Reference number “1305” (Fig. 13) is not found in the specification.
Reference number “420” (Fig. 16) is not found in the specification.
Reference number “1450” (Fig. 25) is not found in the specification.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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.
The drawings are also objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description:
Reference number “210” (paragraph [0063]) is not shown in the drawings.
Reference number “348” (paragraph [0072]) is not shown in the drawings.
Reference number “1105” (paragraphs [0088] and [0107]) is not shown in the drawings.
Reference number “2550” (paragraphs [0155] and [0157]) is not shown in the drawings.
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. 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.
The drawings are further objected to because of the following issues:
There is confusion with respect to the usage of reference numbers “260” and “280” in both the drawings and the specification. More specifically, Figs. 2A, 2B, 14-18 and 20 show reference number “260” denoting what appears to be the “gasket”. Then, Figs. 3 and 5 appear to denote the “gasket” element with reference number “280”. Further, Figs. 2A, 2B and 14 show reference number “280” denoting what appears to be the “fitting”. Then, Fig. 3 appears to denote the “fitting” element with reference number “260”. Lending further confusion to the issue, is the fact that reference numbers “260” and “280” are used interchangeably throughout the specification to denote the “fitting” and the “gasket” (see paragraphs [0055]-[0057], [0059]-[0062], [0064]-[0078], [0108]-[0110], [0112], [0113], [0115]-[0122], [0125], [0128], [0130], [0133]-[0135], [0138], [0142], [0147] and [0153]).
There is confusion with respect to the usage of reference numbers “340” and “336” in Fig. 4, particularly in light of the specification. More specifically, paragraphs [0070] and [0071] use reference number “336” to denote the “ring body” of “ring 332”, while reference number “336” in Fig. 4 appears to be denoting the engagement members which extend inwardly from the ring body; and paragraphs [0070]-[0076] use reference number “340” to denote the “plurality of first engagement members” of “ring 332”, while reference number “340” in Fig. 4 appears to be denoting the “ring body”.
Lending additional confusion to the issue raised in the previous bullet point, is the fact that the specification (see paragraph [0070]) uses reference number “344” to denote the “plurality of second engagement members”, which are described as “extending inward from the ring body”, yet Fig. 4 clearly shows reference number “344” as denoting the engagement members which extend outward from the ring body. Lending even more confusion to this issue, is the fact that the so-called “plurality of first engagement members 340”, which must be those which extend outward from the ring body (since the “second” members are descried as extending “inward”), are then described in the specification as “engaging with” the threads at reference number “240”. It is respectfully submitted that this is impossible (see Fig. 3, which clearly shows that only the inwardly extending members can make such engagement). In essence, the confusion between the so-called “first and second engagement members”, as depicted in the drawings and as described in the specification, is so egregiously confusing, that this Office cannot offer any suggestions as to how such issues may be resolved.
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.
Specification
The disclosure is objected to because of the following informalities:
As discussed above in paragraph 7 of the instant Office action, reference numbers “260” and “280” are used interchangeably throughout the specification to denote the “fitting” and the “gasket” (see paragraphs [0055]-[0057], [0059]-[0062], [0064]-[0078], [0108]-[0110], [0112], [0113], [0115]-[0122], [0125], [0128], [0130], [0133]-[0135], [0138], [0142], [0147] and [0153]).
As also discussed above in paragraph 7 of the instant Office action, there is a great amount of confusion with respect to the disclosed “plurality of first engagement members” and the “plurality of second engagement members”. Applicant should thoroughly review the entire specification and correct these confusing and conflicting issues, particularly with respect to how these features are shown in the drawings, and more importantly, with respect to how these features are claimed.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-18 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.
Regarding claim 1, on line 4, the recitation, “a passageway extending from an inlet to an outlet” is unclear. What defines this “inlet” and what defines this “outlet”?
Further, regarding claim 1, on lines 9-10, the recitation, “the ring to be received between the inner wall, the sidewall, and the first portion” is vague and unclear for two reasons. First, the “inner wall” and the “sidewall” elements are structural features of the positively-recited “fitting”, and the “first portion” is a structural feature of the positively-recited sprinkler “body”. Yet, the inclusion of “to be” in the aforementioned recitation leaves the reader in doubt as to whether or not the “ring” (which is also positively recited) is actually in this position. Second, it cannot be ascertained, even in light of the originally-filed disclosure, how one element can be characterized as being “between” three distinct elements. As well as the claim can be understood, the aforementioned recitation appears to be attempting to capture what is shown in Fig. 3, where it appears that “ring 332” is actually located axially above “sidewall 312” and radially between an area immediately below “threads 240” (which are defined by the “second portion”, as per line 3 of claim 1, and not by the “first portion”) and “inner wall 308”, and claim 1 will be examined on the merits with this understanding in mind. If this understanding is not correct, Applicant is invited to thoroughly explain what is meant by the limitation of being “between the inner wall, the sidewall, and the first portion”. It should also be noted, paragraph [0003] of Applicant’s specification essentially sets forth the same confusing statement as that discussed above with respect to claim 1. Thus, Applicant’s reply to this issue will need to take into consideration any corresponding specification amendments, such as in paragraph [0003].
Regarding claim 4, the claim is thoroughly confusing, particularly in light of the limitations recited in claim 1, as well as the description of the “plurality of first engagement members” and the “plurality of second engagement members”. More specifically, claim 1 expressly states that the “plurality of first engagement members” extend “outward from the ring body”, and that the “plurality of second engagement members” extend “inward from the ring body”. If that is the case, how is it possible for the “first” members to “match the thread of the sprinkler” (see, at least Fig. 3, which clearly shows that only the inwardly extending members can engage “thread 240”)? Applicant’s attention is also directed to paragraphs 7 and 8 of the instant Office action, which detail a great deal of confusion and inconsistency with respect to the disclosed, shown and claimed “plurality of first engagement members” and “plurality of second engagement members”.
Further, regarding claim 4, the recitation that the “plurality of second engagement members are straight” is unclear, not only because of the previously discussed issues, but also because nowhere in the originally-filed specification are the “plurality of second engagement members” being described as “straight”, particularly in a manner whereby one can understand the metes and bounds of this “straight” limitation.
Regarding claim 5, on line 3, the recitation that the “second portion” is located “between the thread and the flange” cannot be understood. Claim 1, from which claim 5 directly depends, expressly defines the “second portion” as “defining a thread”. If that is the case, how then can the “second portion” be “between the thread and the flange”?
Regarding claim 11, on line 2, the recitation, “the gasket” lacks antecedent basis. What is this “gasket” recitation referring to?
Regarding claim 13, on line 3, the recitation that the “second portion” is located “between the thread and the flange” cannot be understood. Claim 1, from which claim 13 directly depends, expressly defines the “second portion” as “defining a thread”. If that is the case, how then can the “second portion” be “between the thread and the flange”?
Regarding claim 14, on line 5, the recitation, “the ring to be received between the inner wall, the sidewall, and a sprinkler” is unclear. It cannot be ascertained, even in light of the originally-filed disclosure, how one element can be characterized as being “between” three distinct elements. As well as the claim can be understood, the aforementioned recitation appears to be attempting to capture what is shown in Fig. 3, where it appears that “ring 332” is actually located axially above “sidewall 312” of the “fitting” and radially between an area immediately below the sprinkler threads (at 240) and “inner wall 308” of the “fitting”. Applicant is thus invited to thoroughly explain what is meant by the limitation of being “between the inner wall, the sidewall, and a sprinkler”.
Regarding claim 15, the claim is thoroughly confusing, particularly in light of the limitations recited in claim 14, as well as the description of the “plurality of first engagement members” and the “plurality of second engagement members”. More specifically, claim 14 expressly states that the “plurality of first engagement members” extend “outward from the ring body”, and that the “plurality of second engagement members” extend “inward from the ring body”. If that is the case, how is it possible for the “first” members to match the “thread of the sprinkler” (see, at least Fig. 3, which clearly shows that only the inwardly extending members can engage “thread 240”)? Applicant’s attention is also directed to paragraphs 7 and 8 of the instant Office action, which detail a great deal of confusion and inconsistency with respect to the disclosed, shown and claimed “plurality of first engagement members” and “plurality of second engagement members”.
Further, regarding claim 15, the recitation that the “plurality of second engagement members are straight” is unclear, not only because of the previously discussed issues, but also because nowhere in the originally-filed specification are the “plurality of second engagement members” being described as “straight”, particularly in a manner whereby one can understand the metes and bounds of this “straight” limitation.
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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, 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.
Regarding claim 2, the claim depends from claim 1, which is drawn to “A sprinkler system”, which comprises “a sprinkler”. Yet claim 2 is recited so as to only limit the “sprinkler”, which makes claim 2 an improper dependent claim.
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.
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.
Claims 14-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hong et al., KR-10-2019-0002256-A.
As to claim 14, as the claim is recited, the scope of the claim essentially sets forth a collection of parts (i.e., the “fitting”, the “ring” and the “gasket”), with no positively-recited interrelated details between the parts. Thus, Hong (see Figs. 3-10) shows a system, comprising: a fitting (50; or 50+30) comprising an inner wall (54) and a sidewall (55; or 30) extending inward from the inner wall; a ring (10) comprising a ring body, a plurality of first engagement members (12a) extending outward from the ring body, and a plurality of second engagement members (11a) extending inward from the ring body, the ring to be received between the inner wall, the sidewall, and a sprinkler (the claim does not require a “sprinkler”, and this recitation is merely stated as a function, of which the collection of parts shown by Hong is capable of performing); and a gasket (20) to be received between the sidewall and the sprinkler (again, the claim does not require a “sprinkler”, and similarly to the previous recitation, this is merely stated as a function, of which the collection of parts shown by Hong is capable of performing). As to the preamble recitation for the system as being a “sprinkler adapter system”, it is again noted that the scope of the claim does not require a “sprinkler”, and it is also noted that the preamble in this case can only be afforded, at best, limited patentable weight, because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. Kropa v. Robie, 88 USPQ 478 (CCPA 1951).
As to claim 15, Hong shows the system of claim 14, wherein the plurality of first engagement members are shaped to match a thread of the sprinkler (again, the claim does not require a “sprinkler”, and this, albeit indefinite, recitation is merely stated in functional terms, of which Hong is capable of performing); and the plurality of second engagement members are straight (see Figs. 7-10).
As to claim 16, Hong shows the system of claim 14, wherein the plurality of first engagement members extend at an angle from the ring body (see Figs. 7-10).
As to claim 17, Hong shows the system of claim 14, wherein the fitting is at least one of coupled with or integrally formed with a pipe (2; see Fig. 6) that receives fluid to output through the sprinkler (again, the claim does not require a “sprinkler”, and this recitation is merely stated in functional terms, of which Hong is capable of performing).
As to claim 18, Hong shows the system of claim 14, wherein the sidewall tapers outward towards an end of the sidewall (in one manner, the sidewall “54” tapers outwardly in the upper region of “53” – see Fig. 4; and in another manner, portion “33” of “30” is tapered – and since the claim scope requires nothing more than a collection of parts, the shown taper can be considered “outward” or “inward”, depending on orientation of the part) through which the sprinkler is received (again, the claim does not require a “sprinkler”, and this recitation is merely stated in functional terms, of which Hong is capable of performing).
Allowable Subject Matter
Claims 1-13 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art, alone or in combination, did not show or teach a sprinkler system, including the interrelated details of the sprinkler body and the fitting, in combination with the ring comprising the ring body, the plurality of first engagement members extending outward from the ring body, and the plurality of second engagement members extending inward from the ring body, with the ring received axially above the sidewall of the fitting and radially between the second portion of the sprinkler body and the inner wall of the fitting, as the claim is interpreted in light of the indefiniteness issues raised above in paragraph 10 of the instant Office action.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Patents to Ericksen et al., Bobo et al. and Spears et al., and US Patent Application Publications to Orr, Hagen et al. and Taylor, are cited as of interest.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARREN W GORMAN whose telephone number is (571)272-4901. The examiner can normally be reached Monday-Thursday 6:30-4:30.
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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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/DARREN W GORMAN/Primary Examiner, Art Unit 3752