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 .
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The response filed on May 5, 2026 is acknowledged.
Information Disclosure Statement
The information disclosure statement filed June 29, 2023 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
Claim Rejections - 35 USC § 112
Claims 21, 23, 27-31, 33, 37, 39 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 21 recites the limitation "the outer diameter of the sprinkler interface is constant relative to the axis" in lines 25-26. It is uncertain how one diameter, “an outer diameter of the sprinkler interface” can be constant relative to the axis. The claim does not define the outer diameter as a range.
Claim 31 recites the limitation "the outer diameter of the sprinkler interface is constant relative to the axis" in lines 15-16. It is uncertain how one diameter, “an outer diameter of the sprinkler interface” can be constant relative to the axis. The claim does not define the outer diameter as a range.
Claim Rejections - 35 USC § 103
Claim(s) 21, 23, 27-31, 33, 37 and 39 (as best understood) is/are rejected under 35 U.S.C. 103 as being unpatentable over Pressnell (2019/0175968) in view of Bancroft et al. (10,471,288).
Pressnell discloses a sprinkler system comprising:
a pipe 300 comprising an outer pipe surface (outer surface of fitting 300);
a sprinkler 200 comprising:
a base comprising:
a first portion (the portion of sprinkler 200 indicated by the leader line of 200 in figures 2A and 2B) having a first outer dimension;
a second portion (the portion having the enlarged frame arm, see figure 1 showing the step at the enlargement of the frame arm) having a second outer dimension (diameter of a circle circumscribing the frame arms) greater than the first outer dimension;
a step (at the top of the frame arms where the frame arms having the maximum lateral dimension) from the first portion to the second portion;
a thread 202 extending from the first portion on an opposite side of the first from the second portion;
a seal 26;
an adapter comprising:
a sprinkler interface comprising:
an aperture (aperture formed by threads 22) around an axis (central axis A-A), the aperture to receive the sprinkler;
a groove (groove formed by wall 32) around the axis, the groove comprising a first wall 32 forming an outermost diameter of the sprinkler interface, a second wall 28 contiguous with the first wall, and a third wall 30 (inner diameter portion to internal wall 32) contiguous with the first wall,
the third wall is flat such that a plane (horizontal plane in figures 2A and 2B) in which the third wall lies is perpendicular to the axis,
the first wall, the second wall, and the third wall to receive the seal;
a pipe interface 14a coupled with the sprinkler interface, the pipe interface having a cavity (cavity of inlet 14a) to receive the pipe 300 to couple the pipe with the sprinkler, the cavity extending in a opposite direction (upward direction in figures 2A-3) from a direction (downward direction in figures 2A-3) by which the aperture receives the sprinkler, an outer diameter (diameter of wall 32) of the sprinkler interface is less than an inner diameter (diameter in passageway 18) of the pipe, the outer diameter of the sprinkler interface is constant relative to the axis (wall 32 is circular in the horizontal cross section, the diameter of wall 32 is constant relative to axis A-A, the diameter of a circle has one value, therefore is constant), the second outer dimension of the base of the sprinkler is greater than an inner diameter of the aperture of the sprinkler interface.
Pressnell discloses the limitations of the claimed invention with the exception of a pipe groove and a clamp.
Bancroft et al. disclose a pipe groove 88 and a clamp 14.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have incorporated the pipe groove and the clamp of Bancroft et al. to the pipe and adapter of Pressnell for ease of assembly.
Pressnell further discloses wherein:
the pipe interface is annular;
the groove is closer an outlet end of the adapter by with the sprinkler is received than an inlet end of the adapter (see figures);
a pipe coupling 14 to couple the adapter with the pipe;
the adapter is made of steel, copper, or a composite (plastic, paragraph 0006);
the pipe interface is to contact the pipe.
Claim(s) 21, 23, 27-31, 33, 37 and 39 (as best understood) is/are rejected under 35 U.S.C. 103 as being unpatentable over Orr et al. (8,459,370) in view of Bancroft et al. (10,471,288).
Orr et al. disclose a sprinkler system comprising:
a pipe 132, 135 comprising an outer pipe surface;
a sprinkler 102 comprising:
a base comprising:
a first portion (portion indicated by leader line 150 in figure 1) having a first outer dimension (dimension of a side of the square of the portion indicated by leader line 150);
a second portion (portion having the upper end of the frame arms) having a second outer dimension (dimension of the outer edge of the frame arms) greater than the first outer dimension;
a step (transition from the square section to the outer edge of the frame arms) from the first portion to the second portion;
a thread 154 extending from the first portion on an opposite side of the first portion from the second portion;
a seal 118;
an adapter 106 comprising:
a sprinkler interface comprising:
an aperture (aperture of outlet end 110) around an axis (central vertical axis in figure 4), the aperture to receive the sprinkler;
a groove 116 around the axis, the groove comprising a first wall (vertical wall which is radially outer most) forming an outermost diameter of the sprinkler interface, a second wall (wall contacting surface 138 of seal member 118) contiguous with the first wall, and a third wall (wall contacting surface 136 of seal member 118) contiguous with the first wall,
the third wall is flat such that a plane (horizontal plane in figure 4) in which the third wall lies is perpendicular to the axis,
the first wall, the second wall, and the third wall to receive the seal;
a pipe interface 126 coupled with the sprinkler interface, the pipe interface having a cavity 112 to receive the pipe 132, 135 to couple the pipe with the sprinkler, the cavity extending in a opposite direction (upward direction in figure 4) from a direction (downward direction in figure 4) by which the aperture receives the sprinkler, an outer diameter (diameter of the vertical wall of recess 116) of the sprinkler interface is less than an inner diameter (inner diameter of T-joint 135) of the pipe 135, the outer diameter of the sprinkler interface is constant relative to the axis (the diameter of a circle has one value, therefore is constant), the second outer dimension of the base of the sprinkler is greater than an inner diameter of the aperture of the sprinkler interface.
Orr et al. disclose the limitations of the claimed invention with the exception of a pipe groove and a clamp.
Bancroft et al. disclose a pipe groove 88 and a clamp 14.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have incorporated the pipe groove and the clamp of Bancroft et al. to the pipe and adapter of Orr et al. for ease of assembly.
Orr et al. further disclose wherein:
the pipe interface is annular (cylindrical end 128);
the groove is closer to an outlet end of the adapter by which the sprinkler is received than an inlet end of the adapter (see figures);
a pipe coupling 128 to couple the adapter with the pipe;
the adapter is made of steel, copper, or a composite (plastic; col. 3, ll. 12-16);
the pipe interface is to contact the pipe (see figure 6).
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.
Claims 21, 23, 27-31, 33, 37 and 39 (as best understood) are rejected on the ground of nonstatutory double patenting as being unpatentable over claim1-16 of U.S. Patent No. 11,724,141 in view of Bancroft et al. (10,471,288). The claims of U.S. Patent No. 11,724,141 disclose the currently claimed invention with the exception of a pipe groove and a clamp to couple the adapter with the pipe groove. Bancroft et al. disclose a pipe groove 88 and a clamp 14. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have incorporated the pipe groove and the clamp of Bancroft et al. to the pipe and adapter of U.S. Patent No. 11,724,141 for ease of assembly.
Response to Arguments
Applicant's arguments filed 21, 23, 27-31, 33, 37 and 39 have been fully considered but they are not persuasive.
Applicant argues that Pressnell in view of Bancroft does not disclose a groove around the axis, the groove comprising a first wall forming an outermost diameter of the sprinkler interface, a second wall contiguous with the first wall, and a third wall contiguous with the first wall, the third wall is flat such that a plane in which the third wall lies is perpendicular to the axis. Pressnell discloses a groove (groove formed by wall 32) around the axis (axis A-A), the groove comprising a first wall 32 forming an outermost diameter of the sprinkler interface, a second wall 28 contiguous with the first wall, and a third wall 30 (inner diameter portion to internal wall 32) contiguous with the first wall, the third wall is flat such that a plane (horizontal plane in figures 2A and 2B) in which the third wall lies is perpendicular to the axis.
Applicant argues that Orr dose not disclose the outer diameter of the sprinkler interface is constant relative to the axis. Orr discloses the outer diameter of the sprinkler interface is constant relative to the axis (the diameter of a circle has one value, therefore is constant).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 CHRISTOPHER S KIM whose telephone number is (571)272-4905. The examiner can normally be reached M-F 7:30-3:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arthur O Hall can be reached on (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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/CHRISTOPHER S KIM/Primary Examiner, Art Unit 3752 CHRISTOPHER S. KIM
Examiner
Art Unit 3752
CK
Prosecution Insights