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 .
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Continuing Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,125,374 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Matters of Form
ABSTRACT: 37 CFR 1.173(a) requires an application for reissue to contain the entire specification, including the claims, of the patent for which reissue is requested must be furnished in the form of a copy of the printed patent, in double column format, each page on only one side of a single sheet of paper. Accordingly, a copy of the entire ABSTRACT, which spans the first two pages of the printed patent, must be provided. Applicant only provided a single page of the ABSTRACT upon filing of this reissue. Applicant should submit the second page of the published patent.
REISSUE DECLARATION: The reissue oath/declaration filed with this application is defective because it fails to identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414. Specifically, the error statement indicates that the amended reissue claims 1 and 11 do not require the plug to be “inserted into” the elastomer composite. A review of the claims shows that this limitation is indeed still included in claims 1 and 11.
Claim Rejections - 35 USC § 251
The following is a quotation of the first paragraph of 35 U.S.C. 251:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
DEFECTIVE DECLARATION: Claims 1-20 rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
RECAPTURE: Claims 1-20 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984).
MPEP 1412.02 establishes a three-step test for recapture. The three-step process is as follows:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
Recapture Analysis: Step 1
Reissue claims 1-20 are broader than patent claims 1-20.
Independent reissue claim 1 does not require the following limitations that are present in patent claim 1:
“a head on a first end of the gas charged cartridge”; and
“the elastomer composite having a first end connected to the head.”
Therefore, step 1 of the three-step test is met for reissue claims 1-10.
Similarly, independent reissue claim 11 does not require the following limitations that are present in patent claim 11:
“a head on a first end of the gas charged cartridge”; and
“the elastomer composite having a first end connected to the head.”
Therefore, step 1 of the three-step test is met for reissue claims 11-20.
Recapture Analysis: Step 2, first sub-step
The step of determining whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution includes two sub-steps. The first sub-step is to determine whether the applicant surrendered any subject matter in the prosecution of the original application. MPEP § 1412.02 defines surrendered subject matter as a claim limitation that was originally relied upon by applicant in the original prosecution to make the claims allowable over the art.
During prosecution of the ‘374 patent, the examiner rejected original claims 1, 2, 5, 11, 12 and 15 as unpatentable Young (US 7,040,350).
In response, Applicant amended claim 1, deleting the limitation to “a head on a first end of the gas charged cartridge” and adding a limitation reciting “an elastomer composite…is connected to the head” in addition to other amendments. Applicant amended claim 11 adding a limitation reciting “an elastomer composite…is connected to the head” in addition to other amendments.
The Examiner contacted Applicant on March 31, 2021 to propose an Examiner’s amendment to place the case in condition for allowance. Specifically, the Examiner proposed adding the limitation “a head on a first end of the gas charged cartridge” back into claim 1 and proposed amending the claim to recite - - an elastomer composite that absorbs pressure variations, the elastomer composite having a first end connected to the head - -.
Applicant’s representative agreed to the proposed changes by the Examiner, the Examiner made the changes via Examiner’s amendment and the case was allowed.
The following limitations of allowed claims 1 and 11, now patent claims 1 and 11, were added as compared to original canceled claims 1 and 11 and are considered surrender-generating limitations (SGL):
the elastomer composite having a first end connected to the head
Recapture Analysis: Step 2, second sub-step
The second sub-step is to determine whether any of the broadening of the reissue claims is in the area of the surrendered subject matter. The examiner must analyze all of the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitations are directed to limitations relied upon by applicant in the original application to make the claims allowable over the art.
New reissue claims 1 and 11 are broadened with respect to patent claims 1 and 11 to omit the following surrendered subject matter:
“connected to the head”
Reissue claims 1 and 11 and those claims depending therefrom include some of the details of the surrendered subject matter (i.e. the elastomer composite having a first end) and eliminate some of the details (i.e. connected to the head) of the surrendered subject matter. Therefore, step 2 of the three-part test is met.
Recapture Analysis: Step 3
The third step in the recapture analysis considers the significance of claim limitations that were added and deleted during prosecution of the patent to be reissued in order to determine whether the reissue claims are materially narrowed in other respects so as to avoid the recapture rule. As set forth in MPEP § 1412.02, subsection II(C), if a surrender-generating limitation (SGL) has not been entirely eliminated from a claim in the reissue application but rather has been made less restrictive in the reissue application claim, “[i]t must be determined what portion of the amendment or argued limitation has been retained, and whether the retained portion materially narrows the original claims to avoid recapture.”
In this case, reissue claim 1 and 11 modifies the surrender-generating limitations as follows:
the elastomer composite having a first end
Reissue claims 1 and 11 omit the first end being “connected to the head,” and retain the elastomer composite as “having a first end.” Although reissue claims retain a portion of the SGL, the subject matter of the retained portion is inherent to the elastomer composite itself. Retaining the phrase “having a first end” does not result in reissue claims 1 and 11 being materially narrowed in other respects as compared to claims 1 and 11 cancelled from the original application. Furthermore, the retained portion of the SGL is known in the prior art as demonstrated by the following art rejections.
For these reasons, reissue claims 1-20 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based.
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 2 and 12 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. Claims 2 and 12 each recite “the head” in line 2. This phrase lacks proper antecedent basis. Correction is required.
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.
Claim(s) 1-2, 5, 11-12 and 15 is/are rejected under 35 U.S.C. 103 as being obvious over Ball (2,968,319). Ball discloses a gas charged cartridge comprising: an elastomer (11) that absorbs pressure variations, the elastomer having a first end (unlabeled) positioned proximal to set screw (25); a plug (21) inserted into a second end of the elastomer (11); and a perforated retaining sleeve (14) affixed to the plug (21) by way of threaded half sphere (17) surrounding the elastomer (11). Ball does not disclose that the elastomer (11) is a “composite.” Ball does state that elastomer (11) can be “any elastomeric material, I have found that a synthetic rubber such as Buna-N is the best material for use in the pulsation dampener” (column 1, lines 62-65). Synthetic rubbers, as recited, are known in the art to be produced from rubber and other materials, such as fibers, to create a material with specific properties. It would have been obvious to one of ordinary skill in the art to experiment with various synthetic composite rubbers to develop an elastomer with an appropriate amount of elasticity for the end use application.
With respect to claim 2, the perforated retaining sleeve (14) also is affixed to the head (19) by way of half sphere (16).
With respect to claim 5, the plug (21) includes a cup portion, defined by annular groove (39), and a base portion (40) extending from the cup portion (39).
With respect to claim 11, Ball discloses a pulsation control dampener, comprising: a cylinder (18) configured to receive a fluid, from pipe (47); a gas charged cartridge (13) inserted into the cylinder (18), the gas charged cartridge includes: an elastomer (11) that absorbs pressure variations, the elastomer having a first end (unlabeled) positioned proximal to set screw (25); a plug (21) inserted into a second end of the elastomer (11); and a perforated retaining sleeve (14) affixed to the plug (21) by way of threaded half sphere (17) surrounding the elastomer (11). As explained with respect to claim 1, Ball does not disclose that the elastomer (11) is a composite. Ball does state that elastomer (11) can be “any elastomeric material, I have found that a synthetic rubber such as Buna-N is the best material for use in the pulsation dampener” (column 1, lines 62-65). Synthetic rubbers known in the art to be produced from rubber and other materials, such as fibers, to create a material with specific properties. It would have been obvious to one of ordinary skill in the art to experiment with various synthetic composite rubbers to develop an elastomer with an appropriate amount of elasticity for the end use application.
With respect to claim 12, the perforated retaining sleeve (14) also is affixed to the head (19) by way of half sphere (16).
With respect to claim 15, the plug (21) includes a cup portion, defined by annular groove (39), and a base portion (40) extending from the cup portion (39).
Claim(s) 3, 10, 13 and 20 is/are rejected under 35 U.S.C. 103 as being anticipated by Ball (2,968,319) in view of Czyz (US 2014/0202201 A1). With respect to claims 3 and 10, Ball further discloses the perforated retaining sleeve (14) extends along a partial length of the elastomer (11). Ball fails to disclose a crimping sleeve configured to secure the perforated retaining sleeve to the elastomer composite.
Czyz et al. teaches first cylindrical element (40), which equates to Ball’s half sphere (17), and a second cylindrical element (44), which equates to Ball’s perforated sleeve (14), that include “surface irregularities” to enhance the fluid-tight connection between the first and second elements and mitigate disengagement therebetween (see Czyz paragraph [0022]). It is further taught by Czyz et al. that the first element (40) and the second element (44) could be coupled by other means such as “welding” (Czyz, paragraph [0022]). Czyz et al. further teaches a crimped sleeve (56) the extends over the intersection between the first (40) and second (44) cylindrical elements to form a fluid tight connection and further mitigate against disengagement of the first (40) and second (44) cylindrical elements.
It would have been obvious to one of ordinary skill in the art at the time of filing to add a crimping sleeve, as taught by Czyz et al, to the Ball device at the intersection of half-sphere (17) and perforated sleeve (14). Such an addition would reinforce the welded bond disclosed by Ball (column 2, line 2) which is subject to hoop stresses due to the repetitive expansion and contraction of the elastomer (11), and further mitigate against disengagement between the half-sphere (17) and perforated sleeve (14) as taught by Czyz et al. Such an addition would extend the lift of the Ball device.
Allowable Subject Matter
Claims 4, 6-9, 14 and 16-19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 251, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Loukonen (3,893,485) (elastomer with perforated sleeve); Wijnhoven et al. (5,135,203) (crimping sleeves (74) and (78)); Mercier (3,486,530) (elastomer with perforated sleeve) and Wilkes (6,651,698 (elastomer with perforated sleeve and plug).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH B. MCPARTLIN whose telephone number is (571)272-6854. The examiner can normally be reached M-F 8 am - 5 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Engle can be reached on 571-272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SARAH B MCPARTLIN/Reexamination Specialist, Art Unit 3993
Conferees: /WILLIAM C DOERRLER/ Reexamination Specialist, Art Unit 3993
/Patricia L Engle/ SPRS, Art Unit 3993