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 Claims
Currently claims 23-42 are pending and claims 1-22 are cancelled.
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 23-42 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 11,980,140. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are found in US. 11,980,140 (which is the allowed parent case to this application).
Claim 23 is found in claim 1.
Claim 24 is found in claim 2.
Claim 25 is found in claim 3.
Claim 26 is found in claim 4.
Claim 27 is found in claim 5.
Claim 28 is found in claims 1 and 6.
Claim 29 is found in claim 13.
Claim 30 is found in claim 8.
Claim 31 is found in claim 9.
Claim 32 is found in claim 9.
Claim 33 is found in claim 10.
Claim 34 is found in claim 11.
Claim 35 is found in claim 14.
Claim 36 is found in claim 15.
Claim 37 is found in claim 16.
Claim 38 is found in claim 17.
Claim 39 is found in claim 18.
Claim 40 is found in claim 19.
Claim 41 is found in claim 22.
Claim 42 is found in claim 22.
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) 23-29, 32-40, and 42 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Smith (U.S. 2004/0046046).
With respect to claims 23 and 35, Smith discloses an irrigation device (the sprinkler shown in figures 1-4) comprising:
an inlet (figure 4, inlet end at 18) for receiving pressurized fluid for irrigation (paragraph 0024);
an outlet (figure 4, outlet at 22a) for discharging pressurized fluid from the irrigation device (paragraph 0025);
a body defining a flow path from the inlet to the outlet (figure 4, the body of sprinkler 10 being from the inlet to the outlet, having sidewalls at 16 and 32, wherein the elements within the body are also understood as part of the body itself);
a portion of the body including a removable section (where 34 is removable) and an unremovable section (30 is not removable);
information disposed at least in part under the removable section (paragraph 0027, where under the lid is the valve module indicating ON, AOTAMTIC, and OFF STATES), the information pertaining to a condition of the irrigation device (depending on the switch of the module, either the direction of the valve itself provides the information or labeled ON/OFF/AUTOMATIC: though not shown in the figures one in the art would recognize that such valves are labeled to indicate to a user the mode of the sprinkler);
wherein the portion of the body is configured to indicate (being the portion of the body 12):
a first state where the information is covered by the removable section (covered by 34, where a user cannot see 12); and
a second state where the removable section is separated entirely from the unremovable section so that the information is exposed (where 34 is lifted away and a user can see and access 12).
With respect to claims 24 and 36, Smith discloses an insert (being the element 12 which is inserted within 32) embedded at least partially within the portion of the body (being at least partially within 32), the insert displaying the information (the off/on/automatic).
With respect to claims 25 and 37, Smith discloses in the first state, the removable section is raised (as shown in figure 4, being raised such that it has a ledge under it is raised above), at least in part, with respect to a region of the portion of the body adjacent the removable section (being the section of the body adjacent it in which it rests above).
With respect to claim 26 and 38, Smith discloses a recess disposed about a portion of a perimeter of the removable section (being the recess formed those 34 sits on, as figure 4 discloses a ledge 34 rests on, having a recess above the wall of 32).
With respect to claim 27 and 39, Smith discloses an area of the insert with a shape corresponding the removable section (as shown in figures 1-4, where the insert being that of 12 corresponds with the removable section, such that the shape of 12 can be seen when 34 is removed); a rib disposed about a perimeter of the area (taking the bottom rib of 34 which abuts against 32 as disposed about this area).
With respect to claims 28 and 40, Smith discloses
the information is on a layer (being taken as a layer on which 23 is located, being the layer beneath that of 34, but above that of where 18-35 are shown) disposed at least in part under the removable section when in the first state (being under 34);
the removable section includes a first hole (figure 3, hole 48) to receive a tool for actuation of at least one control feature of the irrigation device (paragraph 0027, for changing 12); and
the layer includes a second hole aligned at least in part with the first hole to receive the tool for actuation of the at least one control feature of the irrigation device (the hole, being the whole within the housing itself, between where 12 and 34 are, being the hole within 32 itself the tool would move within).
With respect to claim 29, Smith discloses the removable section (34) includes a thinner or perforated portion (where there are two perforations at 46, where the screws are) extending about a perimeter of the removable section (as the holes of 46 are located about the perimeter of 34) to facilitate separation of the removable section from the unremovable section (removing said screws then facilitates the separation of the two sections).
With respect to claim 32 and 42, Smith discloses the information comprises one or more letters, one or more symbols, one or more colors, or a combination thereof (as understood such valves are labeled and thus include letters).
With respect to claim 33, Smith discloses the irrigation device further comprises:
a housing (16) forming part of the body and defining the inlet (at the bottom of 16);
a riser assembly (figure 4, riser 20) forming part of the body and mounted to the housing (as shown in figure 4, paragraph 0025);
a turret (22) defining an interior and forming part of the riser assembly (figure 4, paragraph 0025), the turret defining the outlet for discharging pressurized fluid from the irrigation device (turret 22 has the nozzle outlet at 22a); and
the riser assembly being moveable between a retracted position (figure 1) and an elevated position relative to the housing (in which riser 20 has vertically risen with respect to the hosing due to the pressurized water flowing, paragraphs 0024 and 0025).
With respect to claim 34, Smith discloses the information is fixed relative to the outlet (as 12 is fixed relative to 22a in the shown positioned in figure 4, as the information never moves).
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) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smith.
With respect to claim 30, Smith discloses that the body and the insert or formed of plastic (paragraph 0024) the portion of the body is formed of a thermoplastic elastomer (TPE) material and wherein the insert is formed of a plastic material that is more rigid than the TPE material.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize the portion of the body is formed of a thermoplastic elastomer (TPE) material and wherein the insert is formed of a plastic material that is more rigid than the TPE material, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP 2144.07. Please note in the instant application applicant has failed to disclose any such criticality.
Claim(s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smith in view of Kremicki (U.S. 2019/0150380).
With respect to claim 31, Smith discloses the condition of the irrigation device, but fails to disclose that it pertains to a type of fluid.
Kremicki, paragraph 0023, discloses that portions of the sprinklers S are purple in color or otherwise conspicuously marked in order to indicate that they discharge non-potable water to thereby comply with codes and local ordinances.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the use of purple or other indicia to disclose that the water in the system is non-potable water to comply with codes and local ordinances in the system of Smith. Where such information being put under the lid of 34 would allow a user to access if the water is or is not portable by removing the lid to look within the housing, such placement would have been an obvious location of parts, as the design of the sprinkler top would be flush and as shown in figure 1 is without markings.
Allowable Subject Matter
Claim 41 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: The prior art fails to disclose wherein the first condition is one of potable use and non-potable use and the second condition is the other of potable use and non- potable use. At best the combination can be made obvious to paint or use some form of indication for the sprinkler under the cover to indicate that one type of fluid is used, but removing the cover would not change the indication of the fluid being used as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH A GREENLUND whose telephone number is (571)272-0397. The examiner can normally be reached M-F 9am-5pm EST.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSEPH A GREENLUND/Primary Examiner, Art Unit 3752