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 . 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 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.
DETAILED NON-FINAL ACTION
This is the initial Office Action (OA), on the merits, based on the 18/460,196 application filed on September 1, 2023. Claims 1-29 are pending. Claims 1-19 are examined, on the merits, in this Office action. The examined claims are directed to a method.
Election/Restrictions
Claims 20-29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 elected Group I, claims 1-19 and timely traversed the restriction (election) requirement in the reply filed on January 7, 2026.
Answer (Response) to Arguments
The election traversal is on the ground(s) that a thorough search of the subject matter for one of the groups would encompass a search for the subject matter of each of the groups, and as such no serious burden exists.
This allegation is not found persuasive because it relies on an unsupported assumption that the search and examination of both inventions would be coextensive. Although there could be an overlap in the searches of the two distinct inventions, there is no reason to believe that the searches would be identical. Moreover, the groups are drawn to different statutory classes (i.e., apparatus and method) and such claims are subject to different interpretations such that prior art that satisfies an apparatus claim may not satisfy a method claim, and vice versa. The concept of burden also involves claim interpretation and Office action preparation. Additional claims involves additional time to address each independent claim and its dependents. Therefore, based on the additional work involved in searching and examining both distinct inventions together, restriction of the distinct inventions is proper.
The requirement is still deemed proper and is therefore made FINAL.
Accordingly, claims 20-29 are withdrawn as directed to the non-elected invention.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. However, applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119 as follows:
This application is a continuation-in-part and claims priority under 35 U.S.C. § 119 to U.S. Application Serial No. 18/116,615 filed on March 2, 2023, which claims the benefit of prior co-pending U. S. Provisional Patent Application No. 63/372,328 filed on March 3, 2022. A later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed provisional application Ser. No. 63/372,328, filed March 3, 2022, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for the claims of this application. Neither the specification, claims or drawing provide a sufficient description or depiction of the present claims relating to a method of delivering a dispersant into water within a filterwell. It appears the claims are only supported by the current application with a filing date of 09-01-2023.
Information Disclosure Statement
The Examiner has considered the information disclosure statements (IDS) submitted on 04/03/2025. Please refer to the signed copy of the PTO-1449 form attached herewith.
Drawings
The drawings are 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: With respect to Fig. 6, the specification, at [0057], mentions “…the larger open area passage 30 in weir 20.” However, Examiner could not location numerals 20 and 30 in Figure 6. 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.
Specification
The title of the invention is the same or similar to an existing publication or patent and in that sense is not descriptive, if the instant claims and invention is considered different and unique compared to that publication/patent. To the extent that the claims are unique, titles should be as well. A unique title that is more clearly indicative of the invention to which the claims are directed will assist future examiners and reviewers.
Claim Interpretation
In the patentability analysis below, the bolded portions represent structural aspects of the claim. The italicized portions represent one or more portions of the manipulative steps. If a prior art device, in its normal and usual operation necessarily performs a manipulative step, act, or the method claimed, then Examiner will consider the particular manipulative step or act to be disclosed by the prior art device. That is, when the prior art device is the same as a device described in Applicant’s specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. MPEP §2112.02.
In the patentability analysis, the Office applies the broadest reasonable interpretation (BRI) consistent with the specification. However, specific limitations from the specification are not read into the claims. See MPEP §§2111, 2173.01 I. Unless otherwise specified, any citation to Applicant’s specification will generally refer to the original and any substitute or amended specification rather than a published application.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 7, 8, 15 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by King at al. (US20050211613 A1; King)(IDS of 04/03/2025).
Regarding claims 1-4, 7, 8, 15 and 19, King discloses a method of delivering a dispersant into water within a filterwell of a hot tub, using an apparatus comprising a cartridge dispenser (Abstract, [0012], [0085], Fig. 4),
the cartridge dispenser containing the dispersant and including one or more ports 15, 60 that are open to the dispersant contained in the cartridge dispenser (Fig. 4), the apparatus bounding both a first restricted water flow passage 61 and an open area water flow passage 15a, 100, 100b (Fig. 4),
the method including
flowing the water through the apparatus such that:
(i) a first amount of the water flows through the first restricted water flow passage, thereby placing such water into fluid communication with the dispersant contained in the cartridge dispenser via the one or more ports ([0065]-[0070], Fig. 4, where the arrows approximate the flow directions), and
(ii) a second amount of the water flows through the open area water flow passage ([0065]-[0070], Fig. 4).
Additional Disclosures Included: Claim 2: The first restricted water flow passage and the open area water flow passage form flow paths in parallel, rather than flow paths in series (Fig. 4, where at least some of the flow paths are in parallel); Claim 3: In the method, said flowing the water through the apparatus includes the first amount of the water flowing in a generally downward direction through the first restricted water flow passage, and the second amount of the water flows in a generally downward direction through the open area water flow passage (Fig. 4); Claim 4: The apparatus includes a weir, and said flowing the water through the apparatus includes the water flowing over and/or through the weir and then downwardly into both the first restricted water flow passage and the open area water flow passage ([0018]-[0021], [0072]-[0075], Figs. 5A-5D); Claim 7: The first restricted water flow passage is an annular passage ([0065]); Claim 8: The first restricted water flow passage has a smaller cross-sectional area than the open area water flow passage ([0066], Fig. 4); Claim 15: The apparatus further bounds a second restricted water flow passage, such that during said flowing the water through the apparatus: (i) the first amount of the water flows through the first restricted water flow passage, (ii) the second amount of the water flows through the open area water flow passage, and (iii) a third amount of the water flows through the second restricted water flow passage ([0066], Fig. 4); and Claim 19: The first restricted water flow passage is an annular passage, and the second restricted water flow passage is an annular passage (King, [0065]).
Claim Rejections - 35 USC § 103
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. The inventive entity for a particular application is based on some contribution to at least one of the claims made by each of the named inventors. MPEP §2137.01.
Claims 5, 6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over by King (US20050211613), as applied to claim 1 above.
Regarding claims 5, 6 and 9, King discloses the method of claim 1, except wherein the second amount of the water flowing through the open area water flow passage moves at a greater velocity than the first amount of the water flowing through the first restricted water flow passage.
However, when the claimed invention was effectively filed, it would have been obvious to one of ordinary skill in the art to routinely experiment with different aspects of the apparatus including the restriction gap, the flow rates and velocities for the different flow streams, and to choose a suitable gap by design choice, as well as control the entering water’s velocity in a manner that would achieve the desired cleaning result and target longevity of the dispersant, including a greater velocity for the water flowing through the open area water flow passage, and delivering the dispersant for at least three weeks. Also, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ a suitable dispersant delivery schedule by engineering or design choice
Additional Disclosures Included: Claim 6: Said delivering the dispersant into water within the filterwell of the hot tub is performed for at least three weeks before the dispersant contained in the cartridge dispenser is depleted (claim 5 analysis); and Claim 9: The first restricted water flow passage has a gap width of greater than 1/32 inch and less than 1/8 inch (claim 5 analysis).
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over by King (US20050211613), as applied to claim 1 above, in view of Guy et al. (US20200216341; Guy).
Regarding claims 10-12, King discloses the method of claim 1, except wherein the apparatus is located within a filterwell basket.
King’s Figs. 5 and 6 show the apparatus located in a skimmer basket in a swimming pool ([0017], [0022]) and Fig. 17 shows a debris-retaining basket supporting the apparatus ([0041], [0102]).
Guy discloses a filterwell cartridge having ports for dispensing a dispersant directly into a filterwell of a hot tub, spa or the like with the filterwell cartridge peripherally and positionally supportable in a quick release mode through facial engagement of compound surfaces located on opposite sides of the filterwell cartridge (Abstract). The location of a dispensing cartridge in the filterwell has the advantage of keeping the dispensing cartridge out of the main tub area of the hot tub or spa and into a region where water flows therethrough the filterwell dispensing cartridge needs to be able to reliably deliver dispersant into the water as the water flows through the filterwell without interfering with the filtering action within the filterwell ([0006]).
When the claimed invention was effectively filed, it would have been obvious to one of ordinary skill in the art to locate the apparatus in a filterwell basket for additional support and to keep it out of the main tub area.
Additional Disclosures Included: Claim 11: A sidewall of the filterwell basket surrounds both the first restricted water flow passage and the open area water flow passage (claim 10 analysis; King, Fig. 17); and Claim 12: Said flowing the water through the apparatus includes:
(i) the first amount of the water flowing through a pervious wall of the filterwell basket after flowing through the first restricted water flow passage, and
(ii) the second amount of the water flowing through a pervious wall of the filterwell basket after flowing through the open area water flow passage (claim 11 analysis).
Claims 13, 14 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over by King (US20050211613), as applied to claim 1 above, in view of Brennan (US20210270053)(IDS of 4-03-2025).
Regarding claims 13, 14 and 16-18, King discloses the method of claim 1 except wherein the apparatus further includes a cartridge jacket, and the cartridge dispenser is received in the cartridge jacket such that the first restricted water flow passage is formed between an exterior of the cartridge dispenser and an interior of the cartridge jacket, and
wherein the cartridge jacket and the cartridge dispenser received therein are located in the water within the filterwell of the hot tub during said delivering the dispersant into the water within the filterwell of the hot tub.
One may interpret a cartridge jacket as tantamount to a housing.
Brennan discloses a method for treating water in a spa or a hot tub including suspending a water treatment dispenser from an upper end of a filter cartridge disposed in a skimmer of the spa or the hot tub (Abstract). In one or more embodiments, the water treatment dispenser 460 may include an elongated hollow cylindrical body 465 and a basket 467 sized to be received in and pass through a support opening 432 in an upper end of the filter cartridge 420 ([0064]). Filter cartridge 20 may include an oblong top end cap 30, an oblong bottom end cap 40, and a surrounding filter medium 50 disposed between a peripheral portion of top end cap 30 and a peripheral portion of bottom end cap 40 ([0049]). Here the cartridge is analogous to a housing containing dispensers 60, 70 (Brennan, [0053], Figs. 1, 2 and 6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to place the apparatus in a cartridge to suitable house and protect the dispenser and provide an alternate arrangement for control of water flow.
Additional Disclosures Included: Claim 14: The cartridge jacket and the cartridge dispenser received therein are located within a filterwell basket, the filterwell basket is located in a water circulation system of the hot tub, and the method includes starting and stopping operation of an water circulation pump of the water circulation system (King, [0071], [0086], [0091], [0092], [0104]; also see claim 10 analysis); Claim 16: The second amount of the water flowing through the open area water flow passage moves at a velocity greater than that of the first amount of the water flowing through the first restricted water flow passage and greater than that of the third amount of the water flowing through the second restricted water flow passage (claim 5 analysis); Claim 17: The second amount of the water is greater than a total of both the first amount of the water and the third amount of the water (claim 5 analysis); and Claim 18: The open area water flow passage is located between the first and second restricted water flow passages (King, Fig. 4).
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 claims at issue 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); and 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 1-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/460,181. Although the claims at issue are not identical, they are not patentably distinct from each other because the applications recite the same or similar limitations relating to method of delivering a dispersant into water within a filterwell of a hot tub where there is a restricted flow passage.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Examiner recommends that Applicant carefully review each identified reference and all objections/rejections before responding to this office action to properly advance the case in light of the pertinent objections/rejections and the prior art. With respect to the patentability analysis, Examiner has attempted to claim map to one or more of the most suitable structures or portions of a reference. However, with respect to all OAs, Examiner notes that citations to specific pages, columns, paragraphs, lines, figures or reference numerals, in any prior art or evidentiary reference, and any interpretation of such references, should not be considered to be limiting in any way. A reference is relevant for all it contains and may be relied upon for all that it would have reasonably disclosed and/or suggested to one having ordinary skill in the art. The use of publications and patents as references is not limited to what one or more applicant/inventor/patentee describes as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain. MPEP §2123.
Examiner further recommends that for any substantive claim amendments made in response to this Office Action, or to otherwise advance prosecution, or for any remarks concerning support for added subject matter or claim priority, that Applicant include either a pinpoint citation to the original Specification (i.e. page and/or paragraph and/or line number and/or figure number) to indicate where Applicant is drawing support for such amendment or remarks, or a clear explanation indicating why the particular limitation is implicit or inherent to the original disclosure.
Electronic Inquiries
Any inquiry concerning this communication or an earlier communications from the examiner should be directed to Hayden Brewster whose telephone number is (571) 270-1065. The examiner can normally be reached M-Th 9 AM - 4 PM.
Alternatively, to contact the examiner, Applicant may send a communication, via e-mail or fax. Examiner’s direct fax number is: (571) 270-2065. Examiner's official e-mail address is: "Hayden.Brewster@uspto.gov." However, since e-mail communication may not be secure, Examiner will not respond to a substantive e-mail unless Applicant’s communication is in accordance with the provisions of MPEP §502.03 & related sections that discuss the required Authorization for Internet Communication (AIC). Nonetheless, all substantive communications will be made of record in Applicant’s file.
To facilitate the Internet communication authorization process, Applicant may file an appropriate letter, or may complete the USPTO SB439 fillable form available at https://www.uspto.gov/sites/default/files/documents/sb0439.pdf, preferably in advance of any substantive e-mail communication. Since one may use an electronic signature with this particular form, Applicant is encouraged to file this form via the Office’s system for electronic filing of patent correspondence (i.e., the electronic filing system (Patent Center)). Otherwise, a handwritten signature is required. In addition to Patent Center, Applicant can submit their Internet authorization request via US Postal Service, USPTO Customer Service Window, or Central Fax. Examiner can also provide a one-time oral authorization, but this will only apply to video conferencing. It is improper to request Internet Authorization via e-mail.
Examiner interviews are available via telephone, in-person, and via 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) form available at http://www.uspto.gov/interviewpractice, or Applicant may call Examiner, if preferable. Applicant can access a general list of patent application forms at either https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012 (applications filed on or after September 16, 2012) or https://www.uspto.gov/patent/forms/forms (applications filed before September 16, 2012). Note that the language in an AIR form is not a substitute for the requirements of an AIC, where appropriate. The mere filing of an Applicant Initiated Interview Request Form (PTOL-413A) or a Letter Requesting Interview with Examiner, in EFS-Web, may not apprise Examiner of such a request in a timely manner.
If attempts to reach the Examiner are unsuccessful, Applicant may reach Examiner’s supervisor, Bobby Ramdhanie at 571-270-3240. The central 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.
/HAYDEN BREWSTER/Examiner, AU 1779