DETAILED ACTION
This action is in response to the amendment filed 8/4/2025. Claims 9-11 are currently amended. No claims are newly added. No claims have been canceled. Presently, claims 1-16 are pending.
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 of Species I (Figs. 2-6) in the reply filed on 8/4/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 5-8 and 12-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/4/2025.
Information Disclosure Statement
The information disclose statements filed 9/8/2023, 7/11/2024, 12/3/2024, 1/10/2025, 4/16/2025, 5/22/2025, 6/26/2025, 8/4/2025 and 9/12/2025 are acknowledged and have been considered by the examiner.
Drawings
The drawings were received on 9/8/2023. These drawings are acceptable.
Claim Objections
Claims 3 and 11 contain the following informalities:
Claim 3 recites the limitation “is formed of to define” in line 3. It appears that this limitations should be “is formed to define”.
Claim 11 recites the limitation “and a second materials” in line 2. It appears that this limitation should be “and a second material”.
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.
Claim 9 is 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 9 recites the limitation "the beads" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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.
The factual inquiries 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 non-obviousness.
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.
Claim(s) 1, 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hockaday et al. (US 20070184238A1) in view of Hockaday et al. (US 20070184238A1).
Regarding claim 1, the Hockaday et al. reference discloses a flow control device (see Figure 3A and Figure 3B) comprising:
a composition gradient defining a first coefficient of thermal expansion and a second coefficient of thermal expansion that differs from the first coefficient of thermal expansion (it is considered that the first set of layers 40, 44 of a first material such as polyethylene which defines a first coefficient of thermal expansion and the second set of layers 46, 47 of a second material such as Nafion or DAIS which defines a second coefficient of thermal expansion; see paragraph [0487]); and
a thermoelectric junction (electrodes 45, 48) operationally coupled to the composition gradient (see figure 3A for the electrodes 45, 48 being in contact with the layers 47, 46 and 40, 44),
wherein the composition gradient is formed of either a plurality of dissimilar metals or of plastics (polyethylene for layers 40, 44 and Nafion for layers 46, 47; see paragraph [0487]).
The Hockaday et al. reference does not expressly disclose the embodiment of Figure 3A and Figure 3B which includes the composition gradient is formed of either of a plurality of dissimilar metals or of plastic with fillings or fibers.
However, the Hockaday et al. reference teaches reinforcing plastic materials with fillings or fibers (see at least claim 54; see also the table in paragraph [0029]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to provide the materials of the composition gradient of plastic of the Hockaday et al. reference as having fibers as taught by the Hockaday et al. reference in order to provide a desired modulus of modulus of elasticity, humidity modulus and tensile strength (see the table in paragraph [0029] of Hockaday et al.).
In regards to claim 10, the modified Hockaday et al. reference discloses wherein the thermoelectric junction is a Peltier device (it is considered that the thermoelectric junction of the electrodes 45, 48 can be operated by passing an electric current into the electrodes to permit the operation of the flow control device with the temperature or humidity across the device; see paragraph [0487]; it is considered that this operation is similar to the operation of a Peltier device).
In regards to claim 11, the modified Hockaday et al. reference discloses wherein the composition gradient is formed of a first material (polyethylene for layers 40, 44) having the first CTE and a second material (Nafion for layers 46, 47) having the second CTE, and the second material is a composite (considered the Nafion layer that includes the fibers to form a composite material).
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-4 and 9-11 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-4 and 9-11 of co-pending Application No. 18/464,153 (reference application).
This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 1 of the instant Application is directed to “A flow control device” as recited in the preamble. Claim 1 of Application No. 18/464,153 is directed to “An actuator”.
It is noted that independent claim 1 of the co-pending Application No. 18/464,153 recites “An actuator”. The recitation of “An actuator” has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). As the body of the claims does not depend on the preamble for completeness, and the structural limitations of the claims are able to stand alone, the recitation “A flow control device” has not been accorded any patentable weight.
Similarly, claims 2-4 and 9-11 of the instant Application are directed to the same invention as claims 2-4 and 9-11 of co-pending Application No. 18/464,153.
Claims 2-4 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 3 and 4 of co-pending Application No. 18/464,160 (reference application).
This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 2 of the instant Application is directed to “A flow control device” as recited in the preamble. Claim 1 of co-pending Application No. 18/464,160 is directed to “A locking device”.
It is noted that independent claim 1 of the co-pending Application No. 18/464,160 recites “A locking device”. The recitation of “A locking device” has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). As the body of the claims does not depend on the preamble for completeness, and the structural limitations of the claims are able to stand alone, the recitation “A flow control device” has not been accorded any patentable weight.
Similarly, claims 3 and 4 of the instant Application are rejected under the grounds of statutory double patenting as being directed to the same invention as claims 3 and 4 of co-pending Application No. 18/464,160.
Claims 2-4 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-3 of prior U.S. Patent No. 12,384,515. This is a statutory double patenting rejection.
Claim 2 of the instant Application is directed to “A flow control device” as recited in the preamble. Claim 1 of Patent No. 12,384,515 is directed to “An airfoil”.
It is noted that independent claim 1 of the Patent No. 12,384,515 recites “An airfoil”. The recitation of “An airfoil” has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). As the body of the claims does not depend on the preamble for completeness, and the structural limitations of the claims are able to stand alone, the recitation “A flow control device” has not been accorded any patentable weight.
Similarly, claims 3 and 4 of the instant Application are rejected under the grounds of statutory double patenting as being directed to the same invention as claims 2 and 3 of Patent No. 12,384,515.
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 1-4 and 9-11 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1, 3, 4 and 9-11 of co-pending Application No. 18/464,142 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-4 and 9-11 of co-pending Application No. 18/464,142 “anticipates” Application claims 1-4 and 9-11. Accordingly, Application claims 1-4 and 9-11 are not patentably distinct from co-pending Application No. 18/464,142 claims 1, 3, 4 and 9-11.
Claim 1 of the instant Application is directed to “A flow control device” as recited in the preamble. Claim 1 of Application No. 18/464,142 is directed to “An air cycle machine” comprising “a compressor case” wherein the “compressor case” incorporates the structural limitations of claim 1 of the instant Application.
The recitation of “A flow control device” of claim 1 of the instant Application has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). As the body of the claims does not depend on the preamble for completeness, and the structural limitations of the claims are able to stand alone, the recitation “A flow control device” has not been accorded any patentable weight.
Therefore, it is apparent that the more specific co-pending Application No. 18/464,142 claim 1 encompasses Application claim 1. Note that since Application claim 1 is “anticipated” by co-pending Application No. 18/464,142 claim 1 and since anticipation is the epitome of obviousness, then Application claim 1 is obvious over co-pending Application No. 18/464,142 claim 1.
Similarly, Application claims 2-4 and 9-11 are provisionally rejected on the grounds of non-statutory double patenting over co-pending Application No. 18/464,142 claims 3, 4 and 9-11.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 9-11 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1, 3, 4 and 9-11 of co-pending Application No. 18/464,160 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 3 and 4 of co-pending Application No. 18/464,160 “anticipates” Application claims 1 and 9-11. Accordingly, Application claims 1 and 9-11 are not patentably distinct from co-pending Application No. 18/464,160 claims 1, 3 and 4.
Claim 1 of the instant Application is directed to “A flow control device” as recited in the preamble. Claim 1 of Application No. 18/464,160 is directed to “A locking device”.
It is noted that independent claim 1 of the co-pending Application No. 18/464,160 recites “A locking device”. The recitation of “A locking device” has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). As the body of the claims does not depend on the preamble for completeness, and the structural limitations of the claims are able to stand alone, the recitation “A flow control device” has not been accorded any patentable weight.
Therefore, it is apparent that the more specific co-pending Application No. 18/464,160 claim 1 encompasses Application claim 1. Note that since Application claim 1 is “anticipated” by co-pending Application No. 18/464,160 claim 1 and since anticipation is the epitome of obviousness, then Application claim 1 is obvious over co-pending Application No. 18/464,160 claim 1.
Similarly, Application claims 9-11 are provisionally rejected on the grounds of non-statutory double patenting over co-pending Application No. 18/464,160 claims 9-11.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 9-11 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 2 and 8-10 of U.S. Patent No. 12,384,515.
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 2 and 8-10 of Patent No. 12,384,515 “anticipates” Application claims 1 and 9-11. Accordingly, Application claims 1 and 9-11 are not patentably distinct from Patent No. 12,384,515 claims 2 and 8-10.
Claim 1 of the instant Application is directed to “A flow control device” as recited in the preamble. Claim 1 of Patent No. 12,384,515 is directed to “An airfoil”.
It is noted that independent claim 1 of the Patent No. 12,384,515 recites “An airfoil”. The recitation of “An airfoil” has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). As the body of the claims does not depend on the preamble for completeness, and the structural limitations of the claims are able to stand alone, the recitation “A flow control device” has not been accorded any patentable weight.
It is apparent that the more specific Patent claim 1 encompasses Application claim 1. Following the rationale of In re Goodman cited in the preceding paragraph, here applicant has once been granted a patent containing a claim for a specific or narrower invention, Applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer. Note that since Application claim 1 is anticipated by Patent claim 1 and since anticipation is the epitome of obviousness, then Application claim 1 is obvious over Patent claim 1.
Similarly, claims 9-11 of the instant Application are rejected on the grounds of non-statutory double patenting as being unpatentable over claims 8-10 of Patent No. 12,384,515.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andrew J. Rost whose telephone number is (571) 272-2711. The examiner can normally be reached on Monday-Friday from 9:00 am to 5:30 pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Craig Schneider can be reached at 571-272-3607 or Kenneth Rinehart can be reached at 571-272-4881. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW J ROST/Examiner, Art Unit 3753
/CRAIG M SCHNEIDER/Supervisory Patent Examiner, Art Unit 3753
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