Prosecution Insights
Last updated: April 19, 2026
Application No. 18/497,964

Valve for Regulating the Flow of A Liquid

Non-Final OA §102§103§112§DP
Filed
Oct 30, 2023
Examiner
MEDWAY, SCOTT J
Art Unit
3783
Tech Center
3700 — Mechanical Engineering & Manufacturing
Assignee
Bioflo LLC
OA Round
1 (Non-Final)
67%
Grant Probability
Favorable
1-2
OA Rounds
3y 9m
To Grant
90%
With Interview

Examiner Intelligence

Grants 67% — above average
67%
Career Allow Rate
583 granted / 871 resolved
-3.1% vs TC avg
Strong +23% interview lift
Without
With
+23.4%
Interview Lift
resolved cases with interview
Typical timeline
3y 9m
Avg Prosecution
52 currently pending
Career history
923
Total Applications
across all art units

Statute-Specific Performance

§101
0.6%
-39.4% vs TC avg
§103
44.4%
+4.4% vs TC avg
§102
25.9%
-14.1% vs TC avg
§112
25.8%
-14.2% vs TC avg
Black line = Tech Center average estimate • Based on career data from 871 resolved cases

Office Action

§102 §103 §112 §DP
DETAILED ACTION Notice of Pre-AIA or AIA Status The present application is being examined under the pre-AIA first to invent provisions. Response to Amendment Applicant's preliminary amendment filed 01/15/2024 has been entered. By the amendment, claims 1-3 were canceled and claims 4-15 were newly added. Claims 4-15 are currently pending and considered below. Information Disclosure Statement The information disclosure statement(s) filed on the record are in compliance with the content requ irements of 37 CFR 1.97 and 37 CFR 1.98 and have been considered. 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 appl icant regards as his invention. Claim 11 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. Regarding claim 11, the limitation "the tubing" lacks antecedent basis in the claim. For the purpose of examination, claim 11 will be interpreted to depend from claim 9. 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 4-15 are rejected on the ground of nonstatutory double patenting over claims 1-13 of U.S. Patent No. 11,802,627 (hereinafter "the '627 patent'), the latter of which recites subject matter that contains all the subject matter of claims 4-15 of the current application except for the limitation s (in the presently filed claims) of the valve being used "for regulating the flow of urine from a bladder ". However, this subject matter is not patentably distinct from the subject matter claimed in the '627 patent because it recites mere intended use of the valve that does not limit its structure. Further, this recitation in the preamble is not necessary to give life, meaning or vitality to the claim (see Pitney Bowes, Inc. v. Hewlett-Packard Co ., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165-66 (Fed. Cir. 1999) ). Moreover, the pending claims recite "an inlet for receiving the urine into the first housing 10 and an outlet for allowing the urine to leave the first housing 10 "; but this subject matter is not patentably distinct from the subject matter claimed in the '627 patent because it recites mere function of the inlet and outlet that are inherent characteristics of the '627 patent . 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 pre-AIA 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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent. Claim s 4 and 7 are rejected under pre-AIA 35 U.S.C. 102(a) as being anticipated by Pool ( U.S. Pat. 2,667,895, hereinafter "Pool "). Regarding claim 4, Pool discloses a valve for regulating the flow of urine from a bladder comprising (the preamble of claim 4 recites the intended use of the valve and does not appear to impart a structural limitation thereto) : a first housing 10 (see Fig. 1) having an inlet ( directly above magnet 20 ) for receiving the urine into the first housing 10, and an outle t 16 (see Fig. 1) for allowing the urine to leave the first housing 10 (th e aforementioned limitation s of claim 4 recite the function of the valve and does not appear to impart structural limitation s thereto; the valve of Pool is a liquid valve and its first housing 10 would have been able to receive urine thereinto and then allow the urine to exit therefrom) ; a second housing 12 (see Fig. 1) removably attachable to the first housing 10 (by the use of a threaded collar 11) ; a first magnet 26 (see Fig. 1) disposed in the first housing 10 in a predetermined position, the first magnet being stationary relative to the first housing 10 ( see col. 2, lines 50-56; the first magnet 26 is " press-fitted or otherwise fastened within the annular series of vertical ribs 23 " such that the magnet "r emains fixed in the position shown in Fig. 1 "); a second magnet 20 (see Fig. 1) disposed in the first housing 10 (both magnets are disposed in the first housing 10; see Fig. 1) , the second magnet movable relative to the first magnet and the first housing 10 between a first position and a second position (see col. 3, beginning at line 34; the magnet 20 can be moved downwardly away from a valve seat 18 by pressure of fluid entering the inlet 14) and making contact with at least a portion (ribs 23; see Fig. 2) of the first housing 10 ( the ribs 23 guide the magnet 20 within the housing to ensure " straight vertical movement toward and away from the valve seat 1 8 "; this function would only be possible if the ribs 23 contact the magnet 20 at some point) and closing a resealable opening in the first housing 10 in the first position due to the attraction between the first magnet and the second magnet ( the releasable opening is the aforementioned inlet, which is closed when the magnet 20 seats against the valve seat 18 of the second housing 12) due to the attraction between the first magnet and the second magnet (the south poles of each magnet face each other in order to repel the magnets away from one another to cause the aforementioned closure of the resealable opening). Regarding claim 7, Pool discloses t he valve for regulating the flow of urine according to claim 4, wherein the outlet of the first housing 10 is in fluid communication with an opening in the second housing (i.e., when the magnet 20 does not seat in the valve seat 18, fluid can flow between the first and second housings) . 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action: (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made. Claim 6 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Pool in view of Wells et al (U.S. Pat. 5,709,243, hereinafter "Wells"). R egarding claim 6 , it is noted that Pool does not appear to disclose that the valve comprises a vent disposed in the second housing. Wells discloses a valve having a first housing 10 (Fig. 10) and a second housing 220 (Fig. 7) and a vent 215 disposed in the second housing 220. A skilled artisan would have found it obvious at the time of the invention to modify the device of Pool , according to the teaching in Wells, in order to prevent an undesirable build-up of pressure as the first and second housing are engaged (see Wells at col. 9, lines 44-49). Claim 12 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Pool in view of S trybel (U.S. Pat. 4,458,719, hereinafter " Strybel ") Regarding claim 12, it is noted that Pool does not appear to disclose the valve further comprising a cantilevered latch having a length extending between a first end and a second end, the first end being fixedly attached to the second housing and extending beyond the second housing to engage the first housing to maintain the second housing in contact with the first housing . Strybel discloses a valve 10 (see Fig. 1) for regulating the flow of a liquid therethrough comprising: a first housing 17/24 (see Fig. 1) having an inlet 23 (see Fig. 1) for receiving the liquid into the first housing and an outlet 31 (see Fig. 2) for allowing the liquid to leave the first housing; and a second housing 13 (see Fig. 1) removably attachable to the outlet of the first housing. Further, Strybel discloses a cantilevered latch (i.e., formed by groove 49 and cantilevered portion extending distally of element 39 toward shoulder 47) having a first end and a second end, the first end being fixedly attached to the second housing and extending beyond second housing (i.e., the latch is shown to extend distally of the housing 13) to engage the first housing to maintain the second housing in contact with the first housing (i.e., when engaged, the finger 50 of a latch on the first housing engages the groove 49 on the cantilevered latch; see col. 4, lines 29-35). A skilled artisan would have found it obvious at the time of the invention to modify the device of Pool, according to the teaching in Strybel , in order to form a well-known connection permitting disengagement of the housing without requiring a screw motion. Conclusion Claims 5 , 8 -11 (see 35 U.S.C. 112(b) rejection regarding claim 11) and 13-15 are not subject to a rejection under 35 U.S.C. 102 or 35 U.S.C. 103 ; but see the double patenting rejection, above. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See Notice of References Cited . Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT SCOTT J MEDWAY whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)270-3656 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Monday through Friday, 8:30 AM to 5:00 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, FILLIN "SPE Name?" \* MERGEFORMAT Chelsea Stinson can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT (571) 270-1744 . 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. /SCOTT J MEDWAY/ Primary Examiner, Art Unit 3783 02/25/2026
Read full office action

Prosecution Timeline

Oct 30, 2023
Application Filed
Jan 05, 2024
Response after Non-Final Action
Feb 26, 2026
Non-Final Rejection — §102, §103, §112 (current)

Precedent Cases

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
67%
Grant Probability
90%
With Interview (+23.4%)
3y 9m
Median Time to Grant
Low
PTA Risk
Based on 871 resolved cases by this examiner. Grant probability derived from career allow rate.

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