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 .
The amendment filed on 6/12/2025 has been entered.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 51-70 of this instant application are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5 and 8 of U.S. Patent No. 11,358,783. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 51 of this instant application corresponds to claim 1 of the patent.
Claim 52 of this instant application corresponds to claim 1 of the patent.
Claim 53 of this instant application corresponds to claim 1 of the patent.
Claim 54 of this instant application corresponds to claim 1 of the patent.
Claim 55 of this instant application corresponds to claim 1 of the patent.
Claim 56 of this instant application corresponds to claim 1 of the patent.
Claim 57 of this instant application corresponds to claim 1 of the patent.
Claim 58 of this instant application corresponds to claim 1 of the patent.
Claim 59 of this instant application corresponds to claim 1 of the patent.
Claim 60 of this instant application corresponds to claim 1 of the patent.
Claim 61 of this instant application corresponds to claim 1 of the patent.
Claim 62 of this instant application corresponds to claim 2 of the patent.
Claim 63 of this instant application corresponds to claim 2 of the patent.
Claim 64 of this instant application corresponds to claim 3 of the patent.
Claim 65 of this instant application corresponds to claim 2 of the patent.
Claim 66 of this instant application corresponds to claim 2 of the patent.
Claim 67 of this instant application corresponds to claims 5 and 8 of the patent.
Claim 68 of this instant application corresponds to claim 8 of the patent.
Claim 69 of this instant application corresponds to claim 5 of the patent.
Claim 70 of this instant application corresponds to claim 5 of the patent.
It is clear that all the elements of claims 51-70 of this instant application are to be found in claims 1-3, 5 and 8 of the patent. The difference between claims of the application and the patent lies in the fact that the patent claim includes many more elements and is thus much more specific. Thus the invention of claims of the patent is in effect a “species” of the “generic” invention of claims of the application. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims of the application is anticipated by claims of the patent as cited in the above, the claims of the application are not patentably distinct from claims of the patent.
Claims 51-58 and 60-70 of this instant application are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9, 11, 15-17 and 19 of U.S. Patent No. 10,947,030. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 51 of this instant application corresponds to claims 9 and 19 of the patent.
Claim 52 of this instant application corresponds to claim 19 of the patent.
Claim 53 of this instant application corresponds to claim 15 of the patent.
Claim 54 of this instant application corresponds to claim 15 of the patent.
Claim 55 of this instant application corresponds to claim 15 of the patent.
Claim 56 of this instant application corresponds to claim 15 of the patent.
Claim 57 of this instant application corresponds to claim 19 of the patent.
Claim 58 of this instant application corresponds to claim 19 of the patent.
Claim 60 of this instant application corresponds to claim 19 of the patent.
Claim 61 of this instant application corresponds to claim 15 of the patent.
Claim 62 of this instant application corresponds to claim 17 of the patent.
Claim 63 of this instant application corresponds to claim 17 of the patent.
Claim 64 of this instant application corresponds to claim 11 of the patent.
Claim 65 of this instant application corresponds to claim 17 of the patent.
Claim 66 of this instant application corresponds to claim 17 of the patent.
Claim 67 of this instant application corresponds to claims 9 and 16-17 of the patent.
Claim 68 of this instant application corresponds to claim 16 of the patent.
Claim 69 of this instant application corresponds to claim 16 of the patent.
Claim 70 of this instant application corresponds to claim 16 of the patent.
It is clear that all the elements of claims 51-58 and 60-70 of this instant application are to be found in claims 9, 11, 15-17 and 19 of the patent. The difference between claims of the application and the patent lies in the fact that the patent claim includes many more elements and is thus much more specific. Thus the invention of claims of the patent is in effect a “species” of the “generic” invention of claims of the application. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims of the application is anticipated by claims of the patent as cited in the above, the claims of the application are not patentably distinct from claims of the patent.
Following the rationale of in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the 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.
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.
Claims 51-52, 57-59, 60, 62-66 and 67-68 are rejected under 35 U.S.C. 103 as being unpatentable over Flynn (US 2009/0078902) in view of Thomas (GB 2554745 A).
Regarding claims 51-52 and 60, Flynn discloses a valve for dispensing flowable product from a container body under pressure (fig.1-8), the valve comprising: a stem (12) including a stem body defining a passage (21) therein, and a disc (20) at a lower portion of the stem body (see fig.3); a seal (13) including a seat (area 32) configured to sealingly engage the disc of the stem when the valve is closed (via 33, see fig.1), and a neck (31) extending from the seat and surrounding at least a longitudinal portion of the stem body (see fig.1), wherein the stem is movable relative to open the valve ([0018]); and a mounting cup (11) configured to connect the valve to the container, wherein the mounting cup defines an opening in which the stem and the seal are received (see fig.1), wherein the stem comprises a stem plastic material ([0017]), wherein the seal comprises a seal plastic material ([0017]) having a density less than about 1 g/cm3 (Flynn in [0017] cites an “annular resilient Neoprene grommet”; the density of neoprene can range from 1.23 g/cm3 for solid neoprene to 0.1–0.3 g/cm3 for neoprene foam); and the stem plastic material has a density less than about 1 g/cm3 ([0017], the density of polypropylene (PP) is between 0.895 and 0.92 grams per cubic centimeter (g/cm3)), the stem consisting essentially of the stem plastic material ([0017]), wherein the seal consists essentially of the seal plastic material ([0017]).
Flynn is silent in disclosing the mounting cup comprises polyethylene terephthalate (PET) and or consists essentially of polyethylene terephthalate (PET). However, Thomas teaches the commonality of making a mounting cup from polyethylene terephthalate (PET) (see page 5, ll.19-25). It would have been obvious to one having ordinary skill in the art before the effective filling date of the application to modify the material of the mounting cup of Flynn to a PET as taught by Thomas, in order to offer a mounting cup that is resistance to impact, moisture, alcohols, and solvents.
Regarding claims 57-59, Flynn discloses the stem plastic material has a density less than about 1 g/cm3. ([0017], the density of polypropylene (PP) is between 0.895 and 0.92 (g/cm3)); the stem consists essentially of the stem plastic material ([0017]); and the stem plastic material is polypropylene (PP) ([0017).
Regarding claim 64, Flynn discloses the valve is free from a metal material (12 and 13 are made from plastic [0017]).
Regarding claims 62-63 and 65-66, Flynn is silent in disclosing the container body comprises polyethylene terephthalate (PET) and or consists essentially of polyethylene terephthalate (PET). However, Thomas teaches the commonality of making a container body from polyethylene terephthalate (PET) (page 3, ll.32-33). It would have been obvious to one having ordinary skill in the art before the effective filling date of the application to modify the material of the container of Flynn to a PET as taught by Thomas, in order to offer a container that is resistance to impact, moisture, alcohols, and solvents.
Regarding claims 67-68, Flynn discloses a pressurizable container for a flowable product (fig.1-8) comprising: a pressurizable container body (15) configured to hold the flowable product under pressure ([0017]); and a valve connected to the pressurizable container body for dispensing the flowable product from the container body under pressure (see fig.1), the valve comprising: a stem (12) including a stem body defining a passage (21) therein, and a disc (20) at a lower portion of the stem body (see fig.3); a seal (13) including a seat (area 32) configured to sealingly engage the disc of the stem when the valve is closed (via 33, see fig.1), and a neck (31) extending from the seat and surrounding at least a longitudinal portion of the stem body (see fig.1), wherein the stem is movable relative to open the valve ([0018]); and a mounting cup (11) configured to connect the valve to the container, wherein the mounting cup defines an opening in which the stem and the seal are received (see fig.1), wherein the stem comprises a stem plastic material ([0017]), wherein the seal comprises a seal plastic material ([0017]) having a density less than about 1 g/cm3 (Flynn in [0017] cites an “annular resilient Neoprene grommet”; generally, the density of neoprene can range from 1.23 g/cm3 for solid neoprene to 0.1–0.3 g/cm3 for neoprene foam).
Flynn is silent in disclosing the container body comprising polyethylene terephthalate (PET); the mounting cup comprises polyethylene terephthalate (PET); and or consists essentially of polyethylene terephthalate (PET). However, Thomas teaches the commonality of making a container body from polyethylene terephthalate (PET) (page 3, ll.32-33); and a mounting cup from polyethylene terephthalate (PET) (see page 5, ll.19-25). It would have been obvious to one having ordinary skill in the art before the effective filling date of the application to modify the material of the container and mounting cup of Flynn to a PET as taught by Thomas, in order to offer an aerosol device that is resistance to impact, moisture, alcohols, and solvents.
Claims 53-56, 61 and 69-70 are rejected under 35 U.S.C. 103 as being unpatentable over Flynn (US 2009/0078902) in view of Thomas (GB 2554745 A) as applied to claims 51-52 and 68 respectively in the above, and further in view of Martz (US 2016/0009482).
Flynn and Thomas in combination are silent in disclosing seal plastic material is a thermoplastic elastomer and or consists essentially of the thermoplastic elastomer. However, Martz teaches the commonality of having the seal made from plastic thermoplastic elastomer material and or consists essentially of the thermoplastic elastomer ([0042]). It would have been obvious to one having ordinary skill in the art before the effective filling date of the application to modify the material of the seal of Flynn and Thomas in combination to a thermoplastic elastomer as taught by Martz, in order to offer a seal with longer lasting, flexibility, durability, and recyclability.
Response to Arguments
Applicant's arguments filed 6/12/2025 have been fully considered but they are not persuasive. Applicant argues that a seal including a seat configured to sealingly engage the disc of the stem when the valve is closed and Flynn, on the other hand, fails to disclose this feature. Instead, Flynn teaches that in the valve's closed position, "product in can 15 is blocked from entering stem 12 due to stem base 20 sealing up against a portion of liner 14 interposed between grommet 13 and stem base 20. Examiner agrees with the Applicant’s assessment that Flynn cites the liner (14) is placed between the seat of the seal (13) and the stem base (20). However, independent claims 51 and 67 do not clearly cite the disc and seat are attached to one another. The mere citation of the term “engage” within the scop of the claims can possibly include other elements or parts can be placed in between the seat of the seal and the disc for as long as there is an “engagement” between the seat and the disc. In order to overcome the prior art to Flynn, Applicant is advised to clearly indicate in a closed position of the valve, the seat of the seal and disc are attached to one another or are in direct contact with one another and or “the disc 60 seats against the flange portion 44B” as discussed in the Applicant’s specification ([0033-0034], see also fig.12). Therefore, Flynn in view of Thomas properly address the scope of the claims 51 and 67 as cited in the Non-Final Rejection dated 3/12/2025.
Examiner’s Note
An updated search resulted in the following prior art that also addresses the scope of claims 51 and 67 and may suggest the state of the prior arts in applicant’s decision in moving this case forward.
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.
Claims 51 and 67 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Smith (US 9,132,955).
Regarding claim 51, Smith discloses a valve (10) for dispensing flowable product from a container body (12) under pressure, the valve comprising: a stem (40) including a stem body defining a passage (46) therein, and a disc (48) at a lower portion of the stem body (see fig.3); a seal (50) including a seat (see marked area 68, 52, 60) configured to sealingly engage the disc of the stem when the valve is closed (see fig.1b), and a neck (54) extending from the seat and surrounding at least a longitudinal portion of the stem body (see fig.1b and 2), wherein the stem is movable relative to open the valve (col 5, ll.62-65); and a mounting cup (30) configured to connect the valve to the container (see fig.1b and 2), wherein the mounting cup defines an opening in which the stem and the seal are received (see fig.1b), wherein the stem comprises a stem plastic material (col 1, ll.46-49), wherein the seal comprises a seal plastic material (col 8, ll.47-64) having a density less than about 1 g/cm3 (see col 8, ll.47-64; Smith cites the seal is made of TPE, typically, the density of Thermoplastic Elastomer (TPE) ranges from 0.9 to 1.25 g/cm³), wherein the mounting cup comprises polyethylene terephthalate (PET) (col 8, ll.47-64).
Regarding claim 67, Smith discloses a pressurizable container (12) for a flowable product comprising: a pressurizable container body configured to hold the flowable product under pressure (col 6, ll.58-60), the pressurizable container body comprising polyethylene terephthalate (PET) (col 8, ll.47-64); and a valve (10) connected to the pressurizable container body for dispensing the flowable product from the container body under pressure (see fig.1b), the valve comprising: a stem (40) including a stem body defining a passage (46) therein, and a disc (48) at a lower portion of the stem body (see fig.3); a seal (50) including a seat (see marked area 68, 52, 60) configured to sealingly engage the disc of the stem when the valve is closed (see fig.1b), and a neck (54) extending from the seat and surrounding at least a longitudinal portion of the stem body (see fig.1b and 2), wherein the stem is movable relative to open the valve (col 5, ll.62-65); and a mounting cup (30) configured to connect the valve to the container (see fig.1b and 2), wherein the mounting cup defines an opening in which the stem and the seal are received (se fig.1b), wherein the stem comprises a stem plastic material (col 1, ll.46-49), wherein the seal comprises a seal plastic material (col 8, ll.47-64) having a density less than about 1 g/cm3 (see col 8, ll.47-64; Smith cites the seal is made of TPE, typically, the density of Thermoplastic Elastomer (TPE) ranges from 0.9 to 1.25 g/cm³), wherein the mounting cup comprises polyethylene terephthalate (PET) (col 8, ll.47-64).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bob Zadeh whose telephone number is (571)270-5201. The examiner can normally be reached Monday-Friday 8am-4pm E.
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, Paul Durand can be reached at (571) 272-4459. 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.
/BOB ZADEH/Primary Examiner, Art Unit 3754