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 .
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The response filed on January 28, 2026 is acknowledged.
Information Disclosure Statement
Regarding the IDS filed on February 26, 2024, reference DE 102004027551 was cited in the IDS filed on January 8, 2024.
Claim Rejections - 35 USC § 112
Claims 5-12, 16 are 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 5 recites the limitation “an interior space” in line 3. It appears to be a double inclusion of the “interior space” recited in claim 1, line 2.
Claim 6 recites the limitation "the spray direction" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation “the pressurized chamber comprises a first opening…a second opening…a third opening disposed opposite the first opening relative to the pressurized chamber.” The first opening, the second opening and the third opening are element of the pressurized chamber. It is uncertain how an element (the third opening) of the pressurized chamber can be opposite to another element (the first opening) of the pressurized chamber relative to the pressurized chamber.
Claim Rejections - 35 USC § 102
Claim(s) 1, 2, 5, 6, 7, 8, 13, 15, 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Munn et al. (8,628,029).
Munne et al. disclose a hand-held paint sprayer comprising:
a housing 12 having an interior space formed therein;
a handle 21 coupled to the housing;
a spray head 30;
a pressurized chamber 23 positioned in the interior space of the housing, the pressurized chamber having a receptacle space (space of chamber 23) formed therein; and
a fan motor 42 positioned at least partially within the receptacle space of the pressurized chamber;
wherein the receptacle space comprises an air inlet 46a and an air outlet 25;
wherein the receptacle space comprises a first plane (horizontal plane of apertures 46a) that forms a cross-sectional area of the air inlet, and a second plane (vertical plane of outlet 25) that forms a cross-sectional area of the air outlet;
wherein the first plane and the second plane intersect approximately orthogonally;
wherein a rotation axis (vertical axis through the center of motor 42) of the fan motor is aligned eccentrically (“aligned eccentrically” does not require two axes to be parallel; two non-coinciding axes that intersect are also aligned eccentrically to each other) to a central axis (central axis of the bend of chamber 23, e.g., axis at 45 degrees) of a motor receptacle region (bend region of chamber 23) of the receptacle space of the pressurized chamber; and
wherein the air outlet opens toward the spray head;
the fan motor comprises an electric drive 42 and a fan 44;
the hand-held paint sprayer comprises a power accumulator 50;
the handle comprises a coupling (mechanical and electrical coupling for power supply 50) for mechanically and electrically coupling the power accumulator; and
the handle has a fist end (top end of graspable member 21) and a second end (bottom end of graspable member 21), the first end being connected to the housing and the second end being connected to the coupling
wherein the pressurized chamber is received in an interior space of the housing, and wherein a cavity (cavity upstream of the fan 44) is formed between the pressurized chamber and the housing;
wherein the cavity is formed as a region of the air inlet of the pressurized chamber, wherein the cavity is positioned above the pressurized chamber, or above and behind the pressurized chamber, and wherein the housing, in a region of the cavity which lies behind the pressurized chamber when viewed in the spray direction (e.g., when looking forward at a 45 degree downward angle, the cavity is above/behind the pressurized chamber 23) comprises air inlet slots (apertures 46a);
wherein an air filter 48 is disposed between the pressurized chamber and the air inlet slots;
wherein the pressurized chamber comprises a first opening formed by the air inlet, a second opening formed by the air outlet, and a third opening (constricted opening in which motor 42 is mounted) disposed opposite the first opening relative to the pressurized chamber;
wherein a longitudinal axis, defined by the handle, and the rotational axis of the fan motor are aligned so as to be approximately parallel to one another (see figure 2);
wherein the motor receptacle region of the receptacle space of the pressurized chamber is formed by internal side walls (internal side walls of chamber 23) of the pressurized chamber.
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 1-12, 14-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 and 16 of copending Application No. 18/577,524 (reference application) (PG Pub No. 2024/0335846). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application fully disclose the currently claimed invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed January 28, 2026 have been fully considered but they are not persuasive.
Applicant argues that Munn does not discuss any vertical axis of electric motor 42. Discussion is not necessary for disclosure. The vertical axis of electric motor 42 can be perceived from the figures.
Applicant argues that Munn does not discuss any axis of chamber 23 and/or any axis of the bend of chamber 23. Discussion is not necessary for disclosure. The axis of chamber 23 and/or the axis of the bend of chamber 23 can be perceived from the figures.
Applicant argues that Munn discloses that electric motor 42 being positioned centrally within chamber 23. Applicant further argues that the axes are concentric rather than eccentric. Claim 1 does not require the rotation axis and the central axis (of the motor receptacle region) to be parallel. In Munn, the rotation axis if the vertical axis through the center of motor 42. The central axis is the central axis of the bend of chamber 23, e.g., axis at 45 degrees. The limitation “aligned eccentrically” does not require parallel axes. Two axes that intersect at an angle are also aligned eccentrically to each other.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 CHRISTOPHER S KIM whose telephone number is (571)272-4905. The examiner can normally be reached M-F 7:30-3:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arthur O 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.
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/CHRISTOPHER S KIM/Primary Examiner, Art Unit 3752 CHRISTOPHER S. KIM
Examiner
Art Unit 3752
CK