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 .
Election/Restrictions
Applicant’s election of Invention Group I in the reply filed on September 11, 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Claims 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention Group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on September 11, 2025.
Claim Objections
Cancelled claims 1-10 must be listed with status identifiers (e.g., "currently amended," "canceled," "new," etc.). See MPEP 714.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the circumferential cylindrical groove in the first part of said housing as recited in claim 21 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
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 11, 12 and 21-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5 and 7-10 of U.S. Patent No. 11,938,499. Although the claims at issue are not identical, they are not patentably distinct from each other because although the claims at issue are not identical, they are not patentably distinct from each other because both inventions have the features of a valve comprising: a housing comprising two parts, a hollow piston, a biasing member, a first sealing member, a second sealing member and at least one air vent.
Application Claims
U.S. Patent No. 11,938,499
11, 12
1
21
3
22
4
23
5
24
7
25
8
26
9
27
10
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.
Claims 11, 12 and 21-27 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 11 recites the limitation "the inlet of said chamber" in lines 9-10. There is insufficient antecedent basis for this limitation in the claim. The limitation should read --the inlet of said housing-- or --the inlet of said first of said parts.--
Claim 11 recites the limitation "the outlet of said chamber" in line 10. There is insufficient antecedent basis for this limitation in the claim. The limitation should read –the outlet of said housing-- or --the outlet of said second of said parts.--
Claim 11 recites the limitation "said inlet end" in lines 13-14. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "said first part of said housing" in line 16. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "said second part of said housing" in line 18. 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 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 nonobviousness.
Claims 11, 12 and 21-27 are rejected under 35 U.S.C. 103 as being unpatentable over Soetaert (US 9,707,574) in view of Gregory (US 7,681,807).
With respect to claim 11, Soetaert discloses a valve (Figs. 1-5) for (capable of diverting fluid in) an irrigation system comprising: a) a housing comprising two parts (first part (38) and second part (106 and 158)) which define an internal chamber (occupied by 122) when coupled together, a first of said parts of said housing having an inlet (94) in fluid communication with a line (82 or passage in 26) (Examiner’s note: the “irrigation line” is not a positively recited element in the claim), and a second of said parts having an outlet (166) in fluid communication with a sprinkler head (78), said inlet further comprising a stop (54 and the ring structure below 54), and said chamber having a central (vertical) axis therethrough; b) a hollow piston (122) inside said chamber, said piston having a fluid passageway (138) therethrough that is aligned with the central axis of said chamber, said piston having an inlet (at 126) to said passageway adjacent to the inlet of said chamber, an outlet (at 166) from said passageway adjacent to the outlet of said chamber, and a seal (130) at said piston inlet operable to provide watertight sealing against said stop; c) a biasing member (154) in said chamber, said biasing member being operable to bias said seal against said stop until overcome by water in said inlet end reaching or exceeding a threshold pressure (Fig. 5); d) a first sealing member (upper 150) operable to provide a watertight seal between said piston and an interior surface of said first part of said housing; e) a second sealing member (lower 150) operable to provide a watertight seal between said piston and an interior surface of said second part of said housing.
Soetaert fails to disclose at least one air vent in a wall of said chamber.
However, Gregory teaches a pressure actuated valve (10. Figs. 1-15) comprising: a housing (34 and 30) having a fluid inlet (94), a fluid outlet (52), and a central chamber (chambers of 34 and 30); b. a hollow movable piston (200, 370, 358 and 372) and traversing said chamber, said piston having a fluid inlet (162) adjacent to said housing inlet and a fluid outlet (330 and 354) adjacent to said housing outlet; c. a first U-cup seal (224 is axially in) between said housing inlet and said piston, and a second U-cup seal (50 is axially in) between said housing outlet and said piston for creating a seal between said piston and said chamber; d. at least one air vent (260, 266 and 270) in a wall of said chamber (Fig. 3); e. a stop (top surface of the bottom wall of 34 and underside of cup shaped component below 124. The two surfaces acted or engaged on each other to form a Stop. See Fig. 1 with additional annotations below) at (near) said housing inlet, and a third seal (bottom surface of the cup shaped component below 124 and bottom surface of moveable housing 30) on (radially covering) said movable piston for engagement with said stop (top surface of the bottom wall of 34) for preventing (hindering) fluid from flowing into said hollow piston when said third seal is engaged against said stop; and f. a biasing member (36) on (over) said piston for urging said third seal against said stop; wherein increased fluid pressure at said housing inlet causes said piston and said third seal to move said biasing member when a threshold pressure is reached (Fig. 1), separating said stop from said third seal, and allowing fluid to enter into and pass through said hollow piston and exit through said housing outlet.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of at least one air vent in a wall of said chamber, as taught by Gregory, to Soetaert’s chamber, in order to provide an air vent to benefits the operation of the device (Col. 8, line 57 to Col. 9, line 8).
Alternatively, Soetaert fails to disclose wherein the first of said parts of said housing having an inlet in fluid communication with an irrigation line.
However, Gregory teaches wherein the fluid inlet of said housing is in fluid communication with an irrigation water line (the source pipe) and the fluid outlet of said housing is in fluid communication with an emission device (rotating nozzle 52 and drive mechanism 70).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of connecting the valve with an irrigation water line to an emission device, as taught by Gregory, to Soetaert’s device, in order to provide proper irrigation coverage (Col. 1, lines 12-26).
With respect to claim 12, Soetaert’s pressure actuated valve modified by Gregory’s air vent, Soetaert further discloses wherein the seal at said piston inlet is an O-ring, said first sealing member is a cup seal, and said second sealing member is a cup seal (Figs. 4 and 5).
With respect to claim 21, Soetaert’s pressure actuated valve modified by Gregory’s air vent, Soetaert further discloses wherein said stop comprises a central head (See enlarged Fig. 3 with additional annotations below) for temporary engagement with said seal, and a plurality of arms having gaps between them through which fluid may flow, each of said arms being engaged (fluidly connected) with a circumferential cylindrical groove (opening/space) in the first part of said housing for holding said stop in place.
With respect to claim 22, Soetaert’s pressure actuated valve modified by Gregory’s air vent, Soetaert further discloses wherein the second exterior surface of said piston is locate between a pair of exterior annular rings (rings above and below lower 150) defining a circumferential gap (gap occupied by lower 150) therebetween and wherein said first sealing member is provided in said circumferential gap (Fig. 4).
With respect to claim 23, Soetaert’s pressure actuated valve modified by Gregory’s air vent, Soetaert further discloses the valve further comprising an annular guide (inner surfaces of seals 150 and biasing member 154) slidably engaged around (adjacent) said piston and wherein said second sealing member is provided around (adjacent) an (lower) end of said piston between said annular guide and the second part of said housing.
With respect to claim 24, Soetaert’s pressure actuated valve modified by Gregory’s air vent, Soetaert further discloses wherein a length of said chamber may be adjusted by (threaded connection between 110 and 38) adjusting the distance between the housing parts in order to change an amount of threshold water pressure needed to move said biasing member (Same configuration as the Applicant’s invention).
With respect to claim 25, Soetaert’s pressure actuated valve modified by Gregory’s air vent, Soetaert further discloses wherein said housing parts comprise complementary threadings (male and female threads at 110), and said threshold water pressure is adjusted by threading said housing parts into or out of each other (Same configuration as the Applicant’s invention).
With respect to claim 26, Soetaert’s pressure actuated valve modified by Gregory’s air vent, Soetaert further discloses wherein said third seal comprises a ring shape to provide a watertight seal against the central head of said stop to prevent water from entering the hollow piston while in a sealed position (Fig. 4).
With respect to claim 27, Soetaert’s pressure actuated valve modified by Gregory’s air vent, Soetaert further discloses wherein said biasing member is a removable spring which encircles said piston (Fig. 4).
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Conclusion
The following patents are cited to show the art with respect to a valve: Seltner, Barkelew, Filliung, Symmons, Yates, Birchfield and Zaccai et al.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHEE-CHONG LEE whose telephone number is (571)270-1916. The examiner can normally be reached Monday-Friday 8am -5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arthur O. Hall can be reached on (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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/CHEE-CHONG LEE/Primary Examiner, Art Unit 3752 November 18, 2025