DETAILED ACTION
1. The Amendment filed 10/17/2025 has been entered. Claims 1 & 4-10 in the application remain pending and are currently being examined. Claims 1 & 4 were amended. Claims 2-3 & 11-23 are cancelled.
2. The text of those sections of Title 35, U.S.C. code not included in this action can be found in a prior Office Action.
Notice of Pre-AIA or AIA Status
3. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections
4. The claim rejections under AIA 35 U.S.C. 112(b), of claims 2-10 are withdrawn per cancellation of claims 2-3 and amendments of claim 1.
5. The claim rejections under AIA 35 U.S.C. 102(a)(1) as anticipated by Leiden et al. (US 2013/0214034 A1) of claims 1-10 are withdrawn per cancellation of claims 2-3 and amendments of claim 1.
Claim Objections
6. Claim 4 is objected to because of the following informalities: line 2 recites “nozzle is extends” which should recite “nozzle extends”.
Claim Rejections - 35 USC § 112
7. Claims 1 & 4-10 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
As regards to claim 1, line 3 recites “a flexible bag… said flexible bag”, then line 5 recites “said bag… said bag”, thus unclear whether they are the same bag or different. For examination purposes, examiner is interpreting “said bag… said bag” as “said flexible bag… said flexible bag”. To correct this problem, amend line 5 to recite “said flexible bag… said flexible bag”.
As regards to claim 1, line 7 recites “an application roller”, then line 8 recites “said roller”, then claim 4, line 2 recites “said application roller” thus unclear whether they are the same roller or different. For examination purposes, examiner is interpreting “said roller” as “said application roller”. To correct this problem, amend line 8 to recite “said application roller”.
Claims 4-10 are rejected at least based on their dependency from claim 1.
Claim Rejections - 35 USC § 102
8. Claims 1 & 4-10 are rejected under AIA 35 U.S.C. 102(a)(1) as being anticipated by Smith et al. (US 9,067,235 B1) hereinafter Smith (the terminology of the claims in the application is used, but the references of Smith are included between parentheses).
Regarding claim 1, the recitation “for a coating machine to apply a coating to an exterior surface of an elongate structure”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Smith since Smith meets all the structural elements of the claim and is capable of being used for a coating machine to apply a coating to an exterior surface of an elongate structure, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 1, Smith discloses a dispensing unit for a coating machine to apply a coating to an exterior surface of an elongate structure (abs; fig 1-7), including:
a body (50) (col 5, ln 10-26; fig 6-7);
a flexible bag (2) to contain a coating material, one end (see fig 2) of the flexible bag (2) being open (12) to receive coating material (col 5, ln 27-34; col 6, ln 11-19; fig 1-2);
an elongate nozzle (5) secured within the flexible bag (2) at an opposite end (see fig 1-2 & 7) of the flexible bag (2) to the one end (see fig 2) and received in the body (50) (col 5, ln 27-34; col 6, ln 11-19; fig 1-2); and
an application roller (32) mounted in connection with the body (50) adjacent to the elongate nozzle (5) and rotatable about a longitudinal axis (see fig 7, axis of 30, 32) of the application roller (32) to receive coating material from the elongate nozzle (5) and apply it to the exterior surface (col 5, ln 10-col 6, ln 19; col 7, ln 4-26; fig 1-3, 6-7).
As regards to claim 4, Smith discloses a dispensing unit (abs; fig 1-7), wherein the elongate nozzle (5) extends along the axis (see fig 7, axis of 30, 32) of rotation of the application roller (32) in a widthwise direction (col 5, ln 66-col 6, ln 11; col 7, ln 4-26; fig 1, 3, 7).
As regards to claim 5, Smith discloses a dispensing unit (abs; fig 1-7), wherein a shroud (34+36) extends partially about an interior of the application roller (32) (col 5, ln 56-col 6, ln 11; fig 3).
As regards to claim 6, Smith discloses a dispensing unit (abs; fig 1-7), wherein the application roller (32) is compressible and the shroud (34+36) compresses the interior of the roller as it rotates by way of the shroud (34+36) (col 5, ln 56-col 6, ln 11; fig 3).
As regards to claim 7, Smith discloses a dispensing unit (abs; fig 1-7), wherein the shroud (34+36) has a wiping surface (surface with apertures allowing paint to flow out or back in) along one edge (edge of apertures) (col 5, ln 56-col 6, ln 11; fig 3).
As regards to claim 8, Smith discloses a dispensing unit (abs; fig 1-7), wherein the application roller (32) is located in the body (50) on roller supports (see fig 3, element connecting 24 to 30 and element 30) that rotate relative to the body (50) (col 5, ln 56-col 6, ln 11; col 7, ln 4-26; fig 3, 6-7).
As regards to claim 9, Smith discloses a dispensing unit (abs; fig 1-7), wherein one of the roller supports (see fig 3, element connecting 24 to 30 and element 30) has connection with a clutch member (58) extending from the body (50) for engagement with a drive member (38+44) (col 5, ln 10-26; col 5, ln 56-col 6, ln 59; col 7, ln 4-26; fig 3, 6-7).
Regarding claim 10, the recitation “to secure said body to a frame member”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Smith since Smith meets all the structural elements of the claim and is capable of securing the body to a frame member, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 10, Smith discloses a dispensing unit (abs; fig 1-7), wherein a pair of mounting blocks (52, 56) are located at opposite ends of said body (50) capable of securing the body (50) to a frame member (col 5, ln 10-26; fig 6-7).
Double Patenting
9. 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-l.jsp.
10. Claims 1 & 4-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 13-21 of U.S. Patent No. 11,964,295. Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims are very similar in scope.
Response to Arguments
11. Applicant's arguments filed 10/17/2025 have been fully considered but are rendered moot because the arguments do not apply to any of the references being used in the current rejection.
Conclusion
12. 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 extension fee 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 date of this final action.
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jethro M Pence whose telephone number is (571)270-7423. The examiner can normally be reached M-TH 8:00 A.M. - 6:30 P.M..
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/Jethro M. Pence/
Primary Examiner
Art Unit 1717
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