DETAILED ACTION
The following is a Final Office action in response to communications received on 7/25/2025. No claims have been amended. Therefore claims 1-7 are pending and addressed below.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Clemons (US 2021/0108879 A1).
Regarding claim 1, Clemons discloses a pressure vessel comprising: a hollow body (226 – fig. 25) having an opening; and a cap (near 233 – fig. 25) comprising: a shoulder (near 260 and 30 – fig. 25) having a bottom surface configured to abut the hollow body (fig. 25) about the opening in the hollow body when the pressure vessel is assembled, wherein the shoulder is generally planar having a hole therethrough; a sidewall (226 – fig. 25) extending longitudinally and perpendicularly from the bottom surface of the shoulder about the hole, said sidewall having a central opening; and a membrane (236) closing off the central opening, wherein the membrane is longitudinally offset from the shoulder (fig. 25).
Regarding claim 2, Clemons discloses the pressure vessel of claim 1, wherein: the pressure vessel contains compressed nitrogen (par. 53) when assembled.
Regarding claim 3, Clemons discloses the pressure vessel of claim 1, wherein: the hole through the shoulder is generally circular; the central opening is generally circular; the shoulder is generally circular; and the membrane is generally circular (fig. 25).
Claim Rejections - 35 USC § 103
The following is a quotation of 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 of this title, 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 negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
In the alternative, claims 1-7 are rejected under 35 U.S.C. 103(a) as being unpatentable over Clemons (US 2021/0108879 A1).
Regarding claims 1-7, Clemons discloses the claimed invention except he may not explicitly disclose the exact recited arrangement. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the same arrangement, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japiske, 86 USPQ 70.
Regarding claims 1-7, Clemons discloses the claimed invention except he may not explicitly disclose the exact same shapes/sizes. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the same shapes/sizes, since there is no invention in merely changing the shape or form of an article without changing its function except in a design patent. Eskimo Pie Corp. v. Levous et al., 3 USPQ 23.
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.
At least claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12196522. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim is broader (doesn’t include the airgun and some other components).
Response to Arguments
Applicant's arguments filed 7/25/2025 have been fully considered but they are not persuasive for the reasons set forth below.
Re: § 102/103 Rejections – Clemons (US 2021/0108879 A1)
Regarding applicant’s argument that Clemons’ element 226 is not a pressure vessel but rather a container for irritant gel, Examiner respectfully disagrees.Paragraph 65 of Clemons expressly identifies pressure vessel 50 as containing compressed gas. Figures 24–25 show that vessel 50 is the gas source that interacts with the membrane and piercing member. The fact that the surrounding cartridge 22 also includes container 226 for irritant gel does not change the disclosure of a pressurized vessel having an opening closed by a recessed end structure. Claim 1 recites a pressure vessel comprising a hollow body and a cap with a recessed membrane—that same structure is clearly shown in Clemons (vessel 50 and associated closure 233). Accordingly, Clemons anticipates or at least renders obvious the claimed configuration.
Regarding applicant’s argument that Clemons’ pressure vessel is “enclosed by an external sleeve 54” and therefore structurally different, Examiner respectfully disagrees.Sleeve 54 in Clemons is part of the cartridge housing that retains the pressure vessel. The presence of the sleeve is merely an environmental feature and does not alter the structural relationship of the shoulder, sidewall, and recessed membrane forming the vessel cap itself. The claim does not preclude the vessel from being received within another component, and no structural limitation distinguishes the claimed cap from that shown by Clemons.
Regarding applicant’s assertion that the presently claimed recessed membrane provides an “improved pressure-containment safety feature,” Examiner respectfully disagrees.The alleged improvement is described only in functional terms (“prevents piercing by prior art systems”) and is unsupported by objective evidence. Patentability must rest on structural distinctions, not on intended use or advantages. See In re Schreiber, 128 F.3d 1473, 44 USPQ2d 1429 (Fed. Cir. 1997). The recited cap and membrane structure perform the same function in Clemons, containing pressurized gas until pierced, and therefore do not impart patentable distinction.
Regarding applicant’s statement that the claimed features are not mere styling choices but are “directed to safety,” Examiner respectfully disagrees.Even accepting that safety was a design motivation, obviousness is determined by the structure itself, not by the inventor’s purpose. See In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975). The modifications alleged to confer safety (thickness, recess depth, offset) represent only routine optimization of a known vessel closure for predictable results. Such optimization would have been well within the level of ordinary skill.
Regarding dependent claims 2–6, Examiner notes that applicant merely repeats the arguments for claim 1 and presents no separate reasoning. Because the parent claim remains unpatentable, the dependent claims fall therewith. Each limitation (e.g., circular geometry, threaded neck, relative membrane thickness) is either explicitly disclosed or would have been an obvious design choice for manufacturability as discussed in Eskimo Pie Corp. v. Levous, 3 USPQ 23.
Accordingly, the rejections of claims 1–7 under 35 U.S.C. §§ 102(a)(1) and 103(a) are maintained and made FINAL.
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 MICHAEL D DAVID whose telephone number is (571)270-3737 and whose email address is michael.david@uspto.gov*. The examiner can normally be reached on M-F 8:30am-5:00pm EST.
*Communications via Internet e-mail are at the discretion of the applicant. Applicant is welcome to file an electronic communication authorization (sb439) form at any time if he/she would like to communicate via e-mail:
https://www.uspto.gov/sites/default/files/documents/sb0439.pdfWithout a written authorization by applicant in place, the USPTO will not respond via Internet e-mail to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122. A paper copy of such correspondence will be placed in the appropriate patent application.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers can be reached on 571-272-6874. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL D DAVID/Primary Examiner, Art Unit 3641