DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 48-62 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 48 recites the limitation "the intersection of the plurality of pairs of grooves to the central axis" in line 19-20. There is insufficient antecedent basis for this limitation in the claim.
Claims 49-52 depend on claim 48.
Claim 53 recites the limitation "the intersection of the plurality of pairs of grooves to the central axis" in line 14-15. There is insufficient antecedent basis for this limitation in the claim.
Claims 54-57 depend on claim 53.
Claim 58 recites the limitation "the intersection of the plurality of pairs of grooves to the central axis" in line 14-15. There is insufficient antecedent basis for this limitation in the claim.
Claims 59-62 depend on claim 58.
Appropriate corrections are required.
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.
Claim 48 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 10,272,436 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the narrower scope defined by the prior art patent would be fully encompassed by the instant claim.
Claim 49 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 10,272,436 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the narrower scope defined by the prior art patent would be fully encompassed by the instant claim.
Claim 50 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 10,272,436 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the narrower scope defined by the prior art patent would be fully encompassed by the instant claim.
Claim 51 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 10,272,436 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the narrower scope defined by the prior art patent would be fully encompassed by the instant claim.
Claim 52 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 10,272,436 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the narrower scope defined by the prior art patent would be fully encompassed by the instant claim.
Claim 53 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,135,594 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the narrower scope defined by the prior art patent would be fully encompassed by the instant claim.
Claim 54 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 11,135,594 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the narrower scope defined by the prior art patent would be fully encompassed by the instant claim.
Claims 55-56 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,135,594 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to one having ordinary skill in the art, at the time of the invention, to optimize the spring force to obtain the desired balance between actuation speed and maximum sealing pressure (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Claim 57 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 11,135,594 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the recitation of the spring being a corrugated stem does not distinguish the spring from the structural particulars previously recited in instant claims 53 and 54..
Claim 58 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,017,229 B2 in view of U.S. Patent No. 10,272,436 B2. While claim 1 of U.S. Patent No. 12,017,229 B2 does not claim the structural particulars of the spring in the multi-port valve, it would have been obvious to one having ordinary skill in the art, at the time of the invention, to look towards Claim 3 of U.S. Patent No. 10,272,436 B2 to determine the particulars of the spring in the multi-port valve to best practice the identical method steps.
Claim 59 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,017,229 B2 in view of U.S. Patent No. 10,272,436 B2. While claim 1 of U.S. Patent No. 12,017,229 B2 does not claim the structural particulars of the spring in the multi-port valve, it would have been obvious to one having ordinary skill in the art, at the time of the invention, to look towards Claim 4 of U.S. Patent No. 10,272,436 B2 to determine the particulars of the spring in the multi-port valve to best practice the identical method steps.
Claim 60 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,017,229 B2 in view of U.S. Patent No. 10,272,436 B2. While claim 1 of U.S. Patent No. 12,017,229 B2 does not claim the structural particulars of the spring in the multi-port valve, it would have been obvious to one having ordinary skill in the art, at the time of the invention, to look towards Claim 11 of U.S. Patent No. 10,272,436 B2 to determine the particulars of the spring in the multi-port valve to best practice the identical method steps.
Claim 61 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,017,229 B2 in view of U.S. Patent No. 10,272,436 B2. While claim 1 of U.S. Patent No. 12,017,229 B2 does not claim the structural particulars of the spring in the multi-port valve, it would have been obvious to one having ordinary skill in the art, at the time of the invention, to look towards Claim 12 of U.S. Patent No. 10,272,436 B2 to determine the particulars of the spring in the multi-port valve to best practice the identical method steps.
Claim 62 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,017,229 B2 in view of U.S. Patent No. 10,272,436 B2. While claim 1 of U.S. Patent No. 12,017,229 B2 does not claim the structural particulars of the spring in the multi-port valve, it would have been obvious to one having ordinary skill in the art, at the time of the invention, to look towards Claim 10 of U.S. Patent No. 10,272,436 B2 to determine the particulars of the spring in the multi-port valve to best practice the identical method steps.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J EOM whose telephone number is (571)270-7075. The examiner can normally be reached Monday-Friday (9:00AM-5:00PM).
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/ROBERT J EOM/Primary Examiner, Art Unit 1797
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