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 .
Information Disclosure Statement
The information disclosure statement filed 05/30/2024 is acknowledged by the Examiner.
Election/Restrictions
Applicant’s election without traverse of Group 1, claims 1-3 and 8-11, in the reply filed on 10/03/2025 is acknowledged.
Claims 4-7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected Invention Groups II and II, there being no allowable generic or linking claim.
Claim Objections
Claims 2-3 and 8-11 is objected to because of the following informalities:
Claims 2-3 and 8-11, the preamble limitation “Apparatus” should read –valve control apparatus--.
Appropriate correction is required.
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 9 and 11 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.
Regarding claim 9, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 11 recites the broad recitation “electronic communication”, and the claim also recites “optionally wireless communication” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 8-11 are rejected, as far as they are definite, under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Sharratt et al. (US 20180334786).
Sharratt et al. disclose:
1. (Original) A valve control apparatus (10, 12), for controlling a valve (14 in fig. 1, 32 in fig. 2) in a fluid conduit (30), the valve comprising a closure member (“the shutoff valve 32 is a ball valve”, [0033]) moveable between an open position, in which fluid may flow in the conduit, and a closed position, in which fluid may not flow in the conduit ([0033], [0041]), wherein the apparatus comprises an actuator part (12), including an actuator (36 in fig. 2) connectable to the closure member and arranged, when so connected, to control the movement of the closure member ([0031] for 16), a motor part (58), including a motor (50, DC electric motor, [0049]) for driving the actuator and a fluid-flow sensor (28) for detecting the flow of fluid in the conduit, wherein when the sensor detects the flow of fluid in the conduit the motor drives the actuator, causing the closure member to move to the closed position ([0031]), and wherein the apparatus includes a mounting member (40) for mounting the apparatus on the conduit, the mounting member being arranged to engage the conduit on only one of an upstream side or a downstream side of the valve (seen in fig. 1).
8. (Currently Amended) Apparatus according to Claim 1, wherein the conduit comprises a substantially cylindrical pipe (as seen in fig. 2).
9. (Original) Apparatus according to Claim 8, wherein the conduit comprises a pipe capable of conducting liquid, such as a water pipe, or gas pipe, such as for conducting fuel or other gas. (water, [0006]; Note, regarding the phrases “liquid,” “water,” “gas,” and “fuel,” a claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). See MPEP 2115.)
10. (Currently Amended) Apparatus according to Claim 1, wherein the apparatus is arranged in use to close a valve in the conduit when fluid flow is detected in the conduit which ought not to be present (automatic shut off during a leak, [0027]).
11. (Currently Amended) Apparatus according to Claim 1, wherein the apparatus is arranged for electronic communication, optionally wireless communication ([0029]), with a remote device (hub 30) to report status and/or activation of the apparatus ([0030]).
Claim Rejections - 35 USC § 103
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 of this title, 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.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Sharratt et al. (US 20180334786) in view of Lowitz et al. (US 11105705).
Sharratt et al. disclose the invention as essentially claimed, except for wherein the mounting member comprises a plurality of clip portions for engaging the conduit, which clip portions are arranged to be spaced longitudinally with respect to the conduit when so engaged; and wherein the clip portions are resilient and are arranged to extend at least partly around the conduit when in the engaged configuration.
Lowitz et al. teach a mounting member for mounting a leak detector assembly (100) onto a fluid conduit (930) comprising a clip (130) of extended length engaging the conduit, wherein the clip is resilient (“spring-type”, col. 12, ll. 66) and arranged to extend at least partly around the conduit when in the engaged configuration (as seen in figs. 13, 14), for the purpose of providing mounting means that are easily removable by a user and can easily accommodate a wide range of pipe diameters and materials (col. 12, ll. 62-66).
Even though Lowitz et al. do not specifically teach wherein the mounting member comprises a plurality of clip portions for engaging the conduit, which clip portions are arranged to be spaced longitudinally with respect to the conduit when so engaged, Lowitz et al. further teach that other variations to the unibody spring-type clamp can be used (col. 12, ll. 66-col. 13, ll. 5). It would have been obvious to one having ordinary skill in the art such that the mounting member comprises a plurality of clip portions for engaging the conduit, which clip portions are arranged to be spaced longitudinally with respect to the conduit when so engaged, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Such an arrangement would still function in the same manner, reduce the material used for the mounting means, and yield predictable results.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20070289635 A1, US 20080143540 A1, US 20060124171 A1, US 6170509 B1, US 20020096213 A1, US 20140230925 A1, US 20140001383 A1, US 12196335 B2, US 7066192 B1, and US 6530557 B1 each disclose related valve control apparatuses with mounting means on pipes.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARINA TIETJEN, whose telephone number is 571-270-5422. The examiner can normally be reached on Monday-Friday (10:30AM-7:00PM EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisors can be reached by phone. Tom Barrett can be reached at 571-272-4746, Ken Rinehart can be reached at 571-272-4881, and Craig Schneider can be reached at 571-272-3607. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARINA A TIETJEN/Primary Examiner, Art Unit 3753