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 .
Prior art of Record
The prior art made of record in this office action shall be referred to as follows;
U.S. 5,141,255 Katsuyuki Hanaoka (‘Hanaoka hereafter),
U.S. 2018/0058974 Tony Casassa (‘Casassa hereafter),
U.S. 2017/0219143 Henry F. De Francesco (‘De-Francesco hereafter),
U.S. 5,318,328 Hugh R. Dawson (‘Dawson hereafter),
The above references will be referred to hereafter by the names or numbers indicated above.
Claim status:
Claims 1 – 6, 9 – 13, 18 – 20 are currently being examined.
Claims 5, 6 & 18 - 20 have been withdrawn.
Claims 7, 8, 14 – 17 have been canceled.
No Claims are allowed or objected to for allowable subject matter.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 – 4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites: “A dual-size sprinkler head riser device comprising:
a body comprised of a first end comprised of a female threaded opening and a second end comprised of a male threaded opening;
a first fastener positioned on an exterior surface of the body; and
a second fastener positioned on an interior surface of the first opening; and
wherein the first fastener is a tongue fastener; and
wherein the second fastener is a groove fastener.
As claimed above, the first fastener is a female threaded opening and the second end is a male threaded opening. Applicant amended the claim on 10/21/2025 to add additional limitations to the first fastener to be a tongue fastener and the second fastener to be a groove fastener.
Applicant’s remarks 10/21/2025 cites Para 0032 as the support for the amendment of 10/21/2025.
Para 0032 recites: “ The first end 112 of the body 110 is comprised of at least one opening 114. The interior surface 116 ( or in one embodiment, the exterior surface) of the opening 114 is comprised of at least one fastener 118. The fastener 118 is preferably a plurality of male or female threads. However, the fastener 118 may be any type known in the art such as, but not limited to, tongue and groove, magnetic, etc. The fastener 118 allows the first end 112 to attach to at least one fastener 22 of an elbow pipe 20 (wherein the fastener 22 is shown in FIG. 2). The opening 114 is preferably of a first diameter, such as, but not limited to, 3/4" or 1/2".”
Para 0032 discusses at least two embodiments: Embodiment 1. Where the first and second fasteners are threaded and Embodiment 2. Where the “fastener may be any type known in the art such as, but not limited to, tongue and groove, magnetic ect.”
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Applicant does not show support for the combining of the two embodiments as stated above.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1 – 4 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 1, is rejected because: the claims require the male and female threaded ends of the fastener to be also be a tongue and groove fastener. Further none of the parts in the specification or the drawings are labeled tongue or groove.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 5,141,255 Katsuyuki Hanaoka (‘Hanaoka hereafter), and in view of U.S. 5,318,328 Hugh R. Dawson (‘Dawson hereafter).
Regarding Claim[s] 9, ‘Hanaoka discloses all the claim limitations including: A dual-size sprinkler head riser device comprising: (‘Hanaoka, Fig 2 (below), shows near #2 (sprinkling nozzle) shows two diameter sizes at the head of the nozzle defining a dual-size sprinkler head riser device) a body (‘Hanaoka, Figs 1 & 2, system of #6 (double shelled inner and outer pipes), #5 (double shelled inner and outer pipes), and #1 (sprinkler)) comprised of a first end comprised of a first opening of a first diameter and a second end comprised of a second opening comprised of a second diameter (‘Hanaoka, Fig 1, #5 lower end shows a larger female diameter than the upper male end diameter); a first fastener (‘Hanaoka, Fig 2, lower end of #5 (double shelled inner and outer pipes)) positioned on an exterior surface of the body (‘Hanaoka, Fig 1 & 2, system of #5, #6 and #1); and a second fastener positioned on an interior surface of the first opening (‘Hanaoka, Fig 1 & 2); and
Except ‘Hanaoka is silent regarding: wherein the first fastener is magnetic: and wherein the second fastener is magnetic.
However, ‘Dawson, does teach, Abst, the use of magnetic material to magnetically engage pipes. And is capable of being used in for a sprinkler head to couple hollow tubular parts together. Col. 2, ln 64 – Col. 3, ln 9, teaches: “However, the interior of the larger portion 10A is provided with magnetic material at its inner periphery. This material may be deployed in a variety of ways; however, as will be seen in FIG. 3, such magnetic material is disposed on the inner peripheral surface of the quick connect device 10 (at the large end or large portion 10A) and extends, for example, for about1 ¾” of the axial length of device 10 (as shown in FIG. 3) to a 5
point at which a shoulder 14 is formed. This shoulder acts as a stop device and precludes the penetration of the dryer pipe beyond this point at the interior of the
quick connect device.” Clm 1, “said first tubular end female portion including a magnetic material which is disposed at the inner periphery of said first tubular end female portion for sliding magnetic coupling with the outer periphery of said metallic exhaust pipe.”
‘Dawson shows the versatility of the design using magnets to couple tubular parts together that are made from a variety of materials.
Hence, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide ‘Hanaoka with a magnetic coupling system as taught by ‘Dawson in order to provide a quick connection for pipes (‘Dawson, Col. 2, ln 33 – 41).
Regarding Claim[s] 10, ‘Hanaoka and ‘Dawson discloses all the claim limitations except is silent regarding: first diameter is ½″ and the first opening is comprised of a female opening.
However, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide ‘Hanaoka with a first diameter of 1/2” for the first diameter since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Regarding Claim[s] 11, ‘Hanaoka and ‘Dawson discloses all the claim limitations except is silent regarding: second diameter is ½″ and the second opening is comprised of a male opening.
However, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide ‘Hanaoka with a second diameter of ½” for the second diameter since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Regarding Claim[s] 12, ‘Hanaoka and ‘Dawson discloses all the claim limitations except is silent regarding: first diameter is ¾″ and the first opening is comprised of a female opening.
However, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide ‘Hanaoka with a first diameter of 3/4” for the first diameter since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Regarding Claim[s] 13, ‘Hanaoka and ‘Dawson discloses all the claim limitations except is silent regarding: second diameter is ¾″ and the second opening is comprised of a male opening.
However, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to provide ‘Hanaoka with a second diameter of 3/4” for the second diameter since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Response to Arguments
Applicant's arguments filed 10/21/2025 have been fully considered but they are not persuasive.
Amended claims 1 – 4 on 10/21/2025 does not have support for the mixing of two embodiments. Please read the rejections under 35 U.S.C 112a and 112b above.
Applicant’s arguments with respect to claim(s) 9 – 13 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Examiner encourages Applicant to fill out and submit form PTO-SB-439 to allow internet communications in accordance with 37 CFR 1.33 (MPEP 02.03). Should the need arise to perfect applicant-proposed or examiner’s amendments, authorization for e-mail correspondence would have already been authorized and would save time.
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 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 LAWRENCE AVERICK whose telephone number is (571)270-7565. The examiner can normally be reached 8:00AM - 3:00PM M- F ET.
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/LAWRENCE AVERICK/ Primary Examiner, Art Unit 3799
10/29/2025