DETAILED ACTION
Response to Amendment
This Office Action is responsive to the amendment filed on 07/01/2026. As indicated by the amendment: claims 1 and 2 have been amended. Claims 1-20 are presently pending in the application, with claims 13-14 and 16-20 withdrawn from consideration.
Election/Restrictions
Applicants’ arguments, see pages 7-9 of the Remarks, filed 07/01/2026, with respect to the withdrawal of claims 13-14 and 16 from consideration, have been fully considered and are persuasive. Applicant has provided sufficient evidence and reasoning as to why the dependent claims read on the elected species (see pages 7-9 of the Remarks filed 07/01/2026). Accordingly, the election of species requirement of 01/14/2026 has been partially withdrawn. Claims 1-20 are pending in the application, with claims 17-20 withdrawn from consideration.
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.
Claims 12-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-16 of U.S. Patent No. 12,075,979. Although the claims at issue are not identical, they are not patentably distinct from each other because all elements in the application claims are covered by the patented claims. Except for a minor difference in terminology, it is clear that all elements of claims 12-16 are found in claims 13-16 of the patent. The difference between the claims of the application and the claims of the patent is that the patent claims include more elements and is thus more specific than the claims of the application. Thus, the invention of claims 13-16 of the patent is in effect a “species” of the “generic” invention of claims 12-16 of the application. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2D 2010 (Fed. Cir. 1993). Since claims 12-16 are anticipated by claims 13-16 of the patent, they are not patentably distanced from the patent claims.
Allowable Subject Matter
In the Non-Final Rejection of 04/06/2026, claims 1-11 were allowed. Reasons for allowance were provided (see pages 5-6 of the Non-Final Rejection of 04/06/2026).
Regarding independent claim 11, Applicant persuasively argues that Taniguchi does not specifically disclose an inner member slidably disposed within the valve stem (see pages 10-12 of the Remarks filed 07/01/2026). Although Taniguchi discloses a jut-out portion (1322E) that moves when the valve stem (11) is depressed, the jut-out portion is a component of the valve stem and moves together with it, such that it cannot be considered to be slidably disposed within the valve stem. The prior art of record does not remedy this deficiency. Accordingly, upon filing a terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) to overcome the double patenting rejection, claims 11, and claims 12-16 depending therefrom, will be allowed.
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 RYNAE E BOLER whose telephone number is (571)270-3620. The examiner can normally be reached Mon - Fri 9:00-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anhtuan Nguyen can be reached at 571-272-4963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RYNAE E BOLER/Examiner, Art Unit 3795
/ANHTUAN T NGUYEN/Supervisory Patent Examiner, Art Unit 3795
9/9/26
Prosecution Insights