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 .
Election/Restrictions
Claims 7-8, 10-11, 13-14 and 17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/7/25.
The traversal is on the ground(s) that the search of all the species can be conducted “without serious burden” (Remarks, page 3). This is not found persuasive because it is a conclusory statement that is not supported by reason or evidence. The factors establishing burden are set forth on page 3 of the restriction requirement.
The requirement is still deemed proper and is therefore made FINAL.
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 (i.e., changing from AIA to pre-AIA ) 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.
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, 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 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(s) 1-6, 12 and 15-16 is/are rejected under 35 U.S.C. 102a1/a2 as being anticipated by Kolze (US 5,299,775), which discloses:
An oscillating valve, comprising:
a housing (30) including a supply orifice (31) that receives fluid and a consumption orifice (32) that expels fluid;
a diaphragm (58) defining a first volume (below the diaphragm) and a second volume (above the diaphragm) within the housing, wherein the supply orifice is configured to supply fluid into the first volume (via 63) and the consumption orifice is configured to expel the fluid from the first volume (when the valve opens), and wherein the diaphragm includes a restricted flow path (63) to permit fluid flow between the first volume and the second volume;
a pilot channel (64) connecting the second volume to the consumption orifice;
a main valve (34) connected to the diaphragm,
wherein the diaphragm is configured to move between a closed position (FIG 2) in which the main valve prevents fluid flow through the first volume and an open position (FIG 3) in which the main valve permits fluid flow through the first volume,
wherein, when the diaphragm is in the closed position, first fluid pressure in the first volume forces the diaphragm toward the open position (when the main valve is closed and pilot valve begins to open, the main valve begins to open; e.g., col. 8 lines 28-64), and
wherein, when the diaphragm is in the open position, second fluid pressure in the second volume forces the diaphragm toward the closed position (as the pilot valve closes, fluid pressure in chamber 51 closes the main valve; col. 7 lines 49-65); and
an actuator (40) configured to selectively prevent movement of the diaphragm away from the closed position and prevent movement of the diaphragm away from the open position (coil assembly 40 controls the pilot valve, which operates to maintain the main valve opened or closed).
2. The oscillating valve of claim 1, wherein the actuator is configured to prevent movement of the diaphragm away from the closed position or prevent movement of the diaphragm away from the open position without operating against the first or second fluid pressures (e.g., actuator 40 can keep the pilot valve open, thus maintaining the main valve open, without acting against fluid pressure).
3. The oscillating valve of claim 1, wherein the restricted flow path comprises one or more bleed holes (63) that permit fluid through the diaphragm.
4. The oscillating valve of claim 3, further comprising:
a pilot valve (48) connected to the diaphragm,
wherein the pilot valve prevents fluid through the pilot channel when the diaphragm is in the closed position (when the pilot valve is closed as in FIG 2, it causes pressure to remain in chamber 51, keeping the main valve closed; e.g., col. 7 lines 49-56), and
wherein the pilot valve permits fluid through the pilot channel when the diaphragm is in the open position (as the pilot valve opens, it relieves pressure in chamber 51, thereby allowing the main valve to open; e.g., col. 8 lines 28-64).
5. The oscillating valve of claim 4, wherein the actuator is configured to engage a feature (68) on the pilot valve to prevent movement of the diaphragm (68 operates the pilot valve to maintain the main valve open or closed).
6. The oscillating valve of claim 4, wherein the actuator is further configured to selectively: permit oscillation of the diaphragm between the closed position and the open position (the actuator itself is capable of permitting oscillation, such as during normal operational cycling in which the valve opens and closes).
12. The oscillating valve of claim 1, further comprising: a return spring (71) biased (downward) against expansion of the diaphragm into the second volume.
15. The oscillating valve of claim 1, wherein the housing defines a substantially cylindrical internal space (in which 50 is located), and wherein the diaphragm is axially aligned (e.g., see FIGS 2, 3) with a valve seat (53) for the main valve.
16. The oscillating valve of claim 1, wherein the actuator include a solenoid (e.g., col. 10 line 19).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kolze in view of Wilson (US 5,244,179).
Regarding claims 18, Kolze does not disclose the actuator to be battery-powered. However Wilson teaches that it was known in the art before the effective filing date to use an actuator that is battery-powered (e.g., see Title, claim 1, throughout specification). To power Olson’s actuator in without the need for power lines, it would have been obvious to use a battery, as taught by Wilson.
Claim(s) 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Olson (US 2,968,464) in view of Wilson (US 5,244,179).
Regarding claim 18, Olson discloses a valve system, comprising:
a housing (10) including a supply orifice (13) and a consumption orifice (14);
a piston (32) defining a first volume (below 32) and a second volume (above 32) within the housing, the piston including a restricted flow path (40) to permit fluid flow through or around the piston between the first volume and the second volume;
a pilot channel (16) connecting the second volume to the consumption orifice;
a main valve (24) connected to the piston,
wherein the piston is configured to move between a closed position in which the main valve prevents fluid flow through the first volume (24 seats against 26) and an open position in which the main valve permits fluid flow through the first volume (24 lifts away from 26),
wherein, when the piston is in the closed position, first fluid pressure in the first volume forces the piston toward the open position (fluid pressure below the piston from the inlet acts upward on the piston), and
wherein, when the piston is in the open position, second fluid pressure in the second volume forces the piston toward the closed position (fluid pressure from fluid above the piston acts downward on the piston); and
a
Olson does not disclose the actuator to be battery-powered. However Wilson teaches that it was known in the art before the effective filing date to use an actuator that is battery-powered (e.g., see Title, claim 1, throughout specification). To power Olson’s actuator in without the need for power lines, it would have been obvious to use a battery, as taught by Wilson.
Regarding claim 19, Olson also discloses a pilot valve (42) connected to the piston,
wherein the pilot valve prevents fluid through the pilot channel when the piston is in the closed position (the pilot valve can be closed when the main valve is closed), and
wherein the pilot valve permits fluid through the pilot channel when the piston is in the open position (the pilot valve can be open when the main valve is open).
Claim(s) 20 is/are rejected under 35 U.S.C. 102a1/a2 as being anticipated by Olson.
During the normal and usual operation of Olson’s system, the claimed method would necessarily be performed. These method steps are clearly analogous to operation of the corresponding structure set forth in the analysis of Olson immediately above.
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 1-5, 9 and 12 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 8 and 18 of U.S. Patent No. 12,078,256. Although the claims at issue are not identical, they are not patentably distinct from each other because the differences amount to stylistic changes and the patented claims reciting more than the pending claims. The pending: patented claim correspondence is as follows 1: 1, 2, 4; 2:5; 3:2; 4:3; 5:4; 9:8; and 12:18.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 11,079,037 discloses a similar pilot-operated piston valve, the pilot valve of which is manually-operated.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM M MCCALISTER whose telephone number is (571)270-1869. The examiner can normally be reached M-F from 7am to 6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CRAIG SCHNEIDER, can be reached at telephone number 571-272-3607, or Kenneth Rinehart can be reached at 571-272-4881. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/WILLIAM M MCCALISTER/ Primary Examiner, Art Unit 3753 11/18/25
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