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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8/19/2026 has been entered.
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 5-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12104721. Although the claims at issue are not identical, they are not patentably distinct from each other because they claim the same subject matter.
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 7-8 and 12 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 recites, “the tube stub plug including a tube stub, a seal surface, and a flow path extending through the tube stub plug from the seal surface to the tube stub.” Claim 7 recites, “the tube stub plug includes a tube stub, a seal surface, and a flow path, wherein the flow path runs through the tube stub plug from the seal surface to the tube stub.” It is not clear to the Examiner whether one or more tube stub plugs including a tube stub, a seal surface, and a flow path are being claimed. The Examiner is unable to determine the metes and bounds of the claim.
Claim 12 recites, “the tube stub plug further comprises a stepped portion adjacent the tube stub plug.” It is unclear to the Examiner exactly what this means. How can the tube stub plug comprise a stepped portion adjacent the tube stub plug? The Examiner is unable to determine the metes and bounds of the claim.
Claim Rejections - 35 USC § 102
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.
Claim(s) 5-7, 9-12, 21, 22 and 24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 4519638, Yodoshi.
In regards to claim 5, in Figures 16-17 and paragraphs detailing said figures, Yodoshi discloses a fluid substrate comprising: a manifold (41) including a circular opening (42); a tube stub plug (50) coupled with the manifold at the circular opening, wherein the tube stube plug is inserted into the circular opening and defines a longitudinal axis, the tube stub plug including a tube stub(1), a seal surface (54), and a flow path extending through the tube stub plug from the seal surface to the tube stub, wherein: an anti-rotation feature (48) prevents the tube stub plug from rotating with respect to the manifold, and an anti-rotation hole is defined in the tube stub plug (52) and the manifold (49), such that the anti-rotation hole extends through the tube stub plug and the manifold and is spaced apart from the flow path in a direction that intersects the longitudinal axis.
In regards to claim 6, in Figures 16-17 and paragraphs detailing said figures, Yodoshi discloses the anti-rotation feature is included in the tube stub plug.
In regards to claim 7, as best understood, in Figures 16-17 and paragraphs detailing said figures, Yodoshi discloses the tube stub plug includes a tube stub, a seal surface, and a flow path, wherein the flow path runs through the tube stub plug from the seal surface to the tube stub.
In regards to claim 9, in Figures 16-17 and paragraphs detailing said figures, Yodoshi discloses the tube stub plug further comprises a circular shape and a tube stub plug through hole, and the anti-rotation feature comprises an element coupled with the tube stub plug through hole and couples the manifold and the tube stub plug.
In regards to claim 10, in Figures 16-17 and paragraphs detailing said figures, Yodoshi discloses the anti-rotation feature runs through the tube stub plug.
In regards to claim 11, in Figures 16-17 and paragraphs detailing said figures, Yodoshi discloses the tube stub plug is secured to the manifold using a threaded connection (threads of 48).
In regards to claim 12, as best understood, in Figures 16-17 and paragraphs detailing said figures, Yodoshi discloses the tube stub plug further comprises a stepped portion adjacent the tube stub plug.
In regards to claim 21, in Figures 16-17 and paragraphs detailing said figures, Yodoshi discloses a fluid substrate comprising: a manifold including, a top surface, a bottom surface (see Fig. 16 below), and an opening; a tube stub plug comprising a seal surface, a tube stub, and a flow path, wherein the tube stub plug aligns with a top surface of the manifold ,wherein the flow path runs through the tube stub plug from the seal surface to the tube stub, and wherein the tube stub plug is coupled with the manifold at the opening, wherein the tube stub plug further comprises an anti-rotation feature configured to prevent the tube stub plug from rotating with respect to the manifold.
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In regards to claim 22, in Figures 16-17 and paragraphs detailing said figures, Yodoshi discloses the anti-rotation feature is included in the tube stub plug.
In regards to claim 24, in Figures 16-17 and paragraphs detailing said figures, Yodoshi discloses the tube stub plug further comprises a circular shape and a tube stub plug through hole, and the anti-rotation feature comprises an element coupled with the tube stub plug through hole and couples the manifold and the tube stub plug.
Response to Arguments
Applicant’s arguments with respect to claim(s) above 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AARON M DUNWOODY whose telephone number is (571)272-7080. The examiner can normally be reached Monday - Friday 9:00 am - 6:00 pm.
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, Matthew Troutman can be reached at 571-270-3654. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AARON M DUNWOODY/ Primary Examiner, Art Unit 3679
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