DETAILED ACTION
Non Final
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 (IDS) submitted on 10/16/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 1-16 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.
The following Claims recite limitations which have insufficient antecedent basis. The Claims and respective limitations include the following: Claim 1, "the valve body" in line 1, "having body" in line 3, "a body" in line 6 (where it is unclear if the same or different body is being introduced at that location); Claim 9, "the valve body" in line 1, "having body" in line 3; Appropriate correction is required.
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 (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 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.
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 and 9 is/are rejected (as indefinitely understood) under 35 U.S.C. 103 as being unpatentable over Dick (US 11519497);
Claim(s) 2-7 and 9-15 is/are rejected (as indefinitely understood) under 35 U.S.C. 103 as being unpatentable over Dick as applied to claims 1 and 9 (as indefinitely understood) above, and further in view of Barry (US 3123880.)
Dick discloses in claim 1: (see at least annotated figures 8b, 11 and 14A below)
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A spring retainer (348 figure 11) secures a solenoid (10b figure 8b as applied to spring retainer 348 of figure 11) in a transmission fluid valve body (18b), the valve body having bores (1002/1004 which are both co-linear and coaxial with each other) therein collinear with one another and collinear with a movable valve stem, and a slot (at 22b2) in the valve body between the bores, the solenoid having body (the outside housing at 1006), a shoulder (36b figure 9, 10), a head (34b), and a neck (32b) between the head and the shoulder, the solenoid positioned in the valve body with the neck located at the slot, the spring retainer, comprising: a body (the structure of 348 figure 11) having an inverted U-shape (closed top, open bottom with legs) with corresponding front (356/358) and rear (354) walls, each of the front and rear walls having a top (1006a,b) and legs (1008a,b), the legs defining free ends (at 1010a,b) opposite the top, the front and rear walls joined to one another at their respective free ends (as shown), at a bend (at 1016 respectively), to space the front and rear walls from one another, the rear wall having a return bend (return to forward at 1018) at the top,
Dick Figure 11 does not disclose, although Figures 8b and 12 teaches: the return bend extending downward (30b, 56) to prevent collapse of the spring retainer when the spring retainer is installed to secure the solenoid in the transmission fluid valve body (Col 13 ln 40-50, provided for the purpose of maintaining operational access to the spring clip when installed in the assembly.)
Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing of the invention to provide Dick’s Figure 11 as taught in Figure 12, with a return bend extending downward so as to prevent collapse of the spring retainer when the spring retainer is installed to secure the solenoid in the transmission fluid valve body as taught with regard to Figure 12 all provided for the purpose of maintaining operational access to the spring clip when installed in the assembly.
Dick discloses (as modified for the reasons discussed above) in claims 2 and 10: the return bend is about a 180 degree bend (56 is a return bending back 180.deg. when installed figure 12)
Dick discloses (as modified for the reasons discussed above) in claims 3 and 11: including a lip (the end surface at 1020 figure 14A before the surface returns…) at an end of the return bend.
Dick discloses (as modified for the reasons discussed above) in claims 4 and 12: the lip is inwardly bent toward the rear wall (1020 bends inward and defines a surface that travels inward to the rear wall.)
Dick discloses (as modified for the reasons discussed above) in claims 5 and 13: … the spring retainer is installed to secure the solenoid in the transmission fluid valve body; but Dick does not disclose: the body is configured such that upon rearward bending of the front wall, the front wall contacts the return bend to prevent collapse of the spring retainer; Barry teaches: a spring retainer body configured that upon rearward bending of the front wall (38 is rearwardly bent so that…), the front wall contacts the return bend (44/62) to prevent collapse of the spring retainer (i.e. to maintain a structural distance therebetween, and thus all for the purpose of increasing the bearing capacity as well as for example the resilience of the retainer);
Accordingly it would have been further obvious to one of ordinary skill in the art at the time of filing of the invention to provide Dick as taught in Barry, the spring retainer body configured that upon rearward bending of the front wall as taught in Barry with it being rearwardly bent so that the front wall can contact the return bend so as to prevent collapse of the spring retainer, to maintain a structural distance therebetween, and thus all for the purpose of increasing the bearing capacity as well as for example the resilience of the retainer.
Dick discloses (as modified for the reasons discussed above) in claim 6: The spring retainer of claim 1, wherein the legs each comprise an angled portion (the ends at 56 or 58) that angles inwardly from the front wall to the rear wall thereof.
Dick discloses (as modified for the reasons discussed above) in claims 7 and 15: but Dick does not disclose, although Barry teaches: a stabilizer (12 is a piece of sheet metal that acts as a stabilizing member that is…) configured for positioning in the spring retainer between the front (38) and rear (62) walls thereof (before inserting/connecting the spring retainer into the annular spaced slot (between the portion 26 and 18 figure 11) to assist in spacing the front and rear walls from one another (for the purpose of for example, maintaining a proper fit there between, and to connect the parts together without play);
Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing of the invention to provide Dick as taught in Barry, with a stabilizer that can be a piece of sheet metal that acts as a stabilizing member and can be configured for positioning in the spring retainer between the front and rear walls as taught in Barry for that of Dick, and to assist in spacing the front and rear walls from one another, all for the purpose of for example, maintaining a proper fit there between and to connect the parts together without play.
Dick teaches in claim 9: [An apparatus (348 figure 11) that performs…] A method to stabilize a solenoid (10b figure 8b as applied to spring retainer 348 of figure 11) in a transmission fluid valve body (18b), the valve body having bores (at 1002/1004) therein collinear with one another and collinear with a movable valve stem (24/25), and a slot (at 22b2) in the valve body between the bores, the solenoid having body (1006), a shoulder (36b figures 9 and 10), a head (34b), and a neck (32b) between the head and the shoulder, the solenoid positioned in the valve body with the neck located at the slot (as shown), the method comprising: inserting a spring retainer (348) on the solenoid neck in the slot, such that a front wall (356/358) of the spring retainer rests on and applies a force on the solenoid head (i.e. towards that side), and a portion of a rear wall (354) of the spring retainer rests on a rear wall of the valve body slot (as shown opposite to the front), wherein the rear wall has a return bend (at 1016 or 1018); Dick Figure 11 does not disclose, although Figures 8b and 12 teaches: the return bend extending downward (30b, 56) to prevent collapse of the spring retainer when the spring retainer is installed to secure the solenoid in the transmission fluid valve body (Col 13 ln 40-50, provided for the purpose of maintaining operational access to the spring clip when installed in the assembly.)
Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing of the invention to provide Dick’s Figure 11 as taught in Figure 12, with a return bend extending downward so as to prevent collapse of the spring retainer when the spring retainer is installed to secure the solenoid in the transmission fluid valve body as taught with regard to Figure 12 all provided for the purpose of maintaining operational access to the spring clip when installed in the assembly.
Dick discloses (as modified for the reasons discussed above) in claim 14: The method of claim 9, wherein the spring retainer comprises a body having an inverted U-shape (as shown with the U end facing downward for insertion into the slot.)
Election/Restrictions
Claims 1-16 are drawn to a previously elected invention in the parent application US SN 18090266 and in view of this, the previous restriction requirement is not applicable to the instant application and this application cannot be considered a divisional. Thus this application is subject to a non-statutory double patenting rejections over the claims of the parent application.
Once the restriction requirement is withdrawn (or in this case as elected via original presentation), the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
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.
Application Claims 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over Patent Claims 1-15 of U.S. Patent No. 12,188,525. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Application Claims 1 and 9 filed on 10/16/2024, (as incorporated by reference herein for comparison purposes) as compared to the more narrowly claimed limitations Patent Claims 7 and 9; as issued on 1/7/2025 (as incorporated herein by reference for comparison purposes), where it is noted that the conflicting claims are not patentably distinct, and the more narrowly recited claim limitations of the Patent Claims 7 and 9 anticipate and/or are render obvious the recited claim limitations of the broader Application Claims 1 and 9. Considering that anticipation is the epitome of obviousness, the limitations are not considered distinctive and must be rejected. Lastly the Office takes Official Notice that any differences between the Application Claims and the Patent Claims are old and well known in the art and accordingly re mere obvious variations of one another.
Allowable Subject Matter
Claims 8 and 16 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action (along with a properly executed terminal disclaimer to obviate the non statutory double patenting rejection) and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art fails to disclose or render obvious “the spring retainer comprises a body having an inverted U-shape and the stabilizer has an inverted U-shape corresponding thereto” in combination with the other limitations set forth above; and in consideration of the remarks in the parent application US SN 18/090,266 page 2 of the response filed on 9/6/2024.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW W JELLETT, whose telephone number is 571-270-7497. The examiner can normally be reached on Monday-Friday (9:30AM-6:00PM EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisors can be reached by phone. Ken Rinehart can be reached at (571)-272-4881, or 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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/Matthew W Jellett/Primary Examiner, Art Unit 3753