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 .
Information Disclosure Statement
The IDS forms filed on January 15, 2025 and May 19, 2025 are hereby acknowledged and have been placed of record. Please find attached a signed copy of the aforementioned IDS forms.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: Reference number “250” (Figs. 18, 19 and 21) is not found in the specification. The following recommended amendment will overcome the above objection:
On line 10 of page 9 in the specification, inserting --250-- between “features” and “that”.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
4. The drawings are also objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: Reference numbers “442” and “444” (see line 7 on page 5 of the specification) are not included in the drawings. It should be noted that reference number “442” is used to denote the “shaping air zone” and reference number “444” is used to denote the “center air zone” in the aforementioned portion of the specification. However, this is not consistent with lines 7-8 on page 7 of the specification, which describes “shaping air zone 176” and “center air zone 180”. It should also be noted that reference numbers “176” and “180” are shown in at least Fig. 17 of the drawings.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
5. 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.
6. 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.
7. This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“nozzle alignment feature” in claim 1;
“gun alignment feature” in claim 1; and
“liquid sealing member” in claim 9.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
8. 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.
9. Claims 6-8 and 10-20 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.
Regarding claim 6, on line 3, the recitation, “the first access window” lacks antecedent basis.
Regarding claim 8, on lines 1-2, the recitation, “further comprising a second camming surface” renders the claim unclear. What is this “second camming surface”, as compared to that introduced on line 2 of claim 6 (from which claim 8 depends).
Regarding claim 10, on line 2, the recitation, “the liquid sealing member” lacks antecedent basis.
Regarding claim 11, the entire claim is unclear because, in the manner that the claim is drafted, it cannot be ascertained whether or not the “assembly” of claim 11 actually requires the “nozzle assembly sealing surface” and the recited limitations thereof.
Regarding claim 14, although the claim initially appears to be drafted as a combination claim which includes the “spray gun body” and the “liquid spray gun nozzle assembly”, the way in which the claim is laid out may result in an interpretation whereby the “system” only requires the “spray gun body”, because the claim does not clearly specify that the “system” also comprises the “liquid spray gun nozzle assembly”. In other words, the “liquid spray gun nozzle assembly” is introduced in a functional manner on lines 3-4 of the claim, and the rest of the claim merely defines the functionally introduced “liquid spray gun nozzle assembly”, without actually stating that the system requires the liquid spray gun nozzle assembly and the limitations thereof. Thus, the metes and bounds of the claim cannot be clearly ascertained to put the public on notice as to what does or does not infringe on the claim. For purposes of examining claims 14-20 on the merits, the claims will be interpreted so as to require both the “spray gun body” and the “liquid spray gun nozzle assembly”, and all of the limitations thereof.
Regarding claim 17, on lines 2-3, the recitation, “the first and second camming surfaces” is somewhat unclear. Claim 14 introduces “a camming surface” associated with each of the “first camming member” and the “second camming member”, however those introduced camming surfaces are not clearly prefaced with the words “first” and “second” in claim 14. It should be noted that claim 18, which depends directly from claim 17, also recites “the first and second camming surfaces”.
Double Patenting
10. 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.
11. Claims 1, 2, 9 and 11-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 12 and 13 of U.S. Patent No. 11,666,934. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the aforementioned patent include each of the essentially recited elements and interrelated limitations thereof, as set forth in the aforementioned claims of the instant application.
Regarding claim 1, see patented claims 1 and 2
Regarding claim 2, see patented claim 1, and note that the “outer wall comprising a radially-outward facing surface” is clearly implied by structural elements recited in patented claim 1, such as elements of the “nozzle assembly sealing surface”.
Regarding claim 9, see patented claim 12.
Regarding claim 11, see patented claim 1.
Regarding claim 12, see patented claim 1.
Regarding claim 13, see patented claim 13.
12. Claims 1, 2 and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7 and 10 of U.S. Patent No. 11,766,686. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the aforementioned patent include each of the essentially recited elements and interrelated limitations thereof, as set forth in the aforementioned claims of the instant application.
Regarding claim 1, see patented claims 1, 7 and 10
Regarding claim 2, see patented claim 1, and note that the “outer wall comprising a radially-outward facing surface” is clearly implied by structural elements recited in patented claim 1, such as elements of the “spray gun connection portion”.
Regarding claim 9, see patented claim 1.
13. Claims 1-3, 5, 9, 11-16 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6-10 and 13 of U.S. Patent No. 12,151,258. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the aforementioned patent include each of the essentially recited elements and interrelated limitations thereof, as set forth in the aforementioned claims of the instant application.
Regarding claim 1, see patented claims 1, 9 and 13.
Regarding claim 2, see patented claim 1, and note that the “outer wall comprising a radially-outward facing surface” is clearly implied by structural elements recited in patented claim 1, such as elements of the “spray gun connection portion”.
Regarding claim 3, see patented claim 13.
Regarding claim 5, see patented claim 13.
Regarding claim 9, see patented claim 1.
Regarding claim 11, see patented claim 8.
Regarding claim 12, see patented claims 6 and 7.
Regarding claim 13, see patented claim 6 and 7.
Regarding claim 14, see patented claims 1, 9 and 13.
Regarding claim 15, see patented claim 13.
Regarding claim 16, see patented claim 10.
Regarding claim 20, see patented claim 13, which implies two distinct “access windows”, based on the distinctly recited “two camming members”.
Claim Rejections - 35 USC § 102
14. 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.
15. Claims 1-8 and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by J. Wagner GMBH (hereinafter “Wagner”), EP1340550B1 (cited on the IDS filed 01/15/2025 as Foreign Patent Document No. 1).
As to claim 1, Wagner (see Figs. 1-5) shows a liquid spray gun nozzle assembly (inclusive of 22 and elements thereof) comprising: a coating liquid inlet portion (7, 8) comprising a liquid connector (8) for connection to an external liquid source (9); a coating liquid outlet portion (4, 6) comprising a liquid nozzle (4) for spraying a coating liquid fed into the nozzle assembly through the coating liquid inlet portion, the liquid nozzle being disposed along a spray axis (central longitudinal axis through 22); a coating liquid flow path (inclusive of 17) fluidly connecting the coating liquid inlet portion to the liquid nozzle; a spray gun connection portion (upstream end region of 22) opposite the coating liquid outlet portion adapted to connect the liquid spray gun nozzle assembly to a compatible liquid spray gun body (21), the spray gun connection portion comprising: a nozzle alignment feature (40) on the spray gun connection portion configured to align with a corresponding gun alignment feature (39) on the compatible liquid spray gun body to enhance rotational alignment of the liquid spray gun nozzle assembly with the compatible liquid spray gun body.
As to claim 2, Wagner shows the liquid spray gun nozzle assembly of claim 1, and wherein the spray gun connection portion further comprises an outer wall (outer wall having each of 27; see Fig. 2) comprising a radially-outward facing surface (the outward facing surface of the region applied to the “outer wall” above; see again, Fig. 2).
As to claim 3, Wagner shows the liquid spray gun nozzle assembly of claim 2, and wherein the radially-outward facing surface comprises a first camming member (either of the two camming members 27) disposed on the radially-outward facing surface and comprising a first end, a second end, and a first camming surface facing the coating liquid outlet portion (see again, Fig. 2).
As to claim 4, Wagner shows the liquid spray gun nozzle assembly of claim 3, and wherein the first camming surface is adapted to interact with a complementary camming lug (whichever of camming lugs 26 that interfaces with the camming member applied to the “first camming member”, above) on the compatible liquid spray gun body to pull the liquid spray gun nozzle assembly along the spray axis to attach a nozzle assembly sealing surface in sealing relation with the compatible liquid spray gun body.
As to claim 5, Wagner shows the liquid spray gun nozzle assembly of claim 3, and further comprising a first access window (one of the two spaces defined between the ends of two camming members 27) proximate the first end of the first camming member (as chosen between the ends of the two camming members 27).
As to claim 6, Wagner shows the liquid spray gun nozzle assembly of claim 4, and further comprising a second camming member (the other of the two camming members 27, not applied to the “first camming member” above) comprising a first end, a second end, and a second camming surface facing the coating liquid outlet portion, wherein a first access window (one of the two spaces defined between the ends of two camming members 27) separates the first end of the first camming member from the second end of the second camming member.
As to claim 7, Wagner shows the liquid spray gun nozzle assembly of claim 6, and further comprising a second access window (the other of the two spaces defined between the ends of two camming members 27, not applied to the “first access window” above) separating the first end of the second camming member from the second end of the first camming member (as chosen between the ends of the two camming members 27).
As to claim 8, Wagner shows the liquid spray gun nozzle assembly of claim 6, and wherein the first and second camming surfaces are adapted to interact with complementary camming lugs (26) on the compatible liquid spray gun body to pull the liquid spray gun nozzle assembly along the spray axis to locate the nozzle assembly sealing surface in sealing relation with the compatible liquid spray gun body.
As to claim 11, Wagner shows the liquid spray gun nozzle assembly of claim 1, and wherein a nozzle assembly sealing surface comprises first and second sealing members that are each circular and concentric with one another.
As to claim 12, it is noted that the claim in drafted in a manner which may be interpreted whereby the assembly of claim 1 is not further limited at all (see paragraph 9 of the instant Office action). Regardless, Wagner shows the liquid spray gun nozzle assembly of claim 11, and wherein a first sealing member (28) is included, and wherein a second sealing member (no reference number, but shown on the outer periphery of the element labeled “31” in Fig. 5) are concentric about the spray axis.
As to claim 13, Wagner shows the liquid spray gun nozzle assembly of claim 11, and wherein, upon connection to the compatible liquid spray gun body, a shaping air zone (the region located radially inward of the area where elements 26 and 27 are shown in Fig. 5) is isolated between the first and second sealing members.
16. Claims 1, 2 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Smith, USPN 5,609,302.
As to claim 1, Smith (see Figs. 1-10) shows a liquid spray gun nozzle assembly (inclusive of 230 and elements thereof; see Figs. 5 and 6) comprising: a coating liquid inlet portion (at 42) comprising a liquid connector (43) for connection to an external liquid source; a coating liquid outlet portion (downstream end of 230) comprising a liquid nozzle (46, as it pertains to the embodiment shown in Figs. 5 and 6) for spraying a coating liquid fed into the nozzle assembly through the coating liquid inlet portion, the liquid nozzle being disposed along a spray axis (central longitudinal axis through 230); a coating liquid flow path (inclusive of 45, as it pertains to the embodiment shown in Figs. 5 and 6) fluidly connecting the coating liquid inlet portion to the liquid nozzle; a spray gun connection portion (234) opposite the coating liquid outlet portion adapted to connect the liquid spray gun nozzle assembly to a compatible liquid spray gun body (225), the spray gun connection portion comprising: a nozzle alignment feature (236) on the spray gun connection portion configured to align with a corresponding gun alignment feature (238) on the compatible liquid spray gun body to enhance rotational alignment of the liquid spray gun nozzle assembly with the compatible liquid spray gun body.
As to claim 2, Smith shows the liquid spray gun nozzle assembly of claim 1, and wherein the spray gun connection portion further comprises an outer wall (outer wall of 234; see Fig. 5) comprising a radially-outward facing surface (outer surface of 234; see again, Fig. 5).
As to claim 9, Smith shows the liquid spray gun nozzle assembly of claim 1, and further comprising a liquid sealing member (47, 48) configured to facilitate provision of a liquid needle (64) within a liquid needle zone (see Fig. 10).
Allowable Subject Matter
17. Claims 10 and 17-19 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 and to include all of the limitations of the base claim and any intervening claims.
Conclusion
18. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Patent Application Publication to Yang et al., is cited as of interest.
19. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARREN W GORMAN whose telephone number is (571)272-4901. The examiner can normally be reached Monday-Thursday 6:30-4:30.
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, Arthur Hall can be reached at (571)270-1814. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DARREN W GORMAN/Primary Examiner, Art Unit 3752
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