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 .
Response to Amendment
Applicant’s reply filed September 3, 2026 is hereby acknowledged. Acknowledgement is also made with respect to Applicant’s cancellation of claims 2 and 5. Thus, claims 1, 3, 4 and 6-20 remain pending and are addressed below.
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.
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 claims 1 and 10;
“gun alignment feature” in claims 1 and 10;
“liquid sealing member” in claims 9 and 10; and
“first and second sealing members” in claim 11.
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.
Minor Claim Suggestions By Examiner
The following changes are recommended to improve clarity of the claims. The claims have been examined on the merits including the suggested changes below.
In claim 14, on lines 26-27, the recitation, “wherein the spray gun connection portion is opposite the coating liquid outlet portion adapted to connect the liquid spray gun nozzle assembly to the spray gun body” is somewhat unclear, because this recitation could be interpreted such that the “coating liquid outlet portion” is “adapted to connect the liquid spray gun nozzle assembly to the spray gun body”, which is not consistent with the disclosure. Thus, it is recommended that Applicant insert --and is -- before “adapted” in the aforementioned recitation.
In claim 17, on lines 24-25, the recitation, “wherein the spray gun connection portion is opposite the coating liquid outlet portion adapted to connect the liquid spray gun nozzle assembly to the spray gun body” is somewhat unclear, because this recitation could be interpreted such that the “coating liquid outlet portion” is “adapted to connect the liquid spray gun nozzle assembly to the spray gun body”, which is not consistent with the disclosure. Thus, it is recommended that Applicant insert --and is -- before “adapted” in the aforementioned recitation.
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, 3, 4, 6-9 and 11-13 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 1, the last nine lines of the claim are extremely confusing, particularly in light of the originally filed disclosure. More specifically, the recitation regarding the “nozzle alignment feature on the spray gun connection portion circumferentially aligned with the first access window...” cannot be understood. With the “nozzle alignment feature” claim term being directly cross-referenced to the original disclosure, particularly with respect to its relationship with the “corresponding gun alignment feature” recited on the last four lines of claim 1, it can only be interpreted that the “nozzle alignment feature” of claim 1 is that (i.e. with reference number “185”) described in the last two lines of page 7 of the specification. Turning to the originally filed drawings, this “nozzle alignment feature 185” is shown in Fig. 13. When viewing Fig. 13, it cannot be understood as to how one can reasonably characterize “nozzle alignment feature 185” as being “circumferentially aligned with the first access window” in combination with being “configured to align with” the “corresponding gun alignment feature” at reference number “285” shown in Figs. 6 and 6A. In fact, the recitation, “circumferentially aligned” is not understood at all. What are the metes and bounds of “circumferentially aligned”? It is noted that the originally filed specification does not explain what “circumferentially aligned” means. In fact, the phrase “circumferentially aligned” does not even appear in the originally filed specification, and “circumferentially aligned” is not a commonly used term whereby there is a clear and accepted definition which one having ordinary skill in the art would readily recognize and understand. Further, with the “corresponding gun alignment feature” being directly cross-referenced to the original disclosure, particularly with respect to its relationship with the “nozzle alignment feature” discussed above, it can only be interpreted that the “corresponding gun alignment feature” of claim 1 is that (i.e. with reference number “285”) described in the last line of page 7, through the first line of page 8 of the specification. Turning to the originally filed drawings, and as discussed above, this “gun alignment feature 285” is shown in Figs. 6 and 6A. With respect to what is shown in (at least) Figs. 6 and 6A, it cannot be understood as to how one can reasonably characterize “gun alignment feature 285” as capable of being “received within the first access window” and aligning “with the first end of the first camming member...” as recited in claim 1.
Regarding claim 6, on lines 2-3, the introduction of “a second camming surface” is unclear. Claim 6, as amended, is now drafted so as to depend from claim 1. Since claim 1 does not identify a “first camming surface”, the metes and bounds of the “second” designated “camming surface” are unclear.
Regarding claim 8, on lines 2-3, the recitation, “wherein the second camming surface has a complementary second camming lug” is confusing, particularly in light of the originally filed disclosure, as well as when combined with the limitations recited on the last three lines of claim 8. In essence, the aforementioned recitation on lines 2-3 of claim 8 can be read such that the “complementary second camming lug” is an element of “the second camming surface”, which is not consistent with the originally filed disclosure, and which contradicts what is set fort on the last three lines of claim 8.
Further, regarding claim 8, on line 3, the recitation, “the first... camming surface(s)” lacks antecedent basis. It is noted that claim 3 introduces “a first camming surface”, however, as amended, claim 8 is no longer in the chain of claims which includes claim 3.
Further, regarding claim 8, on line 4, the recitation, “the complementary first camming lug” lacks antecedent basis. It is noted that claim 4 introduces “a complementary first camming lug”, however, as amended, claim 8 is no longer in the chain of claims which includes claim 4.
Further, regarding claim 8, on line 6, the recitation, “the nozzle assembly sealing surface” lacks antecedent basis. It is noted that claim 4 introduces “a nozzle assembly sealing surface”, however, as amended, claim 8 is no longer in the chain of claims which includes claim 4.
Regarding claim 11, on line 2, the introduction of “a nozzle assembly sealing surface” is unclear. What is this newly introduced “nozzle assembly sealing surface”, as compared to that introduced on line 18 of claim 10? Are they not one and the same element?
Regarding claim 9 (as it now depends from claims 10 and 11), the scope of the claim cannot be understood, particularly in light of the originally filed disclosure. Independent claim 10 recites that the “nozzle alignment feature is formed on a liquid sealing member”. In light of the disclosure, this “nozzle alignment feature” is the element designated by reference number “185” is Fig. 13, which, as disclosed, is apparently defined on the “third sealing member 184”, shown in (at least) Fig. 17; and which is clearly distinct from both the “first” sealing member (shown at reference number “168” in Fig. 17, and introduced in claim 11) and the “second” sealing member (shown at reference number “172” in Fig. 17, and introduced in claim 11), as well as which defines the “liquid needle zone 186”, shown in Fig. 13. Thus, the introduction of this separate and distinct “liquid sealing member” in claim 9 cannot be understood. Isn’t the “liquid sealing member” introduced in claim 9 one and the same as the “liquid sealing member” upon which the “nozzle alignment feature” is formed, as per claim 10?
Regarding claim 13, on line 2, the introduction of “a shaping air zone” is unclear. What is this newly introduced “shaping air zone”, as compared to that introduced on line 7 of claim 11? Are they not one and the same element?
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 14-16 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9, 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, as explained below.
As to claim 14, the patented claims include a liquid spray gun system comprising: a liquid spray gun nozzle assembly comprising: a coating liquid inlet portion comprising a liquid connector for connection to an external liquid source (see patented claim 1); a coating liquid outlet portion comprising a liquid nozzle 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 (see patented claim 1); a coating liquid flow path fluidly connecting the coating liquid inlet portion to the liquid nozzle (see patented claim 1); and a spray gun connection portion (see patented claim 1), the spray gun connection portion comprising: a first camming member (see patented claim 13) disposed on a radially-outward facing surface (as structurally and functionally recited in patented claim 13, it is implied that the recited camming members are defined on a radially-outward facing surface) and comprising a first end, a second end (the structural recitations of the “two camming members” of patented claim 13 clearly imply such “end” features), and a camming surface (implicit with a “camming member” of patented claim 13) facing the coating liquid outlet portion; and a second camming member (the other of the “two camming members” recited in patented claim 13) disposed on the radially-outward facing surface and comprising a first end, a second end, and a camming surface facing the coating liquid outlet portion (see above, with respect to the features of the first camming member, which applies equally to the other/second camming member of the “two camming members” of patented claim 13), and a spray gun body (see patented claim 9) comprising a nozzle key configured to align with a first access window formed in the liquid spray gun nozzle assembly to prevent rotation of the liquid spray gun nozzle assembly relative to the spray gun body (see patented claim 13); wherein the spray gun connection portion is opposite the coating liquid outlet portion and is adapted to connect the liquid spray gun nozzle assembly to the spray gun body (see patented claim 1); wherein the first access window separates the first end of the first camming member from the second end of the second camming member (see patented claim 13); and wherein the nozzle key is configured to fit within the first access window and align with the first end of the first camming member (see patented claim 13).
As to claim 15, see patented claim 13.
As to claim 16, see patented claim 10.
As to claim 20, see patented claim 13, which implies an additional “second access window”, based on the separately-formed / distinctly recited “two camming members”.
Allowable Subject Matter
Claims 10 and 17-19, as incorporating the Examiner’s amendment suggestions set forth in paragraph 6 of the instant Office action, are allowed.
Claims 9 and 11-13 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.
It should be noted that although prior art is not currently applied to claims 1, 3, 4 and 6-8 in the instant Office action, the degree to which these claims are indefinite, as set forth above in paragraph 8 of the instant Office action, essentially precludes application of prior art. Thus, claims 1, 3, 4 and 6-8 cannot be indicated as presenting allowable subject matter at this time, particularly since amending the claim(s) to address the indefiniteness issues could potentially result in a claim scope which requires further search and consideration, which could potentially open the claim(s) up to a subsequent prior art rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Patents to DeYoung and Gohring et al. are cited as of interest.
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 DARREN W GORMAN whose telephone number is (571)272-4901. The examiner can normally be reached Monday-Thursday 6:30-4:30.
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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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