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 .
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.
Election/Restrictions
The restriction requirement and the requirement for an election of species are withdrawn. All claims are examined.
Claim Objections
Claim 2 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 1. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 and 8 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 7 recites “A stator making it possible to be disposed in an electric motor driving a valve body of an electrically operated valve”. It is unclear what the limitation “making it possible..” means in this context and how it limits the claim. Furthermore, claim 7 appears to recite that a control board, a board storage portion, a connector portion, and a communicating passage are part of the stator. However, these limitations appear in independent claim 1, while dependent claim 3 recites “a stator”. When read in light of the specification including the claims, it is unclear what stator encompasses.
In claim 8, “the other opening” lacks proper antecedent basis in the claims. It is unclear what the recitation refers to.
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.
(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 7 (as understood) is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mutsumoto et alia (EP 3783777 A1), hereinafter “Mutsumoto ‘777”.
Mutsumoto ‘777 discloses a stator disposed in an electric motor driving a valve body of an electrically operated valve (see Figs. 1, 2, and 6A-9), wherein the stator includes: a control board (420) mounted with an electronic component controlling the electric motor; a board storage portion (upper portion of 400 near 403) for making it possible the control board to be stored in a sealed state (with cap member 440 installed); a connector portion (interior of 402) having an external connection terminal for an electrical connection (422) to the outside and having a sealing structure sealed by fitting to a mating connector (not shown); and a communicating passage (404) for communicating the board storage portion and the connector portion, and wherein the board storage portion comes to the sealed state when the mating connector is fitted to the connector portion (closing off any outside fluid to the communicating passage, see paragraph [0023]).
Claim 7 (as understood) is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mutsumoto et alia (US Patent Application Publication 2020/0263800 A1), hereinafter “Mutsumoto ‘800”.
Mutsumoto ‘800 discloses a stator disposed in an electric motor driving a valve body of an electrically operated valve (see Figs. 1 and 2), wherein the stator includes: a control board (420) mounted with an electronic component controlling the electric motor; a board storage portion (upper portion of 400) for making it possible the control board to be stored in a sealed state (with cap member 440 installed); a connector portion (interior of 402) having an external connection terminal for an electrical connection (422) to the outside and having a sealing structure sealed by fitting to a mating connector (not shown); and a communicating passage (unnumbered but shown in Figs. 1 and 2 a little above terminal 422) for communicating the board storage portion and the connector portion, and wherein the board storage portion comes to the sealed state when the mating connector is fitted to the connector portion (closing off any outside fluid to the communicating passage, see paragraph [0042]).
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 7 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 or 6 of U.S. Patent No. 12,169,031 (the ‘031 patent).
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 7 of the present application is broader than claim 1 or 6 of the ‘031 patent.
Claim 8 appears to recite a perpendicular section that does not appear in the claims of the ‘031 patent. However, a bent passage is considered an obvious variation based on the location of the mating connector and the valve structure.
Allowable Subject Matter
Claims 1 and 3-6 are allowed (with the cancellation of claim 2).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eric Keasel whose telephone number is (571) 272-4929. The examiner works a part-time schedule and can normally be reached on Monday, Tuesday, Thursday, and Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisors, Kenneth Rinehart and Craig Schneider can be reached on 571-272-4881 and 571-272-3607, respectively. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC KEASEL/Primary Examiner, Art Unit 3753
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