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 Arguments
Applicant’s response filed on 16 April 2026 overcomes the previously raised Objections to the Specification and Claim Objections. With regards to the 103 prior art rejections, applicant’s arguments, see P8-9 of 10 of the remarks filed 16 April 2026, with respect to the 103 rejections of at least claims 1-5, 14, 17 and 19 have been fully considered and are persuasive. The 103 rejections of claims 1-5, 12-13, 14-16, 17 and 19-20 has been withdrawn. The Office notes that the statutory Double Patenting rejections of claims 6-8 and 17-18 and the non-statutory Double Patenting rejections of claims 1-20 were not addressed. Notice that for the non-statutory Double patenting rejections, a terminal disclaimer was not filed and also notice that for the statutory Double Patenting rejections, filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 USC 101. As such, the application is not in condition for allowance and a final Office Action is being issued.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 6-8 and 17-18 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 5-6, 17 and 20 of prior U.S. Patent Breeden US-12188592. This is a statutory double patenting rejection.
Notice that the claim limitations of claim 6 of the application can all be found in claim 1 of the Breeden US-12188592 patent, similarly claim 7 of the application can be found in claim 5 Breeden US-12188592 patent; similarly claim 8 of the application can be found in claim 6 Breeden US-12188592 patent; similarly claims 17-18 of the application can be found in claims 17 and/or 20 of the Breeden US-12188592 patent.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent Breeden US-11927284; additionally, claims 1-5, 9-16 and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent Breeden US-12188592.
Although the claims at issue are not identical, they are not patentably distinct from each other because the device of the claims of the patents either explicitly or implicitly anticipates all the limitations of the present application and/or any missing structure or detail would be obvious over the claims of the patents themselves and/or the cited prior art. Notice that the claims of the application generally broadly claims a hose/ a connection assembly for connecting inner and outer hoses having a first connector assembly, a fluid connector, a second connector assembly, a first hose connector assembly, a first tube connector, a first collar, a second hose connector assembly, a second tube connector and a second collar. It is noted that the claims of the patents include all of these in greater detail including details of the regulator and stress relief device which are claimed broadly in dependent claims of the application. It is further noted that claims 1 and 5 of the application broadly mirrors the limitations of claim 1 of Breeden US-12188592 patent; claims 2-4 of the application broadly mirrors the limitations of claims 2-4 of Breeden US-12188592; claim 9 of the application broadly mirrors the limitations of claim 9 of Breeden US-12188592, claims 10-11 of the application broadly mirrors the limitations of claim 13-14 of Breeden US-12188592, claims 12-13 of the application broadly mirrors the limitations of claims 8-9 of Breeden US-12188592; claims 14-16 of the application broadly mirrors the limitations of claims 17-19 of Breeden US-12188592; and claims 19-20 of the application broadly mirrors the limitations of claims 10 and 12 of Breeden US-12188592. Following the rationale in In re Goodman cited in the preceding paragraph, where the applicant has once been granted a patent containing a claim for the specific or narrower invention, the applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer. Note that since the claims of the application are anticipated by the claims of the patent and since anticipation is the epitome of obviousness, then the claims of the application are obvious over the claims of the patent. Additionally, any missing structure or detail would be obvious over the cited prior art in a similar manner as applied in the rejections above with at least Pan US-10480691 teaching of an expandable hose with a connection assembly with similar features such as the use of connectors, tube connector and collars that allows for the safely securing the inner and outer tubes to water supply lines while enjoying the benefits of an expandable hose; with Berardi US-8757213 teaching of another example of an expandable hose and teaching of the interconnection between a spigot and a nozzle which allows the expandable hose to connect to conventional threads in fluid supply equipment in a similar manner as applicant’s invention; and with Kuster US-5881757 teaching of details of a pressure regulator that allows fluid pressure to be delivered at a constant pressure, which minimizes pressure changes at the outlet and protects components downstream of the first connector assembly from high pressure spikes.
Conclusion
THIS ACTION IS MADE FINAL. 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 DAVID COLON-MORALES, whose telephone number is 571-270-1741 and fax number is 571-270-2741. If the applicant has authorized internet communications via the filling of form PTO/SB/439, the examiner can be reached via email at david.colon-morales@uspto.gov , email communication is not permitted if the applicant has not filed an authorization for internet communication (see MPEP 502.03 for more details on internet communications). The examiner can normally be reached on Monday-Friday (7:30AM-3:30PM EST).
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 supervisors can be reached by phone. KENNETH 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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/DAVID COLON-MORALES/Primary Examiner, Art Unit 3753
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