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 .
DETAILED ACTION
This is responsive to the claims filed 12/12/2024. Claims 1 – 20 are pending in this application.
Information Disclosure Statement
The information disclosure statements filed 12/12/2024 and 3/10/2025 are acknowledged by the examiner.
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 Orne, 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 10, 11, 12, 13, 14, 15, 16, 17, 18, 19 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 1, 5, 3, 2, 4, 7, 7, 10, 11 and 12 of U.S. Patent No. 12,209,681.
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 10 of the current application requires “a torque limiting coupling assembly for a valve assembly having a distal valve element and a proximal actuator for moving the valve element, the torque limiting coupling assembly comprising: a valve shaft coupling for connecting to the valve element, the valve shaft coupling forming two opposing helical grooves; an actuator coupling for connecting to the actuator and operatively connected to the valve shaft coupling; a sleeve slidably mounted on the valve shaft coupling and the actuator coupling, the sleeve forming two radially inward facing distal bosses captured to slide in the respective helical grooves; and a bias element extending between the actuator coupling and sleeve to bias the sleeve distally, wherein during movement in a first direction in a torque actuated operation mode when the valve element requires large force, torque is limited by the actuator rotating with respect to the valve shaft coupling so that the two radially inward facing distal bosses are driven proximally in the two opposing helical grooves to compress the bias element while the actuator coupling rotates with respect to the valve shaft to absorb a portion of the large force.
Claim 1 of the patent discloses torque limiting coupling assembly for a valve assembly having a valve element and an actuator for moving the valve element, the torque limiting coupling assembly comprising: a valve shaft coupling for connecting to the valve element, the valve shaft coupling forming opposing helical grooves, each helical groove having a distal closed end; an actuator coupling for connecting to the actuator and secured to the valve shaft coupling along an axis for free rotation about the axis, the actuator coupling: having a collar; and forming opposing linear axial grooves; a sleeve slidably mounted on the valve shaft coupling and the actuator coupling, the sleeve forming two or more radially inward facing distal bosses captured to slide in the respective helical groove and two or more radially inward facing proximal bosses captured to slide in the respective linear axial groove; and a bias element extending between the collar and sleeve to bias the sleeve distally so that the two radially inward facing distal bosses are normally in the distal closed end of the respective helical groove, wherein: in normal operation when the actuator rotates the actuator coupling in a first direction, the sleeve rotates with the actuator coupling by virtue of the radially inward facing proximal bosses in the linear axial grooves and the valve shaft coupling rotates with the sleeve by virtue of the radially inward facing distal bosses pressed into the distal closed end of the linear axial grooves by the spring and, thereby, the valve element turns with the valve shaft coupling; and in torque actuated operation during movement or attempted movement in the first direction when the valve element requires large force, torque is limited by the actuator coupling turning freely with respect to the valve shaft coupling so that the radially inward facing distal bosses are driven proximally in the helical grooves by the valve shaft coupling to compress the bias element while the actuator coupling rotates with respect to the valve shaft coupling rather than forcing the valve shaft coupling to turn.”
Similarly claims 11, 12, 13, 14, 15, 16, 17, 18, 19 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 3, 2, 4, 7, 7, 10, 11 and 12 of U.S. Patent No. 12,209,681.
Claim Rejections - 35 USC § 103
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.
Claim 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent to Conlon (3,335,835) in view of US Statutory Invention Registration to Elliott et al. (H636).
Regarding claim 1, Conlon discloses a torque limiting coupling assembly (Fig. 3) wherein during over-torque actuated operation, the torque limiting coupling assembly(Fig. 3) decouples rotation of the driven shaft (4, Fig. 3) from rotational force imparted by the actuator when an element connected to the driven shaft would otherwise encounter excessive resistance to movement, and wherein the torque limiting coupling assembly translates rotational torque applied thereto by the actuator into a linear force that compresses a bias element (44, Fig. 4) of the torque limiting coupling assembly to absorb the linear force.
Conlon does not explicitly disclose the coupling is used in a valve. However, limiting the applied torque to a valve is well known application as taught by Elliott et al. Elliott et al. teach a torque limiting coupling to avoid damage to valve members during opening closing operation.
Therefore, it would have been obvious to the person having ordinary skill in the art at a time prior to the effective filing date of the application to have adapted the torque limiter disclosed by Conlon to a rotary valve to avoid excessive torque during operation as taught by Elliott et al.
Regarding claim 2, the torque limiter disclosed by Conlon to return from over-torque actuated operation to normal operation, the torque limiting coupling assembly rotates with respect to the actuator to linearly decompress the bias element (44, Fig. 4).
Regarding claims 3 and 4, Conlon discloses the over-torque actuated operation is defined as when resistance to motion of the torque limiting coupling assembly imparts a resistance torque on the torque limiting coupling assembly having a magnitude that surpasses a predetermined torque trip value and the predetermined torque trip value corresponds to a magnitude of a resistance to compressive force provided by the bias element (44, Fig. 4) (Col. 2, Lines 25 -55).
Allowable Subject Matter
Claims 5 – 9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. UK Patent Application to McKean (2,090,346).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to UMASHANKAR VENKATESAN whose telephone number is (571)270-5602. The examiner can normally be reached Monday - Friday 9:30 AM - 6:00 PM.
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/UMASHANKAR VENKATESAN/
Primary Examiner, Art Unit 3753