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 .
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 1, 2, 3, 11, 15, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 3, 6, 6, and 6, respectively, of U.S. Patent No. 11,156,302. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 4, 3, 6, 6, and 6 of U.S. Patent No. 11,156,302 “anticipate” Application claims 1, 2, 3, 11, 15, and 19, respectively. Accordingly, Application claims 1, 2, 3, 11, 15, and 19 are not patentably distinct from Patent claims 1, 4, 3, 6, 6, and 6, respectively.
Patent claim 1 Requires:
A tub and shower diverter assembly comprising: a manifold sub-assembly configured to be detachably coupled to, and in fluid communication with, an existing waterway connector of a conventional tub and shower diverter system, the manifold sub-assembly comprising: a manifold; a first flow control valve coupled to the manifold, the first flow control valve configured to provide a flow of water to one of a tub or a shower device; a second flow control valve coupled to the manifold, the second flow control valve configured to provide a flow of water to the other of the tub or the shower device; a first tolerance adjustor adjustably coupled to the first flow control valve; and a second tolerance adjustor adjustably coupled to the second flow control valve; wherein the first tolerance adjustor is configured to be selectively adjusted to change an axial position of the first tolerance adjustor relative to a wall adjacent the manifold sub-assembly; wherein the second tolerance adjustor is configured to be selectively adjusted to change an axial position of the second tolerance adjustor relative to the wall.
Application claim 1 Requires:
A tub and shower diverter assembly comprising: a manifold sub-assembly configured to be detachably coupled to, and in fluid communication with, an existing waterway connector of a conventional tub and shower diverter system, the manifold sub-assembly comprising: a manifold; a flow control valve coupled to the manifold, the flow control valve configured to provide a flow of water to a tub or a shower device; and a tolerance adjustor coupled to the flow control valve, wherein the tolerance adjustor is configured to be selectively adjusted to change an axial position of the tolerance adjustor relative to a wall adjacent the manifold sub-assembly.
Thus, it is apparent that the more specific Patent claim 1 encompasses Application claim 1. Following the rationale in In re Goodman cited in the above paragraph, where Applicant has once been granted a patent containing a claim for the specific or narrower invention, 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 Application claim 1 is anticipated by Patent claim 1 and since anticipation is the epitome of obviousness, then Application claim 1 is obvious over Patent claim 1.
Similarly, claims 2, 3, 11, 15, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4, 3, 6, 6, and 6, respectively, for the same reason set forth above.
Claim Rejections - 35 USC § 103
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.
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(s) 1-4, 9-11, and 13-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ye et al. (Pub. No. US 2018/0313066) in view of Feng (Pub. No. US 2015/0308086).
Regarding claim 1, Ye et al. disclose a tub and shower diverter assembly (Figs. 1-27) comprising: a manifold sub-assembly (Fig. 5) configured to be in fluid communication with a conventional tub and shower diverter system (4), the manifold sub-assembly comprising: a manifold (40); a flow control valve (42) coupled to the manifold (40), the flow control valve (42) configured to provide a flow of water to a tub or a shower device (paragraph 118); and a tolerance adjustor (44) coupled to the flow control valve (42), wherein the tolerance adjustor (44) is configured to be selectively adjusted to change an axial position (paragraph 121) of the tolerance adjustor (44) relative to a wall (1) adjacent the manifold sub-assembly, but lacks disclosure wherein the manifold sub-assembly is configured to be detachably coupled to, and in fluid communication with, an existing waterway connector of the conventional tub and shower diverter system.
Feng teaches a tub and shower diverter assembly (Figs. 1-31) comprising a manifold sub-assembly (3) that is configured to be detachably coupled to, and in fluid communication with, an existing waterway connector (2) of a conventional tub and shower diverter system (paragraph 34).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the assembly of Ye et al. with a manifold sub-assembly detachably coupled to an existing waterway as taught by Feng, for the advantage of replacing the manifold sub-assembly conveniently without the need to switch off the main valve (paragraph 32).
Regarding claim 2, Ye et al. disclose the tub and shower diverter assembly (Figs. 1-27), further comprising an escutcheon (45) and a push button (452) coupled to the escutcheon (45), wherein the push button (452) abuts (paragraph 134) the tolerance adjustor (44).
Regarding claim 3, Ye et al. disclose the tub and shower diverter assembly (Figs. 1-27), wherein the tolerance adjustor (44) comprises an adapter (442) and an extension (441), and wherein the extension (441) is threadably coupled (paragraph 122) to the adapter (442) and the adapter (442) is coupled to a stem (421) of the flow control valve (42).
Regarding claim 4, Ye et al. disclose the tub and shower diverter assembly (Figs. 1-27), wherein the axial position of the tolerance adjustor (44) is configured to be selectively adjusted by rotating (threaded connection, paragraph 122) the extension (441) relative to the adapter (442).
Regarding claim 9, Ye et al. disclose the tub and shower diverter assembly (Figs. 1-27), wherein the flow control valve (42) is configured to be actuated by push-button (452, paragraph 134).
Regarding claim 10, Ye et al. disclose the tub and shower diverter assembly (Figs. 1-27), further comprising a diverter assembly (Figs. 1-27, paragraphs 116-118), the diverter assembly including an escutcheon (45), a push button assembly (452), and a handle assembly (48).
Regarding claim 11, Ye et al. disclose a tub and shower diverter assembly (Figs. 1-27) comprising: a manifold sub-assembly (Fig. 5) configured to be in fluid communication with a conventional tub and shower diverter system (4), the manifold sub-assembly comprising: a manifold (40) including an opening (405, Fig. 6) configured to receive a mixing valve (41) therein; and a flow control valve (42) housed within a flow control valve housing (406 or 407) defined by the manifold (40), but lacks disclosure wherein the manifold sub-assembly is fluidly coupled to an existing waterway connector of the conventional tub and shower diverter system, the manifold sub-assembly including an inlet/outlet portion configured to be received in the existing waterway connector and an opening positioned opposite the inlet/outlet portion, the flow control valve housing positioned opposite the inlet/outlet portion and next to the opening configured to receive the mixing valve.
Feng teaches a tub and shower diverter assembly (Figs. 1-31) comprising a manifold sub-assembly (3) that is configured to be detachably coupled to, and in fluid communication with, an existing waterway connector (2) of a conventional tub and shower diverter system (paragraph 34), wherein the manifold sub-assembly (3) comprises an inlet/outlet portion (bottom portion of 3, Fig. 5) configured to be received in the existing water connector (2), an opening (Figs. 14-18) positioned opposite the inlet/outlet portion (Fig. 5) configured to receive a mixing valve (4), and a flow control valve housing (at 36) configured to receive a flow control valve (37), wherein the flow control housing (at 36) is positioned opposite the inlet/outlet portion (Fig. 5) and next to the opening (Figs. 14-18) configured to receive the mixing valve (4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the assembly of Ye et al. with a manifold sub-assembly detachably coupled to an existing waterway as taught by Feng, for the advantage of replacing the manifold sub-assembly conveniently without the need to switch off the main valve (paragraph 32).
Regarding claim 13, Feng (modified above) teach wherein the inlet/outlet portion (Fig. 5) comprises: at least one inlet port (31) configured to be fluidly coupled to an inlet (21); and at least one outlet port (32) configured to be fluidly coupled to an outlet (22).
Regarding claim 14, Ye et al. modified with the teachings of Feng disclose the essential features of the claimed invention but lack disclosure wherein the manifold comprises one or more sealing members configured to sealingly engage the existing waterway connector so as to create a substantially watertight seal therebetween.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have one or more sealing members between the manifold and the existing waterway connection of Feng, since the Examiner takes Official Notice that it is well known in the art of fluid handling to have a seal in between fluidly coupled structures to prevent any leakage.
Regarding claim 15, Ye et al. disclose the tub and shower diverter assembly (Figs. 1-27), further comprising a tolerance adjustor (44) coupled to the flow control valve (42), wherein the tolerance adjustor (44) is configured to be selectively adjusted to change an axial position (paragraph 121) of the tolerance adjustor (44) relative to a wall (1) adjacent the manifold sub-assembly (40).
Regarding claim 16, Ye et al. disclose the tub and shower diverter assembly (Figs. 1-27), wherein the tolerance adjustor (44) comprises an adapter (442) and an extension (441), and wherein the extension (441) is threadably coupled (paragraph 122) to the adapter (442) and the adapter is coupled to a stem (421) of the flow control valve (42).
Regarding claim 17, Ye et al. disclose the tub and shower diverter assembly (Figs. 1-27), further comprising an escutcheon (45) and a push button (452) coupled to the escutcheon (45), wherein the push button (452) abuts (paragraph 134) the tolerance adjustor (44).
Regarding claim 18, Ye et al. disclose the tub and shower diverter assembly (Figs. 1-27), further comprising a diverter assembly (Figs. 1-27), the diverter assembly (paragraphs 116-118) including an escutcheon (45), a push button assembly (452), and a handle assembly (48).
Regarding claim 19, Ye et al. disclose a manifold sub-assembly (Figs. 1-27) for a tub and shower diverter system (4), the manifold sub-assembly comprising: a manifold (40) including a flow control valve (42) coupled to the manifold (40), the flow control valve (42) configured to provide a flow of water to a tub or a shower device (paragraph 118); and a tolerance adjustor (44) coupled to the flow control valve (42), wherein the tolerance adjustor (44) is configured to be selectively adjusted to change an axial position (paragraph 121) of the tolerance adjustor (44) relative to a wall (1) adjacent the manifold sub-assembly, but lacks disclosure wherein the manifold includes an inlet/outlet portion configured to be received in an existing waterway connector, and the flow control valve positioned opposite the inlet/outlet portion.
Feng teaches a tub and shower diverter assembly (Figs. 1-31) comprising a manifold sub-assembly (3) that is configured to be detachably coupled to, and in fluid communication with, an existing waterway connector (2) of a conventional tub and shower diverter system (paragraph 34), wherein the manifold sub-assembly (3) comprises an inlet/outlet portion (bottom portion of 3, Fig. 5) configured to be received in the existing water connector (2), and a flow control valve housing (at 36) configured to receive a flow control valve (37), wherein the flow control housing (at 36) is positioned opposite the inlet/outlet portion (Fig. 5).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the assembly of Ye et al. with a manifold sub-assembly detachably coupled to an existing waterway as taught by Feng, for the advantage of replacing the manifold sub-assembly conveniently without the need to switch off the main valve (paragraph 32).
Regarding claim 20, Ye et al. disclose the manifold sub-assembly (Figs. 1-27), wherein the tolerance adjustor (44) comprises an adapter (442) and an extension (441), and wherein the extension (441) is threadably coupled (paragraph 122) to the adapter (442) and the adapter (442) is coupled to a stem (421) of the flow control valve (42).
Claim(s) 5-8 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ye et al. (Pub. No. US 2018/0313066) in view of Feng (Pub. No. US 2015/0308086), and further in view of Niver (Pub. No. US 2014/0261779).
Regarding claim 5, Ye et al. modified with the teachings of Feng disclose the essential features of the claimed invention but lack disclosure wherein the manifold includes an inlet/outlet portion having a generally frusto-conical shape that is complementary to a central opening of the existing waterway connector.
Niver teaches a manifold subassembly (Figs. 1-8) comprising an inlet/outlet portion (110) that has a generally frustoconical shape (Fig. 1) that is complementary to a central opening of the waterway connector (paragraph 47).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the shape of inlet/outlet portion of Ye et al. to have a generally frustoconical shape as taught by Niver since such a modification would provide another alignment option (paragraph 47). A change in form or shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 149 USPQ 47 (CCPA 1976).
Regarding claim 6, Feng (modified above) teach wherein the inlet/outlet portion (Fig. 5) comprises: at least one inlet port (31) configured to be fluidly coupled to an inlet (21); and at least one outlet port (32) configured to be fluidly coupled to an outlet (22).
Regarding claim 7, Feng (modified above) teach wherein the manifold (3) comprises an opening (Figs. 14-18) configured to receive a mixing valve (4), the opening (Figs. 14-18) positioned opposite the inlet/outlet portion (Fig. 5).
Regarding claim 8, Ye et al. modified with the teachings of Feng disclose the essential features of the claimed invention but lack disclosure wherein the manifold comprises one or more sealing members configured to sealingly engage the existing waterway connector so as to create a substantially watertight seal therebetween.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have one or more sealing members between the manifold and the existing waterway connection of Feng, since the Examiner takes Official Notice that it is well known in the art of fluid handling to have a seal in between fluidly coupled structures to prevent any leakage.
Regarding claim 12, Ye et al. modified with the teachings of Feng disclose the essential features of the claimed invention but lack disclosure wherein the inlet/outlet portion has a generally frusto-conical shape that is complementary to a central opening of the existing waterway connector.
Niver teaches a manifold subassembly (Figs. 1-8) comprising an inlet/outlet portion (110) that has a generally frustoconical shape (Fig. 1) that is complementary to a central opening of the waterway connector (paragraph 47).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the shape of inlet/outlet portion of Ye et al. to have a generally frustoconical shape as taught by Niver since such a modification would provide another alignment option (paragraph 47). A change in form or shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 149 USPQ 47 (CCPA 1976).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Miyagi et al. (U.S. Patent No. 8,235,353) disclose a tub and shower diverter assembly having a push button with a tolerance adjuster.
Johnson et al. (U.S. Patent No. 10,718,103) disclose a tub and shower diverter assembly having an escutcheon connected to a push button of a manifold.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Reinaldo Sanchez-Medina, telephone number 571-270-5168, fax number 571-270-6168. The examiner can normally be reached on Monday-Friday (7:30AM-4:00PM EST).
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/REINALDO SANCHEZ-MEDINA/Primary Examiner, Art Unit 3753