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 Arguments
Applicant’s arguments with respect to the claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s amendment has overcome the rejection of record. However, a new ground of rejection is applied to the amended claims.
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, 11, 15, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6, 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 claim 6 of U.S. Patent No. 11,156,302 “anticipate” Application claims 1, 11, 15, and 19, respectively. Accordingly, Application claims 1, 11, 15, and 19 are not patentably distinct from Patent claim 6.
Patent claim 6 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; wherein the manifold comprises: an inlet/outlet portion configured to be received in the existing waterway connector; a mixing portion located opposite the inlet/outlet portion, the mixing portion defining an opening; a first valve housing extending radially outwardly from the mixing portion, wherein the first flow control valve is coupled to the first valve housing; and a second valve housing extending radially outwardly from the mixing portion opposite to the first valve housing, wherein the second flow control valve is coupled to the second valve housing.
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 having an inlet/outlet portion configured to extend into a central opening of the existing waterway connector; 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 6 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 6 and since anticipation is the epitome of obviousness, then Application claim 1 is obvious over Patent claim 6.
Similarly, claims 11, 15, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6, respectively, for the same reason set forth above.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-4, 9-10, and 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miyagi et al. (U.S. Patent No. 8,235,353).
Regarding claim 1, Miyagi et al. disclose a tub and shower diverter assembly (Figs. 1-7) comprising: a manifold sub-assembly (Fig. 3) configured to be detachably coupled to (Column 5 lines 11-16), and in fluid communication with, an existing waterway connector (20) of a conventional tub and shower diverter system (1), the manifold sub-assembly comprising: a manifold (22) having an inlet/outlet portion (lower portion of 26) configured to extend into a central opening (Fig. 4) of the existing waterway connector (20); a flow control valve (30) coupled to the manifold (22), the flow control valve (30) configured to provide a flow of water to a tub or a shower device (Column 7 line 64-Column 8 line 12); and a tolerance adjustor (assembly of 28, 29, and the upper portion of 26) coupled to the flow control valve (30), wherein the tolerance adjustor is configured to be selectively adjusted to change an axial position (Column 6 lines 49-62, Column 9 lines 41-61, & Column 10 lines 23-50) of the tolerance adjustor relative to a wall (W1) adjacent the manifold sub-assembly (Fig. 3).
Regarding claim 2, Miyagi et al. disclose the tub and shower diverter assembly (Figs. 1-7), further comprising an escutcheon (12a) and a push button (10a) coupled to the escutcheon (12a), wherein the push button (10a) abuts (Fig. 3) the tolerance adjustor (assembly of 28, 29, and the upper portion of 26).
Regarding claim 3, Miyagi et al. disclose the tub and shower diverter assembly (Figs. 1-7), wherein the tolerance adjustor (assembly of 28, 29, and the upper portion of 26) comprises an adapter (28) and an extension (26), and wherein the extension (26) is threadably coupled (paragraph 122) to the adapter (28) and the adapter (28) is coupled to a stem (via retainer 31, Column 6 lines 43-48) of the flow control valve (30).
Regarding claim 4, Miyagi et al. disclose the tub and shower diverter assembly (Figs. 1-7), wherein the axial position of the tolerance adjustor (assembly of 28, 29, and the upper portion of 26) is configured to be selectively adjusted by rotating (threaded connection, Column 6 lines 49-62) the extension (26) relative to the adapter (28).
Regarding claim 9, Miyagi et al. disclose the tub and shower diverter assembly (Figs. 1-7), wherein the flow control valve (30) is configured to be actuated by push-button (10a, Column 7 lines 6-17).
Regarding claim 10, Miyagi et al. disclose the tub and shower diverter assembly (Figs. 1-7), further comprising a diverter assembly (multiple diverter assemblies Fig. 1, Column 5 lines 1-10), the diverter assembly including an escutcheon (12a), a push button assembly (10a), and a handle assembly (16).
Regarding claim 19, Miyagi et al. disclose a manifold sub-assembly (Figs. 1-7) for a tub and shower diverter system (1), the manifold sub-assembly comprising: a manifold (22) including an inlet/outlet portion (lower portion of 26) configured to extend into a central opening (Fig. 5) of an existing waterway connector (20); a flow control valve (30) positioned opposite (Fig. 3) the inlet/outlet portion (lower portion of 26) and coupled to the manifold (22), the flow control valve (30) configured to provide a flow of water to a tub or a shower device (Column 7 line 64-Column 8 line 12); and a tolerance adjustor (assembly of 28, 29, and the upper portion of 26) coupled to the flow control valve (30), wherein the tolerance adjustor (assembly of 28, 29, and the upper portion of 26) is configured to be selectively adjusted to change an axial position (Column 6 lines 49-62, Column 9 lines 41-61, & Column 10 lines 23-50) of the tolerance adjustor relative to a wall (W1) adjacent the manifold sub-assembly
Regarding claim 20, Miyagi et al. disclose the manifold sub-assembly (Figs. 1-7), wherein the tolerance adjustor (assembly of 28, 29, and the upper portion of 26) comprises an adapter (28) and an extension (26), and wherein the extension (26) is threadably coupled (paragraph 122) to the adapter (28) and the adapter (28) is coupled to a stem (via retainer 31, Column 6 lines 43-48) of the flow control valve (30).
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) 5-6, and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miyagi et al. (U.S. Patent No. 8,235,353) in view of Niver (Pub. No. US 2014/0261779).
Regarding claim 5, Miyagi et al. disclose the essential features of the claimed invention but lack disclosure wherein the inlet/outlet portion defines a generally frusto-conical shape that is complementary to the 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 Miyagi 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, Miyagi et al. disclose the tub and shower diverter assembly (Figs. 1-7), wherein the inlet/outlet portion (lower portion of 26) comprises: at least one inlet port (26a) configured to be fluidly coupled to an inlet (20a); and at least one outlet port (26b) configured to be fluidly coupled to an outlet (20b).
Regarding claim 8, Miyagi et al. disclose the tub and shower diverter assembly (Figs. 1-7), wherein the manifold (22) comprises one or more sealing members (illustrated O-rings, Fig. 3) configured to sealingly engage the existing waterway connector (20) so as to create a substantially watertight seal therebetween.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miyagi et al. (U.S. Patent No. 8,235,353) in view of Niver (Pub. No. US 2014/0261779), and further in view of Feng (Pub. No. US 2015/0308086).
Regarding claim 7, Miyagi et al. disclose the tub and shower diverter assembly (Figs. 1-7), wherein the manifold (22) comprises an opening (26c) configured to receive a valve (30), the opening (26c) positioned opposite (Fig. 3) the inlet/outlet portion (lower portion of 26), but lacks disclosure wherein the valve is a mixing valve.
Feng teaches a tub and shower diverter assembly (Figs. 1-31) comprising a manifold (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 (3) has an inlet/outlet portion (Fig. 5) on one end and an opening (Figs. 14-18) on an opposite end configured to receive a 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 valve of Miyagi et al. with a mixing valve as taught by Feng, for the advantage of enabling the assembly to control a water temperature outflow.
Allowable Subject Matter
Claims 11-18 are allowed.
Conclusion
Applicant's 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 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
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