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 .
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 5 and 12 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.
Claims 5 and 12 recites the limitation “a thermal actuator” in line 2 which is unclear and render the claim indefinite. It is unclear what is the actual structure corresponding to the limitation. For examination purposes, the limitation has been interpreted as “a thermal sensor” (paragraph [0029]).
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.
Claim(s) 1, 5-8, 12-14 and 18-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McGinnis et al. (5,368,227).
Regarding claim 1, McGinnis discloses a hot water system, comprising:
a water valve (36, 38 and 50) coupled between a hot water supply inlet (28) and an outlet (24 and 29 and 57 and 58) comprising a hot water outlet (29 and 24) and a purge outlet (57 and 58; see figures 6-7);
wherein when the hot water system operates in a first mode (see figure 6), water passes through the hot water system to the outlet (29 and 24) at a first volumetric flow rate (see figure 6);
wherein when the hot water system operates in a second mode (see figure 7) different from the first mode (see figure 6), water passes through the hot water system to the outlet (29 and 24) at a second volumetric flow rate less than the first volumetric flow rate and greater than zero (see figures 6-7); and
wherein the water valve is configured to automatically switch from the first mode (see figure 6) to the second mode (see figure 7) when a temperature within the water valve rises above a predetermined temperature (higher than the predetermined temperature; McGinnis discloses the hot water enters at the inlet 28 and exits at the outlet 24 when the water temperature reaches a predetermined temperature Col. 4, lines 30-45; when the water temperature is higher than the predetermined temperature, the water would not passes through the outlet 24 but the unblock outlet 58; Col. 3, lines 29-34 and Col. 4, lines 49-66; see figures 6-7).
Regarding claim 5, McGinnis discloses the water valve (36, 38 and 50) is configured to automatically switch from the first mode (see figure 6) to the second mode (see figure 7) in response to movement of a thermal actuator (36) within the water valve (36, 38 and 50; see figures 6-7).
Regarding claim 6, McGinnis discloses the water valve (36, 38 and 50) comprising a spring (54) positioned within the water valve (36, 38 and 50) and configured to bias the water valve toward the first mode (see figure 6).
Regarding claim 7, McGinnis discloses when the hot water system operates in the second mode (see figure 7), the water valve (36, 38 and 50) is configured to direct the water toward the hot water outlet (29 and 24; see figure 7).
Regarding claim 8, McGinnis discloses a hot water system, comprising:
a water valve (36, 38 and 50) coupled between a hot water supply inlet (28) and an outlet comprising a hot water outlet (29 and 24) and a purge outlet (57 and 58; see figures 6-8);
wherein when the hot water system operates in a first mode (see figure 6), water passes through the hot water system to the outlet (29 and 24) at a first volumetric flow rate (see figure 6);
wherein when the hot water system operates in a second mode (see figure 7) different from the first mode (see figure 6), water passes through the hot water system to the outlet (29 and 24) at a second volumetric flow rate less than the first volumetric flow rate and greater than zero (see figures 6-7); and
wherein the water valve is configured to automatically switch from the first mode (see figure 6) to the second mode (see figure 7) and stop at least a majority of water flow through the hot water system when a temperature within the water valve rises above a predetermined temperature (higher than the predetermined temperature; McGinnis discloses the hot water enters at the inlet 28 and exits at the outlet 24 when the water temperature reaches a predetermined temperature Col. 4, lines 30-45; when the water temperature is higher than the predetermined temperature, the water would not passes through the outlet 24 but the unblock outlet 58; Col. 3, lines 29-34 and Col. 4, lines 49-66).
Regarding claim 12, McGinnis discloses the water valve (36, 38 and 50) is configured to automatically switch from the first mode (see figure 6) to the second mode (see figure 7) in response to movement of a thermal actuator (36) within the water valve (36, 38 and 50; see figures 6-7).
Regarding claim 13, McGinnis discloses when the hot water system operates in the second mode (see figure 7), the water valve (36, 38 and 50) is configured to direct the water toward the hot water outlet (29 and 24; see figures 7)).
Regarding claim 14, McGinnis discloses a hot water system, comprising:
a water valve (36, 38 and 50) coupled between a hot water supply inlet (28) and an outlet (29 and 58) comprising a hot water outlet (29) and a purge outlet (58; see figures 6-8 and 11);
wherein when the hot water system operates in a first mode, water passes through the hot water system to the outlet at a first volumetric flow rate (see figure 6);
wherein when the hot water system operates in a second mode (see figure 7) different from the first mode (figure 6), water passes through the hot water system to the outlet (29) at a second volumetric flow rate less than the first volumetric flow rate and greater than zero (see figure 7); and
wherein the water valve is configured to automatically switch from the first mode (see figure 6) to the second mode (figure 7) when a temperature within the water valve rises above a predetermined temperature (higher than the predetermined temperature; McGinnis discloses the hot water enters at the inlet 28 and exits at the outlet 24 when the water temperature reaches a predetermined temperature Col. 4, lines 30-45; when the water temperature is higher than the predetermined temperature, the water would not passes through the outlet 24 but the unblock outlet 58; Col. 3, lines 29-34 and Col. 4, lines 49-66).
Regarding claim 18, McGinnis discloses the water valve (36, 38 and 50) comprising a spring (54) positioned within the water valve (36, 38 and 50) and configured to bias the water valve (36, 38 and 50) toward the first mode (see figure 6).
Regarding claim 19, McGinnis discloses when the hot water system operates in the second mode (see figure 7), the water valve (36, 38 and 50) is configured to direct the water toward the hot water outlet (29 and 24; see figure 7).
Regarding claim 20, McGinnis discloses the hot water outlet (29 and 24) is separate from the purge outlet (57 and 58; see figures 6-7).
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 1-3, 5-10, 12-16 and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-20 of U.S. Patent No. US 12,275,023 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because
Regarding claim 1, US 12,275,023 B2 discloses a hot water system, comprising: a water valve coupled between a hot water supply inlet and an outlet comprising a hot water outlet and a purge outlet, wherein the hot water outlet is separate from the purge outlet; wherein when the hot water system operates in a first mode, water passes through the hot water system to the outlet at a first volumetric flow rate; wherein when the hot water system operates in a second mode different from the first mode, water passes through the hot water system to the outlet at a second volumetric flow rate less than the first volumetric flow rate and greater than zero; and wherein the water valve is configured to automatically switch from the first mode to the second mode and stop at least a majority of water flow through the hot water system when a temperature within the water valve rises above a predetermined temperature (see claim 11).
Regarding claim 2, US 12,275,023 B2 discloses when the hot water system operates in the first mode, the hot water system selectively purges water from the hot water supply inlet through the purge outlet instead of through the hot water outlet (see claims 11 and 17).
Regarding claim 3, US 12,275,023 B2 discloses when the hot water system operates in the first mode, the hot water system purges water from the hot water supply inlet through the purge outlet and through the hot water outlet (see claims 11 and 19).
Regarding claim 5, US 12,275,023 B2 discloses the water valve is configured to automatically switch from the first mode to the second mode in response to movement of a thermal actuator within the water valve (see claims 11 and 15).
Regarding claim 6, US 12,275,023 B2 discloses the water valve comprising a spring positioned within the water valve and configured to bias the water valve toward the first mode (see claims 11 and 13-14).
Regarding claim 7, US 12,275,023 B2 discloses when the hot water system operates in the second mode, the water valve is configured to direct the water toward the hot water outlet (see claims 11 and 16).
Regarding claim 8, US 12,275,023 B2 discloses a hot water system, comprising: a water valve coupled between a hot water supply inlet and an outlet comprising a hot water outlet and a purge outlet; wherein when the hot water system operates in a first mode, water passes through the hot water system to the outlet at a first volumetric flow rate; wherein when the hot water system operates in a second mode different from the first mode, water passes through the hot water system to the outlet at a second volumetric flow rate less than the first volumetric flow rate and greater than zero; and wherein the water valve is configured to automatically switch from the first mode to the second mode and stop at least a majority of water flow through the hot water system when a temperature within the water valve rises above a predetermined temperature.
Regarding claim 9, US 12,275,023 B2 discloses when the hot water system operates in the first mode, the hot water system selectively purges water from the hot water supply inlet through the purge outlet instead of through the hot water outlet (see claims 11 and 17).
Regarding claim 10, US 12,275,023 B2 discloses when the hot water system operates in the first mode, the hot water system purges water from the hot water supply inlet through the purge outlet and through the hot water outlet (see claims 11 and 19).
Regarding claim 12, US 12,275,023 B2 discloses the water valve is configured to automatically switch from the first mode to the second mode in response to movement of a thermal actuator within the water valve (see claims 11 and 15).
Regarding claim 13, US 12,275,023 B2 discloses when the hot water system operates in the second mode, the water valve is configured to direct the water toward the hot water outlet (see claims 11 and 16).
Regarding claim 14, US 12,275,023 B2 discloses a hot water system, comprising: a water valve coupled between a hot water supply inlet and an outlet comprising a hot water outlet and a purge outlet; wherein when the hot water system operates in a first mode, water passes through the hot water system to the outlet at a first volumetric flow rate; wherein when the hot water system operates in a second mode different from the first mode, water passes through the hot water system to the outlet at a second volumetric flow rate less than the first volumetric flow rate and greater than zero; and wherein the water valve is configured to automatically switch from the first mode to the second mode when a temperature within the water valve rises above a predetermined temperature.
Regarding claim 15, US 12,275,023 B2 discloses when the hot water system operates in the first mode, the hot water system selectively purges water from the hot water supply inlet through the purge outlet instead of through the hot water outlet (see claims 11 and 17).
Regarding claim 16, US 12,275,023 B2 discloses when the hot water system operates in the first mode, the hot water system purges water from the hot water supply inlet through the purge outlet and through the hot water outlet (see claims 11 and 19).
Regarding claim 18, US 12,275,023 B2 discloses the water valve comprising a spring positioned within the water valve and configured to bias the water valve toward the first mode (see claims 11 and 13-14).
Regarding claim 19, US 12,275,023 B2 discloses when the hot water system operates in the second mode, the water valve is configured to direct the water toward the hot water outlet (see claims 11 and 16).
Regarding claim 20, US 12,275,023 B2 discloses the hot water outlet is separate from the purge outlet (see claims 11 and 18).
Allowable Subject Matter
Claim 4, 11 and 17 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.
The following is a statement of reasons for the indication of allowable subject matter:
The primary reference McGinnis taken alone or in combination fails to disclose the claimed operation feature of the hot water system as required in claims 4, 11 and 17. Also, the prior art of record fails to provide further teachings or motivations to modify the hot water system of McGinnis in order to arrive the claim invention. Therefore, claims 4, 11 and 17 are allowable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUN KAI MA whose telephone number is (571)-270-3530. The examiner can normally be reached on Monday-Friday 9am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jianying Atkisson can be reached on 5712707740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KUN KAI MA/Primary Examiner, Art Unit 3763
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