DETAILED ACTION
Response to Amendment
The Amendment filed July 27, 2026 has been entered. Claims 19 and 20 are pending in the application with claims 1 – 18 and 21 being cancelled.
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.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 12,264,669 in view of Schoning, Makus (US 2023/0003217 – herein after Schoning).
Instant application
US 12,264,669
19. An interchangeable pump section for use with a self-priming transfer pump, the interchangeable pump section comprising:
a pump housing, comprising:
an inlet,
an outlet, and
a series of notches and a series of protrusions symmetrically arrayed about an internal peripheral surface of the pump housing, each protrusion of said series of protrusions comprising a ramp at one end and a tooth at the other end;
a pump cartridge permanently affixed to the pump housing without bolts and such that a hermetic seal is established, to eliminate user exposure and need for tools when replacing or changing out the pump, said pump cartridge comprising therewithin:
a diaphragm;
a wobble plate; and
a valve plate with valves; and
an external locking mechanism to prevent the interchangeable pump section from rotating and disengaging from a motor section, said external locking mechanism comprising a locking tab and a head screw; and
a bulge that extends perpendicularly away from an external peripheral surface of the pump housing, said bulge being adapted to engage the locking tab.
1. An interchangeable pump section for use in a self-priming transfer pump, the interchangeable pump section comprising:
a pump housing, comprises:
an inlet,
an outlet, and
a series of notches and protrusions symmetrically arrayed about an internal peripheral surface of the pump housing, each protrusion of said series of protrusions comprising a ramp at one end and a tooth at the other end;
a pump cartridge permanently affixed to the pump housing to eliminate user exposure and need for tools when replacing or changing out the pump cartridge, said pump cartridge comprising therewithin:
a diaphragm;
a wobble plate; and
a valve plate with valves; and
an external locking mechanism to prevent the interchangeable pump section from rotating and disengaging from a motor section, wherein the external locking mechanism includes:
a locking tab and a head screw;
legs in parallel relation to one another, each of the legs extending away from a body of the external locking mechanism;
a peg extending inwardly from each of the legs; and
a slot in each of the legs.
2. The interchangeable pump section of claim 1, further comprising a bulge that extends perpendicularly away from an external peripheral surface of the pump housing, said bulge being adapted to engage the locking tab.
‘669 remains silent on the interchangeable pump section of claim 19 wherein “each notch of the series of notches comprising a taper between one and two degrees that establishes an interference fit”.
However, Schoning teaches a similar transfer pump, wherein each notch (22, in fig. 5) of the series of notches comprising a taper (inclined surface 27).
Thus, it would have been obvious to the person of ordinary skill in the art before the effective filing date of the invention to provide each of the notches in ‘669 pump section with a desired taper as taught by Schoning for the purpose of allowing the corresponding protrusion/lug to be easily introduced into the notch/slot, as recognized by Schoning (see ¶36) [please note “establishing an interference fit” (i.e. friction fit) would naturally flow from the modification]. Furthermore, it would have been obvious to the person of ordinary skill in the art before the effective filing date of the invention to have the taper between “one and two degrees” in the modified pump section of ‘669 as a matter of obvious engineering design choice because applicant places no criticality on having the taper between one and two degrees, indicating simply (see ¶75 in filed specification) “The taper can, for example, comprise a taper substantially between one and two degrees (1.0°-2.0°)”.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 12,264,669 in view of Schoning and Wylie et al. (US 9,719,502 – herein after Wylie; cited by applicant on IDS dated 01/31/2025).
‘669 remains silent on the interchangeable pump section of claim 19 further comprising “ribs reinforcing the pump housing from an internal side of the pump housing”.
However, Wylie teaches the interchangeable pump section further comprising ribs (see fig. 8B or fig. A below) reinforcing the pump housing (10) from an internal side of the pump housing.
PNG
media_image1.png
365
657
media_image1.png
Greyscale
Fig. A: Edited fig. 8B of Wylie to show claim interpretation.
Thus, it would have been obvious to the person of ordinary skill in the art before the effective filing date of the invention to modify the pump housing in ‘669 pump section for providing ribs as taught by Wylie since it was known in the art to provide ribs in the housing for enhancing the structural integrity in one or more ways (load distribution, stiffness and stability and/or strength reinforcement).
Allowable Subject Matter
Claims 19 and 20 would be allowable if rewritten or amended to overcome the double patenting rejections set forth in this Office action.
As stated in the last office action, the prior arts of record alone or in combination fails to teach the interchangeable pump section comprising "a bulge that extends perpendicularly away from an external surface of the pump housing, said bulge being adapted to engage the locking tab", as in claim 19. Clam 20 depends on claim 19.
Response to Arguments
Applicant arguments, filed 07/27/2026, have been fully considered.
With respect to pending claims 19 and 20 (indicated as being allowable in the last office action): Upon further consideration, prosecution is reopened in view of above discussed double patenting rejection. The finality of the previous Office Action is hereby withdrawn pursuant to MPEP 706.07(e).
Applicant amended claim 19 to include a new feature of “a bulge that extends perpendicularly away from an external peripheral surface of the pump housing, said bulge being adapted to engage the locking tab” in the filed claims, dated 01/05/2026, after Non-Final action, dated 10/03/2025. In the last Final action, dated 05/27/2026, examiner stated that the non-statutory double patenting rejection for claim 19 was overcome in view of the amendment made to claim 19. However, upon further consideration of US 12,264,669 (parent application), this newly added feature is taught by its claim 2.
In order to address this pending issue for compact prosecution, Examiner made various attempts to reach the applicant and left voicemail with request to file e-terminal disclaimer. However, examiner did not hear back from the applicant.
Thus, the prosecution is reopened in view of the double patenting rejections for pending claims 19 and 20.
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 CHIRAG JARIWALA whose telephone number is (571)272-0467. The examiner can normally be reached M-F 8 AM-5 PM.
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 supervisor, ESSAMA OMGBA can be reached at 469-295-9278. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHIRAG JARIWALA/Examiner, Art Unit 3746
/ESSAMA OMGBA/Supervisory Patent Examiner, Art Unit 3746
Prosecution Insights