DETAILED ACTION
This is the first office action on the merits with reference to the above identified patent application filed on 05 February 2025.
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 .
Election/Restrictions
Applicant's election with traverse of Species 7 (Figure 4A) in the reply filed on 29 December 2025 is acknowledged. The traversal is on the ground(s) that it would not be a serious burden (“unreasonable search”). This is not found persuasive because examination burden is not limited exclusively to a prior art search but also includes the effort required to apply the art by making and discussing all appropriate grounds of rejection. Multiple species such as those in the present application normally require additional reference material and further discussion for each additional species examined. Concurrent examination of multiple species would thus typically involve a significant burden even if all searches were coextensive.
The requirement is still deemed proper and is therefore made FINAL.
Applicant’s response also declared that Claims 1, 3 – 8, 14 – 16 and 27 – 29 read on the elected species. However, Claim 3 relates to pneumatic actuation such as Figure 3A where propellant is used to actuate the pump and does not apply to the elected electrical drive embodiment. Claim 3 is therefore also withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Species. Also Claims 5 and 6 relate to pneumatic actuation such as Figure 3A where propellant is used to actuate the pump and does not apply to the elected electrical drive embodiment. Claims 5 and 6 are therefore also withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Species. Also, Claim 14 relates to the embodiment of Figure 1B which is not the elected embodiment. Claim 14 is therefore also withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Species. Claims 15 and 16 depend on Claim 14, therefore they are also withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Species.
Claims 3, 5, 6, 9 – 18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 29 December 2025.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Such limitation(s) is/are: “releasable connection means” in Claim 1. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “connection element” in claims 1 and 28 and “displacer element(s)” in Claims 1 and 28.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claims 9 – 13 and 17 – 18 are objected to because they have an incorrect status identifier “Original”, whereas the correct identifier should have been “Withdrawn” because they are related to the non-elected species. The status identifier of these and the other claims withdrawn by examiner need to be corrected.
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 1, 4, 7, 8 and 27 – 29 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.
In Re Claim 1, this claim recites the limitation “the first fluid chamber” in Line 21. There is insufficient antecedent basis for this limitation in the claim. For the purpose of prior art analysis, the phrase --a first fluid chamber of the at least two fluid chambers-- will be assumed instead.
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, 7, 8, 27 and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zieg (US Patent 2,918,878 A) in view of Hines (PG Pub US 20210301808 A1).
In Re Claim 1, Zieg discloses a multiple displacement pump (Figures 1 and 2) having a pump housing that comprises a first lid (23) that lies on the outside and a second lid (22) that lies on the outside, and at least one intermediate piece (24) that is accommodated between the lids (22, 23), wherein at least two fluid chambers (86, 88) are formed between the lids (22, 23) and the at least one intermediate piece (24), wherein the at least two fluid chambers are divided, using at least one displacer element (20; there are two of them each having the same label), in each instance, into at least one propellant chamber (between 22 and 20 and/or between 23 and 20; note “propellant” does not structurally distinguish over the prior art) and one media chamber (between 20 and 24), and wherein the displacer elements (20) of the at least two fluid chambers (86, 88) are connected, with force fit and releasably (via screw/thread 42 and screw 46 (fig. 2) which are releasable force fit elements per applicant’s specification, Page 9, Line 23 – Page 10, Line 3), to at least one lifting rod (48) by way of at least one connection element (46), wherein the at least one lifting rod (48) can extend the at least one connection element (46) through a first passage (hole inside 54) of the adjacent first lid (23), wherein the lifting rod (48) is connected to a first mechanical actuator (52) using releasable connection means (Column 3, Line 19: “disconnected pump”), in such a manner that the drive can be removed and a different drive can be affixed to the lifting rod (48), and wherein the first mechanical actuator (52) is releasably connected to the first lid (23) on an outer side of the first lid (23) as shown in Figure 2, which faces away from a first fluid chamber (88)(Column 2, Lines 15 – 21, 36 – 60, 66 – 69; Column 3, Lines 1 – 20; Figures 1 and 2).
Zieg does not disclose that mechanical actuator is connected to the lifting rod in such a manner, with force fit but releasably (the pin 66 is not necessarily a force fit but releasable connection), wherein specifically either a pneumatic or an electric drive can be adapted (it is a manual drive).
However, Hines discloses an electric drive (22; Figure 4A; paragraph [0087]) that drives lifting rod (84a) via a force fit but releasable connection (paragraph [0144]: “interfaced threading” which are releasable force fit elements per applicants specification: Page 9, Line 23 – Page 10, Line 3) with motor shaft (92) of the electric drive (22).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed the invention to substitute the manual drive of Zieg with the electrical drive of Hines by connecting the lifting rod (48) of Zieg to motor shaft (92) of Hines because it saves manual labor, and because it is only a matter of substituting one diaphragm drive with another diaphragm drive, so the results of the substitution are predictable (MPEP 2141, Section III, Rationale E), and because automating (via electrical drive) a manual activity has been held to be routine skill in the art – MPEP 2144.
In Re Claim 4, the combined references above disclose all the limitations of Claim 1, and it has been held that constructing in one piece an article that has been formerly constructed in various elements (separate housing for the actuator from the lid) joined together would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed the invention – MPEP 2144.04, Section V-B.
In Re Claim 7, the combined references above disclose all the limitations of Claim 1, and Hines discloses that the first mechanical actuator comprises an electric drive (22; Figure 4A; paragraph [0087]) having a changing direction of rotation (paragraph [0007]), which interacts with the lifting rod (84a).
In Re Claim 8, the combined references above disclose all the limitations of Claim 7, and Hines discloses that the first mechanical actuator comprises an electric motor (28, 30) that interacts with a ball screw (98, 92; paragraph [0229]) which are assigned to the lifting rod (84a).
In Re Claim 27, the combined references above disclose all the limitations of Claim 1, and Zieg discloses that the intermediate piece (24) has a common suction line (76) and a common pressure line (74)(Column 3, Lines 25 – 28) for the media chambers (between 20 and 24) of the fluid chambers (86, 88), which are adjacent to one another, in each instance, wherein the suction lines (76) and the pressure lines (74) are blocked off relative to the media chambers (between 20 and 24), in each instance, using valves (130, 92; Column 3, Line 56; Column 4, Lines 18 – 31) that lock in the same direction (when the device to operates as disclosed).
In Re Claim 29, the combined references above disclose all the limitations of Claim 1, and Hines discloses that the housing of the mechanical actuator (motor housing above label 12 in Figure 1B) has a support foot (below label 12 in Figure 1B) that faces away from the intermediate piece of Zieg on one side in the modified apparatus.
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zieg (US Patent 2,918,878 A) in view of Hines (PG Pub US 20210301808 A1) and further in view of Ring (US Patent 5,009,573 A).
In Re Claim 28, the combined references above disclose all the limitations of Claim 1, and the intermediate piece (24) has a reach-through opening (in 18) through which the connection element (46), which connects multiple displacer elements (20) to one another and to the at least one lifting rod (48), can be passed, wherein the reach- through opening (in 18) can be closed off.
Zieg and Hines do not disclose that the opening is closed off in a media-sealed manner.
However, sealing the hole is only a matter of providing close tolerance between the lifting rod and the opening as disclosed by Ring in Column 8, Line 65 – Column 9, Line 2.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed the invention to design the opening (in 18 of Zieg) such that it has a close enough tolerance with the connection element as taught by Ring for the purpose of providing a seal.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DNYANESH G KASTURE whose telephone number is (571)270-3928. The examiner can normally be reached Mon-Thu, 7:30 AM to 6:00 PM.
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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.
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/D.G.K/Examiner, Art Unit 3746
/NATHAN C ZOLLINGER/Primary Examiner, Art Unit 3746