DETAILED ACTION
This office action is in response to the amendments to the claims filed on 26 May 2026. Claims 1, 4, 7, 8 and 27 – 29 are pending and currently being examined.
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 Objections
Claims 1, 4, 7, 8 and 27 – 29 are objected to because of the following informalities:
In Re Claim 1, where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “force fit” in Line 12 in the claim is used by the claim to mean “screw connectors”, “bayonet closure”, “quick-release coupling” (Page 10 of applicant’s specification) while the accepted meaning is “one component is pressed into another with significant force, creating a tight, often permanent connection”. The claim is objected to because applicant has not met the “clarity” and “precision” standard necessary to redefine the term “force fit” to a meaning contrary to the accepted meaning.
In Re Claim 28, the term “closed off in a media sealed manner” in Line 5 is objected to because “media sealed manner” appears to mean a seal that prevents leaking between the connecting element 13 and opening 38, which does not “close off” the opening like a lid would (a seal does not close off an opening). For the purpose of prior art analysis the term will be understood to mean that a seal is present in the opening.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The previously made 112 rejections are hereby withdrawn in view of suitable amendments to the claims submitted with applicant’s response.
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 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, 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 Neyer (US Patent 2,737,896 A).
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 a first fluid chamber (86) and a second fluid chamber (88) are formed between the lids (22, 23) and the at least one intermediate piece (24), wherein the first and second 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 first and second 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, Neyer discloses an electric drive (20, 21, 22, 50; Figures 2, 4) that drives lifting rod (“R”) outside the diaphragm pump housing (“P”; 14’) via a force fit but releasable connection (49 which are releasable force fit elements per applicants specification: Page 9, Line 23 – Page 10, Line 3) with motor shaft (22, 50) of the electric drive (Column 3, Lines 1 – 3 and 28 – 32; Column 4, Lines 8 – 10 and 55 – 56; Figures 2, 4).
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 Neyer by connecting the lifting rod (48) of Zieg to motor shaft (22, 50) of Neyer via a screw connection (49) as taught by Neyer 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 B), 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 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 first and second 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 Neyer discloses that the housing (11) of the mechanical actuator (20) has a support foot (10) that faces away from the intermediate piece of Zieg on one side in the modified apparatus.
Claim(s) 7 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zieg (US Patent 2,918,878 A) in view of Neyer (US Patent 2,737,896 A) and further in view of MacAskill (US Patent 4,509,904 A).
In Re Claims 7 and 8, Zieg and Neyer disclose all the limitations of Claim 1, but they do not disclose that the electrical drive changes direction of rotation.
However, Figure 3 of MacAskill discloses a mechanical actuator in the form of an electric drive (14) that drives lifting rod (12) outside pump housing (10) via a force fit but releasable connection (depicted bolted connection between 12 and 44 – see Column 3, Line 65 – Column 4, Line 9; which are releasable force fit elements per applicants specification: Page 9, Line 23 – Page 10, Line 3) with motor shaft (44) of the electric drive, the electric drive (14) has a changing direction of rotation (Column 2, Lines 54 – 61) which interacts with the lifting rod (!2), the mechanical actuator is an electric motor (Column 1, Line 42 discloses a servo motor which is an electric motor) that interacts with a ball screw (18) which is assigned to the lifting rod (14) (Column 3, Lines 36 – 48).
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 drive of Zieg / Neyer with the electrical motor and ball screw drive as taught by MacAskill for the purpose of providing precise positioning of the lifting rod with reliable repeatability.
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 Scholle (US Patent 4,008,984 A).
In Re Claim 28, Zieg and Hines disclose all the limitations of Claim 1, and Zieg discloses that 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, Scholle discloses an opening (in end wall/intermediate piece 19 for connection element 14) that is closed off in a media-sealed manner (by seal 41); (Column 2, Lines 63 – 65; Figure 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 modify the opening (in 18 of Zieg) such that it is closed off in a media-sealed manner as taught by Scholle for the purpose of making the pump suitable for precise fluid metering applications where reproducible flow accuracy is required.
Response to Arguments
Applicant has argued on Page 11 of Applicant’s Response that “Moreover, the primary reference to Zieg et al. explicitly allows for leakage through the opening and considers it insignificant. Therefore, Zieg et al. teaches away from the solution of Applicant's claim 28 as a person skilled in the art would not have been motivated to seal an opening that is intentionally designed to leak”.
Examiner’s Response: There is no disclosure in Zieg that requires leakage as alleged by applicant. Although Zieg functions in spite of the leak, leaks are detrimental if the pump is used in precise fluid metering applications where reproducible flow accuracy is required.
The rest of applicant’s arguments are moot in view of new grounds of rejection presented in this office action.
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.
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
/ESSAMA OMGBA/Supervisory Patent Examiner, Art Unit 3746
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