1-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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 04/18/2025. The information disclosure statements are being considered by the examiner; see attached signed 1449
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 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10576388. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following table for mapping the current claim 1 with claim 1 of Pat. 10576388.
Present Application – Claim 1
Claim 1 of patent 10576388
A fluid delivery system comprising:
A fluid delivery system comprising:
a fluid delivery element configured to contain a volume of fluid and release such fluid
a fluid delivery element configured to contain a volume of fluid and release such fluid
a static fluid flowing element positioned adjacent to the fluid delivery element and configured to receive at least a portion of the volume of fluid from the fluid delivery element
a fluid flowing element positioned adjacent to the fluid delivery element and separate from the fluid delivery element and configured to receive at least a portion of the volume of fluid from the fluid delivery element, wherein the fluid flowing element is a pivotable surface configured to move in response to the at least the portion of the volume of fluid from the delivery element
a fluid dispersion element positioned adjacent to the static fluid flowing element and configured to engage with at least a portion of the volume of fluid from the static fluid flowing element
a fluid dispersion element positioned adjacent to the fluid flowing element and configured to engage with at least a portion of the volume of fluid from the fluid flowing element
wherein the static fluid flowing element provides a non-linear pathway for the at least a portion of the volume of fluid from the fluid delivery element to the fluid dispersion element
(no corresponding non-linear pathway limitation)
The present application and the reference patent both claim a fluid delivery system comprising: (1) a fluid delivery element that contains and releases a volume of fluid; (2) an intermediate fluid flowing element positioned adjacent to the delivery element that receives at least a portion of the fluid; and (3) a fluid dispersion element positioned adjacent to the flowing element that engages with fluid received therefrom.
The claims differ in that the present application recites the fluid flowing element as a “static” element that provides a “non-linear pathway,” whereas the reference claims recite the fluid flowing element as a “pivotable surface configured to move” in response to fluid from the delivery element.
This difference does not render the claims patentably distinct. Both static flow elements (e.g., baffles, channels) and dynamic/pivotable flow elements (e.g., flaps, vanes) are well-known in the fluid delivery arts as means for directing fluid flow between a source and a dispersion point. It would have been obvious to one of ordinary skill in the art at the time of the invention to substitute the pivotable surface of the reference claim with a static element providing a non-linear pathway, since both serve the identical function of receiving fluid from the delivery element and directing it toward the dispersion element, and since such a substitution amounts to a simple substitution of one known flow-directing means for another to achieve predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (substitution of known elements yielding predictable results supports a conclusion of obviousness).
Furthermore, the additional limitation in the present application that the pathway be “non-linear” does not patentably distinguish the claims, as non-linear flow paths are inherent characteristics of many known static flow-directing structures (e.g., baffles, weirs, serpentine channels) and would have been an obvious design choice for one of ordinary skill in the art seeking to control flow rate or promote fluid interaction prior to reaching the dispersion element.
Similar rejection substantially applies to the current claim 14 (note that claim 14 does not include the limitation of claim 1 have “non-linear” and “static”.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
A to claim 1, the limitation “non-linear pathway”. this limitation was added to the current specification and was not founded in the original specification. Claims 2-13 depend from rejected claim 1 and are rejected similarly.
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) 1-3, 7-11 and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hunter (US 8721465).
As to claim 1, Hunter (fig. 5) teaches A fluid delivery system comprising: a fluid delivery element (55) configured to contain a volume of fluid and release such fluid; a static fluid flowing element (Uber deflector 104; the term static here is broadly read as no other element (motor for example) to flow the water) positioned adjacent to the fluid delivery element and configured to receive at least a portion of the volume of fluid from the fluid delivery element; and a fluid dispersion element (a lower deflector 106) positioned adjacent to the static fluid flowing element and configured to engage with at least a portion of the volume of fluid from the static fluid flowing element, wherein the static fluid flowing element provides a non- linear pathway for the at least a portion of the volume of fluid from the fluid delivery element to the fluid dispersion element (the term non-linear here read for the change of the width of the upper deflector) (col. 7, line 55 to col. 8, line 24).
As to claim 2, Hunter (figure 5) teaches the fluid delivery system of claim 1, wherein the static fluid flowing element comprises a plurality of static steps, and wherein the at least a portion of the volume of fluid from the fluid delivery element flows down the plurality of static steps (see that there are multiple static steps (deflectors 104 and 108).
As to claim 3, Hunter teaches The fluid delivery system of claim 1, wherein the fluid dispersion element rotates when engaged with the at least a portion of the volume of fluid from the static fluid flowing element (col. 5, lines 7-14).
As to claim 7, Hunter teaches the fluid delivery system of claim 1, wherein the fluid dispersion element is in the form of one or more curved surfaces (106).
As to claim 8, Hunter teaches the fluid delivery system of claim 1, wherein the fluid delivery element pivots automatically when the volume of fluid contained in the fluid delivery element exceeds a predetermined volume (abstract).
As to claims 9-11, teaches the fluid delivery element pivots in response to a signal based on the weight or elapsed time (for that Hunter teaches, “Another aspect of the disclosure relates to a participatory water play system comprising a water dispensing device, the water dispensing device comprising: a support structure; a container mounted on the support structure to rotate about an axis, the container being adapted to receive and accumulate quantities of water; the container being pivotal mounted to rotate about the axis such that when the container accumulates more than a predetermined quantity of water, the container is adapted to rotate at least one rotation about the axis to dispense a quantity of water”) (col. 1, lines 47-56). The time is the time taken to fill up the container to reach the threshold quantities and the signal is the threshold level.
As to claim 14, Hunter teaches (fig. 5) A fluid delivery system comprising: a fluid delivery element (10) configured to contain a volume of fluid and release such fluid; a first fluid flowing element (108) positioned adjacent to the fluid delivery element and configured to receive a first portion of the volume of fluid from the fluid delivery element; and a second fluid flowing element (104) configured to receive a second portion of the volume of fluid from the fluid delivery element prior to the release of the first portion onto the first fluid flowing element (note that both deflector receive water from fluid delivery element (1) and one of them (104 & 108) will receive water before the other based on the threshold volume).
Allowable Subject Matter
Claims 4-6, 12-13 and 15-20 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; to overcome the 112-2nd; and to overcome the obvious double patenting rejection above.
Conclusion
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/AMR A AWAD/Supervisory Patent Examiner, Art Unit 2621
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