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 1-5 are objected to because of the following informalities:
In claim 1, line 6, “the pistons being reciprocatable within the channel” should read --each piston being reciprocatable with each channel--.
In claim 1, line 16, “the outlet check valve” should read --each outlet check valve--.
Appropriate correction is required.
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 2-4 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.
In claim 2, the limitation “the outlet check valves are evenly distributed around the wobble plate axis” is not supported by the originally filed disclosure in a manner that reasonably conveys that Applicant had possession of the claimed invention at the time the application was filed. Claim 1 recites the outlet check valves being perpendicular to the piston axes which is consistent with the embodiment depicted in FIG. 10 described at para. 0172 of the specification. Its outlet check valves arranged perpendicular to the piston axis in a row on an edge of the annular shape defining the piston cylinders and inlet check valves. However, the outlet check valves are NOT evidently described or depicted distributed evenly around the wobble plate axis as presently recited in claim 2 that appears to be directed to features in the embodiment depicted in FIG. 13. There is no written description support for the invention having perpendicular outlet valves that are evenly distributed around the wobble plate axis as now claimed. That is, there is no support for combining the features of these embodiments. Even if there were support, doing so would not be physically achievable with perpendicular outlet check valves. It is suggested that this limitation be deleted or amended to reflect the configuration depicted in FIG. 10.1
In claim 3, the limitation “the outlet check valves are located at least partially within the annular shape” is not supported by the originally filed disclosure in a manner that reasonably conveys that Applicant had possession of the claimed invention at the time the application was filed. The outlet check valves are outside of the annular shape according to the embodiment depicted in FIG. 10 now recited in claim 1. There is no written description support for the invention having perpendicular outlet valves located within the annular shape in the manner claimed. It is suggested that this limitation be deleted or amended to reflect the configuration depicted in FIG. 10.
In claim 4, the limitation “the water outlets from each of the five channels, after each of the outlet check valves, combine at the center of the annular shape” is not supported by the originally filed disclosure in a manner that reasonably conveys that Applicant had possession of the claimed invention at the time the application was filed. The water outlets from the channels to the check valves do NOT combine at the center of the annular shape in the embodiment depicted in FIG. 10 recited in claim 1. This claim appears to be features in the embodiment depicted in FIG. 13. There is no written description support for the invention having perpendicular outlet check valves that combine at the center of the annular shape as claimed. It is suggested that this limitation be deleted or amended to reflect the configuration depicted in FIG. 10.
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 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 12,264,660 (‘660). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims recite common subject matter.2
As to claim 1 of the instant application, this is a broader version of claims 1 and 2 of ‘660 that, if issued, would be fully anticipated by the patent.
Allowable Subject Matter
Claim 1 would be allowable provided the nonstatutory double patenting rejection is overcome.
Claims 2-4 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims provided the nonstatutory double patenting rejection is overcome.
Claim 5 is 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:
With respect to claim 1, the prior art of record either alone or in combination does not teach or fairly suggest the wobble plate piston water pump of claim 1 with each recited limitation wherein a plurality of inlet check valves, each associated with one of the five channels, each inlet check valve positioned between each respective water inlet and the associated channel; and a plurality of outlet check valves, each associated with one of the five channels, each outlet check valve positioned between each respective water outlet and the associated channel, the outlet check valve oriented perpendicular to the piston axes, the outlet check valves reciprocate along an axis perpendicular to the piston axis to transition between closed states and open states.
With respect to claim 5, incorporating a main check valve located between the water inlet and the plurality of inlet check valves in combination with the pump limitations recited in claim 1 is not evidently taught or suggested by the available prior art.
The claimed novel combination of features is neither contemplated nor reasonably foreseeable in light of the available prior art without benefit of the disclosure of the instant invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Nathan (U. S. Patent Application Publication No. 2014/00328701)3 is considered the closest art of record disclosing a wobble plate piston pump having similar construction with annularly arranged inlet and outlet check valves 24, 26 (FIG.’s 1-3, para.’s 0029-0032, inter alia). However, Nathan fails to teach or suggest the outlet check valves oriented perpendicular to the piston axes. Modifying Nathan’s outlet check valves to be perpendicular would require changing its parallel valve passages, altering its basic design and operation.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH J HANSEN whose telephone number is (571)272-6780. The examiner can normally be reached Monday Friday 7:00 AM to 4:00 PM (MT).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Laurenzi can be reached at (571) 270-7878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KENNETH J HANSEN/ Primary Examiner, Art Unit 3746
1 Claims 2-4 appear to be directed to the embodiment depicted in FIG. 13 which was the subject of parent application no. 17/891,550, NOT the embodiment of FIG. 10 with perpendicular outlet valves now recited in claim 1.
2 Claims 2-4 are not subject to nonstatutory double patenting rejections due to the aforesaid 35 U.S.C 112(b) issues precluding interpretation for the purposes of applying art.
3 Cited in the IDS filed 19 September 2025.