DETAILED ACTION
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 without traverse of Species 1.1, Species 2.1 & Species 3.1 in the reply filed on March 10, 2026 is acknowledged.
The applicant indicated that claims 1-11 and 13-19 read on the elected invention. However, after further review, the examiner finds that claim 8 is directed to Species 1.2 of Fig. 5 (see the flexible belts 220) and that claim 9 is directed to Species 1.4 of Fig. 7 (see the solenoid). Therefore claims 8 and 9 are withdrawn as being directed to non-elected species and claims 1-7, 10, 11 and 13-19 are elected.
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.
Claim 11 is 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. Paragraph [0078] of the specification sets forth that the air is “not exhausted after each stroke” which is not that same as the claimed material of the fluid not being exhausted during the strokes.
Claim Rejections - 35 USC § 102
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 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, 18 and 19 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Simmons (USPN 4,543,044).
Simmons discloses a displacement pump (see the Title) comprising: a housing (outer structure of B in Figs. 1-6) at least partially defining an internal pressure chamber (6b) configured to be filled with a working fluid (the liquid in 24) having a charge pressure (determined by pumps 25 & 29); a first diaphragm (10) at least partially defining a first process fluid cavity (6a) on a first side of the first diaphragm; a second diaphragm (5) at least partially defining a second process fluid cavity (1a) on a first side of the second diaphragm; wherein when the first diaphragm is changing over (see Fig. 2; note there is no arrow on the shaft 9) from a first suction stroke (see Fig. 1 and the arrow on rod 9) to a first pumping stroke (see Fig. 3 and the arrow on shaft 9) the second diaphragm is already displacing (in Fig. 2 when the first diaphragm 10 is changing over the second diaphragm is already displacing (see the arrow rod 4 and the valve E being open, note the legend at the bottom of Fig. 1) through a first pumping stroke.
Claim 18 sets forth the same material as claim 1 but broadens the first and second diaphragms to be fluid displacers. Claim 19 additionally sets forth that the first fluid displacer is a diaphragm. Thus, claims 18 and 19 are rejected for the same reasons as claim 1.
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, 10 and 13-19 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-20 of U.S. Patent No. 11,1867,165 (hereafter the ‘165 patent) in view of Simmons (USPN 4,543,044).
The limitations of claims 1, 18 and 19 are present in claim 12 of the ‘165 patent including the housing, the internal pressure chamber with a charge pressure, and the first and second fluid displacers or diaphragms. Claim 12 also teaches additional elements. Claim 12 of the ‘165 patent does not teach wherein when the first diaphragm is changing over from a first suction stroke to a first pumping stroke the second diaphragm is already displacing through a first pumping stroke. As set forth in the rejections under 35 USC 102 above Simmons discloses this feature (see Figs. 1-3 and the discussion in the 102 rejection).
At the time of the effective filing date it would have been obvious to one of ordinary skill in the art to control the charge pressure, as taught by Simmons, in the pump of the ‘165 patent, in order to accomplish a pumping effective having constant flow rate from the pump (see the abstract).
The limitations of claims 10 and 13-15 are also present in claim 12 of the ‘165 patent. The limitations of claim 16 are present in claim 15 of the ‘165 patent. The limitations of claim 17 are present in claim 13 of the ‘165 patent.
Claims 1, 10, 13, 18 and 19 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-5 of U.S. Patent No. 12,253,071 (hereafter the ‘071 patent) in view of Simmons (USPN 4,543,044).
The limitations of claims 1, 18 and 19 are present in claim 3 of the ‘071 patent including the housing, the internal pressure chamber with a charge pressure, and the first and second fluid displacers or diaphragms. Claim 3 also teaches additional elements. Claim 3 of the ‘071 patent does not teach wherein when the first diaphragm is changing over from a first suction stroke to a first pumping stroke the second diaphragm is already displacing through a first pumping stroke. As set forth in the rejections under 35 USC 102 above Simmons discloses this feature (see Figs. 1-3 and the discussion in the 102 rejection).
At the time of the effective filing date it would have been obvious to one of ordinary skill in the art to control the charge pressure in the pump of the ‘165 patent, as taught by Simmons, in order to accomplish a pumping effective having constant flow rate from the pump (see the abstract).
The limitations of claims 10 and 13 are also present in claim 3 of the ‘071 patent.
Claims 2-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over U.S. Patent No. ‘165 in view of Simmons as set forth in the rejection of claim 1 above and further in view of Pawlowski et al (USPN 5,219,274).
‘165 in view of Simmons discloses the invention substantially as claimed but does not disclose/claim that the reciprocator is configured to pull the diaphragms (claim 2), is formed as a piston (claim 3), includes first and second pull chambers and a first pull and a second pull (claim 4), that the first pull includes an attachment end and a free end (claim 5), that the first pull is movable relative to the reciprocator (claim 6), or that the reciprocator is electrically driven (claim 7).
Pawlowski et al discloses a similar pump with first (19) and second (21) diaphragms being driven by a reciprocator where the reciprocator is configured to pull the diaphragms (see Figs. 1 and 2), the reciprocator is formed as a piston (15, 13), includes first and second pull chambers (41) and first and second pulls (39), that the first pull includes an attachment end (the threaded end indirectly connected to the diaphragm) and a free end (the distal end), that the first pull is movable relative to the reciprocator (the pulls move relative to the inner portion 13 of the piston), and that the reciprocator is electrically driven (43).
At the time of the effective filing date it would have been obvious to one of ordinary skill in the art to substitute a reciprocator as taught by Pawlowski et al for the generic reciprocator claimed in the ‘165 patent in order to obtain a double diaphragm pump having pressure relief (see the Title and the Abstract).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES G FREAY whose telephone number is (571)272-4827. The examiner can normally be reached Mon - Fri: 8:00 - 5:00.
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.
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/CHARLES G FREAY/ Primary Examiner, Art Unit 3746
CGF
April 14, 2026
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