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 .
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6, & 11-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 4,365,751 to Saito et al. in view of US 2017/0072416 to Maas et al.
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In regards to independent Claim 1, and with particular reference to Figure 1 shown above, Saito et al. (Saito) discloses:
A pump (Fig. 1; “trigger type liquid injector”) comprising: an inlet one-way valve (18); a pump chamber (25) downstream of and in fluid communication with said inlet one-way valve (Fig. 1); wherein the pump chamber comprises a piston bore having a length and an open cross section area (apparent in Fig. 1); a piston (26) slideably engaged with the piston bore of the pump chamber (Fig. 1); wherein the piston defines a piston cavity (labeled by the Examiner in Fig. 1) that is in fluid communication with the pump chamber (Fig. 1); an outlet one-way valve (42) downstream of and in fluid communication with the pump chamber (Fig. 1); and a housing (1, 4) containing the pump chamber, the piston, the piston cavity (Fig. 1); an actuator (6, 32, 33) engaged with the piston (Fig. 1); wherein the actuator extends from outside of the housing (i.e. below the housing) into the housing beyond the pump chamber (Fig. 1 clearly shows how the upper end of the actuator extends into a bottom portion of the housing, beyond where the pump chamber is located), wherein the pump chamber has an upstroke pump chamber volume (i.e. any one of the progressively expanding volumes produced in the pump chamber 25 during the upstroke movement of the piston 26) and the piston cavity has a piston cavity volume (apparent in Fig. 1 above) and the piston cavity volume is from about 0.2 to about 0.8 of the upstroke pump chamber volume (it is apparent in Figure 1 that there exists a position of the piston 26 during its upstroke movement at which the piston cavity volume will be about 0.2-0.8 of the upstroke pump chamber volume; refer also to parent application 17/984,307, which includes rejections that detail similar aspects of Saito and how they relate to the limitation of the claimed invention)
Although Saito discloses much of Applicant’s recited invention (as denoted above), Saito does not disclose 1) the piston cavity volume being from about 0.1 to about 4 mL, 2) a liquid accumulator operable within the piston cavity, or 3) the piston bore having a length from about 5 to about 35 mm and an open cross section area of from about 4 to about 500 cm2, as claimed.
Regarding deficiency #3, the courts have held that where the only difference between the prior art and the claimed invention is the recitation of relative dimensions of the claimed device, the device having the claimed relative dimensions would not perform differently than the prior art device and is therefore not patentably distinct (See MPEP § 2144.04 - Paragraph IV.A; In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)). Please note that in page 6, lines 8-17 of the instant application, the claimed piston bore length range and open cross section area range have been disclosed, but the applicant has failed to disclose any criticality for the claimed limitations. In other words, Applicant’s specification fails to disclose if (or how) such a piston bore dimensions would (or could) provide any difference in pump performance relative to the prior art (such as Saito). In the instance case, Saito clearly discloses the claimed piston chamber, piston bore, and piston slideable therein, and does so within a manual, hand-powered sprayer of nearly identical operation to that of Applicant’s recited pump. Furthermore, it has been held by the courts that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges (see In re AIler, 105 USPQ 233) or an optimum value of a result effective variable (see In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)) involves only routine skill in the art. For all of these reasons, Applicant’s limitation “said piston bore having a length from about 5 to about 35 mm; said piston bore having an open cross section area of from about 4 to about 500 cm;” is rendered obvious by Saito.
Regarding deficiencies #1 and #2, use of a liquid accumulator operable within a reciprocating piston is well known in the art of piston pumps, as shown by Maas et al. (Maas hereinafter). In particular, Maas discloses another piston pump assembly (1; Fig. 5) for pumping and spraying fluids that includes a reciprocating piston 5 and a bladder-type liquid accumulator 19 operable within a piston cavity of the piston (Fig. 5; paras. 67 & 69). In these disclosures, Maas makes clear that his liquid accumulator 19 provides a pre-compression state inside the pump that ensures a peak pressure is maintained so as to provide optimal spraying (para. 69). Hence, arranging an appropriately sized bladder-type liquid accumulator within Saito’s piston cavity would provide a similar fluid pre-compression state within Saito’s pump chamber 25, thus providing improved discharge pressure in the same manner. Furthermore, while Saito does not specify that his piston cavity comprises a volume of from about 0.1 to about 4 mL, as claimed, Maas discloses that in operation of the pump, “liquid L flows past a buffer 19 and if there is enough pressure developed pushes open an outlet valve 7, which allows the liquid to pass through an outlet channel 49 to a nozzle 6”. In other words, during operation, Maas’ piston cavity provides a volume through which liquid may flow past/around the buffer 19. Maas simply does not disclose the size of this volume, and thus, does not disclose Applicant’s specific volume of “from about 0.1 to about 4 mL”. However, the courts have held that where the only difference between the prior art and the claimed invention is the recitation of relative dimensions of the claimed device, the device having the claimed relative dimensions would not perform differently than the prior art device and is therefore not patentably distinct (See MPEP § 2144.04 - Paragraph IV.A; In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)). Furthermore, it has been held by the courts that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges (see In re AIler, 105 USPQ 233) or an optimum value of a result effective variable (see In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)) involves only routine skill in the art. Please note that in lines 13-14 of page 4 of the instant application, such a volume range has been disclosed, but the applicant has failed to disclose any criticality for the claimed volume range. As such, it would have been an obvious matter of design choice to have provided a piston cavity volume of about 0.1 to about 4 mL, since applicant has not disclosed that such a piston cavity volume solves any stated problem or is for any particular purpose and it appears that the invention would perform equally well with the volume flow space clearly disclosed by Maas. Therefore, to one of ordinary skill desiring a piston pump with improved spraying, it would have been obvious to utilize the techniques disclosed in Maas in combination with those seen in Saito in order to obtain such a result. Consequently, it would have been obvious to one of ordinary skill in the art at a time before the effective filing date of the claimed invention to have modified Saito’s piston cavity volume to have a volume of 0.1-4 mL that contains a liquid accumulator therein (as taught in Maas) in order to obtain predictable results; those results being a fluid sprayer that ensure a desired pressure is maintained inside the pump prior to discharge, thereby ensuring a reliable and optimal spray pattern. Saito as modified by Maas would disclose all the structural limitations of the claimed invention, including a piston cavity (from Saito) receiving a liquid accumulator 19 (from Maas), wherein Maas’ liquid accumulator 19 ensures a peak pressure is maintained so as to provide optimal spraying (para. 69).
In regards to Claim 2, Saito’s piston cavity is defined by a piston cavity opening (at lead line 31) oriented towards said pump chamber (Fig. 1) and a piston cavity closed end (at lead line 32) oriented towards the actuator (Fig. 1) and a piston cavity peripheral wall (at lead line 26) extending from the piston cavity closed end to the piston cavity opening (Fig. 1)
In regards to Claim 3, Saito’s piston cavity peripheral wall is slideably engaged with the pump chamber (this is apparent in Fig. 1).
In regards to Claim 4, Saito’s pump further comprises a resilient member (30) engaged with the actuator (i.e. via the piston 26); wherein the pump chamber has a pump chamber volume (apparent in Fig. 1) that is a function of position of the piston (apparent in Fig. 1); and wherein the resilient member is biased to expand the pump chamber volume (apparent in Fig. 1).
In regards to Claims 5 & 13, Saito’s actuator is a trigger (Fig. 1).
In regards to Claim 6, Saito’s piston cavity peripheral wall is slideably engaged with the pump chamber (apparent in Fig. 1).
In regards to Claim 11, Saito’s actuator (i.e. portion 32) is an external surface of the piston.
In regards to Claim 12, Saito’s liquid accumulator (from Maas) is a bladder accumulator.
In regards to Claim 14, Saito’s pump further comprises a dip tube (19) upstream of the inlet one-way valve (Fig. 1).
In regards to Claim 15, Saito as modified by Maas results in the bladder accumulator (from Maas) being positioned entirely within Saito’s piston cavity.
Claim(s) 7-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saito-Maas (as applied above) as further evidenced by US 4,624,413 to Corsette.
In regards to Claim 7, Saito does not disclose that his resilient member (30) is arranged outside of the pump chamber (Saito’s resilient member 30 is arranged inside the pump chamber, as seen best in Figure 1).
However, Maas clearly discloses another piston pump assembly (Figs. 4-5) having a trigger mechanism (20; Fig. 4) similar to that of Saito and which specifically discloses the use of a resilient member (23) arranged outside of the pump chamber (Fig. 4; para. 68). Corsette is provided herein as an evidentiary reference showing another spring-biased trigger-actuated piston pump (Fig. 1) and which provides evidence that the location of the resilient member (i.e. outside or inside the pump chamber) is an interchangeable design feature that may be chosen based on a user’s design requirements (col. 3, lines 23-26). Therefore, to one of ordinary skill desiring a pump having a more easily accessible return spring, it would have been obvious to utilize the techniques disclosed in Maas in combination with those seen in Saito in order to obtain such a result. Consequently, it would have been obvious to one of ordinary skill in the art at a time before the effective filing date of the claimed invention to have modified Salto’s pump to utilize an external return spring for the actuator (as taught in Maas) in order to obtain predictable results; those results being a pump having its return spring easily accessible to the user in the case of require maintenance thereof.
In regards to Claim 8, Saito’s outlet one-way valve (42) is a pre-compression valve (i.e. the valve has a pre-compression pressure defined by elastic ring 44; col. 4, lines 56-59).
In regards to Claim 9-10, see Claim 12 above.
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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,519,394 to Bauer et al. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application, if allowed, would improperly extend the "right to exclude" already granted in the patent. In other words, the subject matter claimed in the instant application is fully disclosed in the issued patent. Specifically, the patent and the instant application claim common subject matter as follows: a pump having a housing, an inlet one-way valve, a pump chamber downstream of and in fluid communication with said inlet one-way valve, the pump chamber having an upstroke pump chamber volume, a piston bore having a length and a cross section area, a piston slideably engaged with the piston bore, a piston cavity within said piston having a piston cavity volume and being in fluid communication with said pump chamber, a liquid accumulator operable within said piston cavity, an outlet one-way valve downstream of and in fluid communication with said pump chamber, an actuator engaged with said piston, and all functional limitations associated with these common elements. Finally, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the previous application which matured into a patent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See also US 5,762,236 to Foster, US 4,174,056 to Loeffler, US 5,092,495 to Andre, and US 4,109,832 to Kutik, each of which discloses a spring biased fluid dispenser/sprayer that is manually actuated by a user.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER BRYANT COMLEY whose telephone number is (571)270-3772. The examiner can normally be reached Monday-Friday 9AM-6PM CST.
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/ALEXANDER B COMLEY/Primary Examiner, Art Unit 3746
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