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 .
Status of the Claims
Examiner acknowledges receipt of Applicant’s amendments and arguments filed with the Office on June 22nd, 2026 in response to the Non-Final Office Action mailed on March 20th, 2026. Per Applicant's response, Claim 1 has been amended. All other claims have been left in their previously-presented form. Consequently, Claims 1-15 still remain pending in the instant application. The Examiner has carefully considered each of Applicant’s amendments and/or arguments, and they will be addressed below.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-15 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 1-3 & 11-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 5,762,236 to Foster et al.
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In regards to independent Claim 1, and with particular reference to Figure 1 shown above, Foster et al. (Foster) discloses:
A pump (Fig. 1; “trigger sprayer”) comprising: an inlet one-way valve (36); a pump chamber (52) downstream of and in fluid communication with said inlet one-way valve (Fig. 1); wherein the pump chamber comprises a piston bore (50) having a length and an open cross section area (apparent in Fig. 1); a piston (54, 106) slideably engaged with the piston bore of the pump chamber (Fig. 1); wherein the piston defines a piston cavity (i.e. the internal space formed by the piston head 106; labeled by the Examiner in Fig. 1 above, for clarity) that is in fluid communication with the pump chamber (apparent in Fig. 1); a liquid accumulator (the central projection of the piston head 106; see Fig. 1 above; col. 5, lines 1-5 disclose that the piston head 106 is entirely made of resilient polyethylene material, and thus, the central projection forms a diaphragm/bladder type accumulator capable of accumulating liquid with increasing pressure) operable within the piston cavity (labeled by the examiner in Fig. 1 above, for clarity), wherein the liquid accumulator is not downstream of a one-way valve positioned between the pump chamber and the liquid accumulator (apparent in Fig. 1); an outlet one-way valve (38) downstream of and in fluid communication with the pump chamber (Fig. 1); and a housing (22) containing the pump chamber, the piston, the piston cavity (Fig. 1); an actuator (labeled by the examiner above, for clarity; includes both trigger 26 and the rear end surface of the piston body 54) engaged with the piston (Fig. 1); wherein the actuator extends from outside of the housing (i.e. below and left of the housing; Fig. 1) into the housing beyond the pump chamber (Fig. 1 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 52 during the upstroke movement of the piston) 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)
Although Foster discloses much of Applicant’s recited invention (as denoted above), Foster does not disclose 1) 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, or 2) the piston cavity volume being from about 0.1 to about 4 mL or 2, as claimed. 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)). Please note that in lines 13-14 of page 4 of the instant application, as well as page 6, lines 8-17 of the instant application, the claimed piston cavity volume range, piston bore length range, and piston bore 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 piston cavity and piston bore dimensions would (or could) provide any difference in pump performance relative to the prior art (such as Foster). In the instance case, Foster 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. As such, it would have been an obvious matter of design choice to have provided a piston cavity volume, a piston bore length, and a piston bore open cross sectional area as claimed by Applicant, since Applicant has not disclosed that such particular cavity/bore dimensions solve any stated problem or are for any particular purpose and it appears that the invention would perform equally well with the piston cavity and piston bore dimensions shown in Foster. For all of these reasons, Applicant’s limitations “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”, and “a piston cavity volume from about 0.1 to about 4 mL” are rendered obvious by Foster.
In regards to Claim 2, Foster’s piston cavity is defined by a piston cavity opening (i.e. right end of head 106) oriented towards said pump chamber (apparent in Fig. 1) and a piston cavity closed end (i.e. left end of head 106) oriented towards the actuator (apparent in Fig. 1) and a piston cavity peripheral wall (at lead line 106) extending from the piston cavity closed end to the piston cavity opening (Fig. 1)
In regards to Claim 3, Foster’s piston cavity peripheral wall is slideably engaged with the pump chamber (apparent in Fig. 1).
In regards to Claim 11, Foster’s actuator is an external surface of the piston (see Claim 1 and Fig. 1 above).
In regards to Claim 12, Foster’s liquid accumulator is a bladder accumulator (see Claim 1).
In regards to Claim 13, Foster’s actuator includes a trigger (26) (Fig. 1).
In regards to Claim 14, Foster’s pump further comprises a dip tube (72) upstream of the inlet one-way valve (Fig. 1).
In regards to Claim 15, Foster’s liquid accumulator is a bladder accumulator positioned entirely within the piston cavity (Fig. 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 1-15 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.
Allowable Subject Matter
Claims 4-10 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.
The following is a statement of reasons for the indication of allowable subject matter: Foster et al. (detailed above) specifically teaches away from use of a resilient member engaged with the actuator and biased to expand the pump chamber volume, as recited in Claim 4. As such, there is no prima facie case of obviousness to be made to have added a resilient member to Foster et al. without destroying Foster’s originally intended springless design. Thus, the combination of Claim 1 with the limitations of Claim 4 is not disclosed nor rendered obvious by Foster et al., and as such, is found to be novel and non-obvious over the best available prior art. Claims 5-10 depend, at least indirectly, from Claim 4, and thus, are likewise objected to.
Conclusion
Applicant's amendments filed June 22nd, 2026 have 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.
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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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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/ALEXANDER B COMLEY/Primary Examiner, Art Unit 3746
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