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 .
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, 8, and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10, 10, and 10 of U.S. Patent No. 11,986,620. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 10, 10, and 10 of U.S. anticipates Application claims 1, 8, and 15. Accordingly, claims 1, 8, and 15 are not patentably distinct from U.S. Patent No. 11,986,620 claims 10, 10, and 10.
Please note that the bolded sections show the differences between the two claims.
Here, U.S. Patent No. 11,986,620 claim 10 requires:
A fluid-fitting tool comprising:
a body comprising a first end, a second end, a first arm, a second arm, an inner surface forming a passage that extends through the body between the first and second ends, and a first engagement feature comprising a first wall that extends from the inner surface of the passage and along a length that extends from the first end toward the second end of the body, the first and second arms forming a cavity that is continuous with the passage such that the longitudinal axis of the passage extends through the cavity;
wherein the passage is configured to receive at least a portion of a fluid fitting therein such that the first engagement feature engages an outer surface of the fluid fitting and rotationally couples the body and the fluid fitting such that, when the body is rotated around a longitudinal axis of the passage, the first engagement feature is configured to rotate the fluid fitting;
wherein the second arm is moveable between first and second positions, wherein, in the first position, the inner surface of the first arm is positioned along the cavity to define a first cross-sectional clearance; and in the second position, at least a portion of the first arm extends into the cavity to define a second cross-sectional clearance, different from the first cross-sectional clearance, to change a cross-sectional profile of the cavity.
While, Application claim 1 requires:
A fluid-fitting tool comprising:
a body having a first arm and a second arm, the first and second arms comprising an inner surface forming a cavity that is continuous with a passage through the body, and a first engagement feature comprising a first wall that extends along the passage, wherein any of the first arm or the second arm is movable relative to the other of the first arm or the second arm to increase or decrease a distance between the inner surface of the first arm and the inner surface of the second arm.
Here, U.S. Patent No. 11,986,620 claim 10 requires:
A fluid-fitting tool comprising:
a body comprising a first end, a second end, a first arm, a second arm, an inner surface forming a passage that extends through the body between the first and second ends, and a first engagement feature comprising a first wall that extends from the inner surface of the passage and along a length that extends from the first end toward the second end of the body, the first and second arms forming a cavity that is continuous with the passage such that the longitudinal axis of the passage extends through the cavity;
wherein the passage is configured to receive at least a portion of a fluid fitting therein such that the first engagement feature engages an outer surface of the fluid fitting and rotationally couples the body and the fluid fitting such that, when the body is rotated around a longitudinal axis of the passage, the first engagement feature is configured to rotate the fluid fitting;
wherein the second arm is moveable between first and second positions, wherein, in the first position, the inner surface of the first arm is positioned along the cavity to define a first cross-sectional clearance; and in the second position, at least a portion of the first arm extends into the cavity to define a second cross-sectional clearance, different from the first cross-sectional clearance, to change a cross-sectional profile of the cavity.
While, Application claim 8 requires:
A fluid-fitting tool comprising:
a body comprising a first end, a second end, a first arm, a second arm, a passage formed between the first and second arms and extending through the first and second ends, and a first engagement feature extending along the passage, wherein any of the first arm or the second arm is movable relative to the other of the first arm or the second arm to increase or decrease a distance between an inner surface of the first arm and an inner surface of the second arm.
Here, U.S. Patent No. 11,986,620 claim 10 requires:
A fluid-fitting tool comprising:
a body comprising a first end, a second end, a first arm, a second arm, an inner surface forming a passage that extends through the body between the first and second ends, and a first engagement feature comprising a first wall that extends from the inner surface of the passage and along a length that extends from the first end toward the second end of the body, the first and second arms forming a cavity that is continuous with the passage such that the longitudinal axis of the passage extends through the cavity;
wherein the passage is configured to receive at least a portion of a fluid fitting therein such that the first engagement feature engages an outer surface of the fluid fitting and rotationally couples the body and the fluid fitting such that, when the body is rotated around a longitudinal axis of the passage, the first engagement feature is configured to rotate the fluid fitting;
wherein the second arm is moveable between first and second positions, wherein, in the first position, the inner surface of the first arm is positioned along the cavity to define a first cross-sectional clearance; and in the second position, at least a portion of the first arm extends into the cavity to define a second cross-sectional clearance, different from the first cross-sectional clearance, to change a cross-sectional profile of the cavity.
While, Application claim 15 requires:
A fluid-fitting tool assembly comprising:
a fluid-fitting tool comprising a body comprising a first end, a second end, a first arm, a second arm, a passage formed between the first and second arms and extending through the first and second ends, and a first engagement feature extending along the passage, wherein any of the first arm or the second arm is movable relative to the other of the first arm or the second arm to increase or decrease a distance between an inner surface of the first arm and an inner surface of the second arm; and
a tubing extending through the passage of the body such that the fluid-fitting tool is movable in a longitudinal direction along the tubing toward a fluid fitting and is rotatable relative to the fluid fitting, wherein, when the first engagement feature is longitudinally aligned with the fluid fitting, and the fluid-fitting tool is rotated relative to the fluid fitting, the first engagement feature is configured to engage against the fluid fitting such that the fluid fitting rotates with the fluid-fitting tool.
Thus, it is apparent that U.S. Patent No. 11,986,620 claims 10, 10, and 10 encompasses Application claims 1, 8, and 15, respectively. Following the rationale in In re Goodman cited in the preceding paragraph, wherein Applicant has once been granted a patent containing a claim for the specific or narrower invention, Applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer. Note that since U.S. Patent No. 11,986,620 anticipates Application claims 1, 8, and 15, and since anticipation is the epitome of obviousness, then Application claims 1, 8, and 15 are obvious over U.S. Patent No. 11,986,620.
Claims 1, 8, and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7, 7, and 7 of U.S. Patent No. 12,324,896. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 7, 7, and 7 of U.S. Patent No. 12,324,896 anticipates Application claims 1, 8, and 15. Accordingly, claims 1, 8, and 15 are not patentably distinct from claims 7, 7, and 7 of U.S. Patent No. 12,324,896.
Please note that the bolded sections show the differences between the two claims.
Here, U.S. Patent No. 12,324,896 claim 7 requires:
A fluid-fitting tool comprising:
a body, a first arm, and a second arm, the body having an inner surface forming a passage that extends through the body, and a first engagement feature comprising a first wall that extends along the inner surface of the passage, the first and second arms forming a cavity that is continuous with the passage such that a longitudinal axis of the passage extends through the cavity;
wherein the passage is configured to receive at least a portion of a fluid fitting therein such that the first engagement feature engages an outer surface of the fluid fitting and rotationally couples the body and the fluid fitting such that, when the body is rotated around a longitudinal axis of the passage, the first engagement feature is configured to rotate the fluid fitting;
wherein the second arm is moveable between first and second positions, wherein, in the first position, the inner surface of the first arm is positioned along the cavity to define a first cross-sectional clearance; and in the second position, at least a portion of the second arm extends into the cavity to define a second cross-sectional clearance, different from the first cross-sectional clearance, to change a cross-sectional profile of the cavity.
While, Application claim 1 requires:
A fluid-fitting tool comprising:
a body having a first arm and a second arm, the first and second arms comprising an inner surface forming a cavity that is continuous with a passage through the body, and a first engagement feature comprising a first wall that extends along the passage, wherein any of the first arm or the second arm is movable relative to the other of the first arm or the second arm to increase or decrease a distance between the inner surface of the first arm and the inner surface of the second arm.
Here, U.S. Patent No. 12,324,896 claim 7 requires:
A fluid-fitting tool comprising:
a body, a first arm, and a second arm, the body having an inner surface forming a passage that extends through the body, and a first engagement feature comprising a first wall that extends along the inner surface of the passage, the first and second arms forming a cavity that is continuous with the passage such that a longitudinal axis of the passage extends through the cavity;
wherein the passage is configured to receive at least a portion of a fluid fitting therein such that the first engagement feature engages an outer surface of the fluid fitting and rotationally couples the body and the fluid fitting such that, when the body is rotated around a longitudinal axis of the passage, the first engagement feature is configured to rotate the fluid fitting;
wherein the second arm is moveable between first and second positions, wherein, in the first position, the inner surface of the first arm is positioned along the cavity to define a first cross-sectional clearance; and in the second position, at least a portion of the second arm extends into the cavity to define a second cross-sectional clearance, different from the first cross-sectional clearance, to change a cross-sectional profile of the cavity.
While, Application claim 8 requires:
A fluid-fitting tool comprising:
a body comprising a first end, a second end, a first arm, a second arm, a passage formed between the first and second arms and extending through the first and second ends, and a first engagement feature extending along the passage, wherein any of the first arm or the second arm is movable relative to the other of the first arm or the second arm to increase or decrease a distance between an inner surface of the first arm and an inner surface of the second arm.
Here, U.S. Patent No. 12,324,896 claim 7 requires:
A fluid-fitting tool comprising:
a body, a first arm, and a second arm, the body having an inner surface forming a passage that extends through the body, and a first engagement feature comprising a first wall that extends along the inner surface of the passage, the first and second arms forming a cavity that is continuous with the passage such that a longitudinal axis of the passage extends through the cavity;
wherein the passage is configured to receive at least a portion of a fluid fitting therein such that the first engagement feature engages an outer surface of the fluid fitting and rotationally couples the body and the fluid fitting such that, when the body is rotated around a longitudinal axis of the passage, the first engagement feature is configured to rotate the fluid fitting;
wherein the second arm is moveable between first and second positions, wherein, in the first position, the inner surface of the first arm is positioned along the cavity to define a first cross-sectional clearance; and in the second position, at least a portion of the second arm extends into the cavity to define a second cross-sectional clearance, different from the first cross-sectional clearance, to change a cross-sectional profile of the cavity.
While, Application claim 15 requires:
A fluid-fitting tool assembly comprising:
a fluid-fitting tool comprising a body comprising a first end, a second end, a first arm, a second arm, a passage formed between the first and second arms and extending through the first and second ends, and a first engagement feature extending along the passage, wherein any of the first arm or the second arm is movable relative to the other of the first arm or the second arm to increase or decrease a distance between an inner surface of the first arm and an inner surface of the second arm; and
a tubing extending through the passage of the body such that the fluid-fitting tool is movable in a longitudinal direction along the tubing toward a fluid fitting and is rotatable relative to the fluid fitting, wherein, when the first engagement feature is longitudinally aligned with the fluid fitting, and the fluid-fitting tool is rotated relative to the fluid fitting, the first engagement feature is configured to engage against the fluid fitting such that the fluid fitting rotates with the fluid-fitting tool.
Thus, it is apparent that U.S. Patent No. 12,324,896 claims 7, 7, and 7 encompasses Application claims 1, 8, and 15 , respectively. Following the rationale in In re Goodman cited in the preceding paragraph, wherein Applicant has once been granted a patent containing a claim for the specific or narrower invention, Applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer. Note that since U.S. Patent No. 12,324,896 anticipates Application claims 1, 8, and 15, and since anticipation is the epitome of obviousness, then Application claims 1, 8, and 15 are obvious over U.S. Patent No. 12,324,896.
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, 2, 4-10, and 12-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gutzler et al. (U.S. 2020/0276381).
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Annotated Figure 2 from Gutzler.
Regarding claim 1, Gutzler discloses:
A fluid-fitting tool comprising:
a body (140, 142, 144) having a first arm (see annotated figure above) and a second arm (see annotated figure above), the first and second arms (see annotated figure above) comprising an inner surface (see annotated figure above) forming a cavity that is continuous with a passage through the body (140, 142, 144), and a first engagement feature (144) comprising a first wall (144) that extends along the passage, wherein any of the first arm (see annotated figure above) or the second arm (see annotated figure above) is movable relative to the other of the first arm (see annotated figure above) or the second arm (see annotated figure above) to increase or decrease a distance between the inner surface (see annotated figure above) of the first arm (see annotated figure above) and the inner surface (see annotated figure above) of the second arm (see annotated figure above; see paragraph 0050)
Regarding claim 2, Gutzler discloses:
a second engagement feature (142) comprising a second wall (142) that extends along the passage (see Figure 2; see paragraph 0050)
Regarding claim 4, Gutzler discloses:
wherein the second wall (142) is spaced apart from the first wall (144) to form a channel therebetween (see paragraph 0050)
Regarding claim 5, Gutzler discloses:
wherein the passage comprises a cross-sectional profile, transverse relative to a longitudinal axis of the passage, defining a passage area (see annotated figure above), the channel comprises a cross-sectional profile, transverse relative to the longitudinal axis of the passage, defining a channel area, and wherein the passage area (see annotated figure above) is greater than the channel area (see paragraph 0050)
Further regarding this limitation, when first arm of the clamp is brought down into engagement with the teeth of the second arm, the area between 142 and 144 is smaller than through the rest of the passage.
Regarding claim 6, Gutzler discloses:
wherein in a first position of the second arm (see annotated figure above), the inner surface (see annotated figure above) of the first arm (see annotated figure above) is positioned along the cavity to define a first cross-sectional clearance (see paragraph 0050); and in a second position of the second arm (see annotated figure above), at least a portion (142) of the second arm (see annotated figure above) extends into the cavity to define a second cross-sectional clearance, different from the first cross- sectional clearance (see paragraph 0050)
Regarding claim 7, Gutzler discloses:
wherein the first engagement feature (144) is aligned with a first end (see annotated figure above) of the body 140, 142, 144
Regarding claim 8, Gutzler discloses:
A fluid-fitting tool comprising:
a body (140, 142, 144) comprising a first end (see annotated figure above), a second end (see annotated figure above), a first arm (see annotated figure above), a second arm (see annotated figure above), a passage formed between the first and second arms (see annotated figure above) and extending through the first and second ends (see annotated figure above), and a first engagement feature (144) extending along the passage, wherein any of the first arm (see annotated figure above) or the second arm (see annotated figure above) is movable relative to the other of the first arm (see annotated figure above) or the second arm (see annotated figure above) to increase or decrease a distance between an inner surface (see annotated figure above) of the first arm (see annotated figure above) and an inner surface (see annotated figure above) of the second arm (see annotated figure above; see paragraph 0050)
Regarding claim 9, Gutzler discloses:
wherein the first engagement feature (144) extends into the passage (see Figure 2; see paragraph 0050)
Regarding claim 10, Gutzler discloses:
a second engagement feature (142) that extends along the passage (see Figure 2; see paragraph 0050)
Regarding claim 12, Gutzler discloses:
wherein the second engagement feature (142) is spaced apart from the first engagement feature (144) to form a channel therebetween (see paragraph 0050)
Regarding claim 13, Gutzler discloses:
wherein the passage comprises a cross-sectional profile, transverse relative to a longitudinal axis of the passage, defining a passage area (see annotated figure above), the channel comprises a cross-sectional profile, transverse relative to the longitudinal axis of the passage, defining a channel area, and wherein the passage area (see annotated figure above) is greater than the channel area (see paragraph 0050)
Further regarding this limitation, when first arm of the clamp is brought down into engagement with the teeth of the second arm, the area between 142 and 144 is smaller than through the rest of the passage.
Regarding claim 14, Gutzler discloses:
wherein, in a first position of the second arm (see annotated figure above), the inner surface (see annotated figure above) of the first arm (see annotated figure above) is positioned along the passage to define a first cross-sectional clearance; and in a second position of the second arm (see annotated figure above), at least a portion of the second arm (142) extends into the passage to define a second cross-sectional clearance, different from the first cross-sectional clearance (see Figure 2; see paragraph 0050)
Allowable Subject Matter
Claims 3, 11, and 16-20 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELSEY E CARY whose telephone number is (571)272-9427. The examiner can normally be reached Monday-Friday 9:30am-5:30pm.
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/KELSEY E CARY/Primary Examiner, Art Unit 3753
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