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 .
Information Disclosure Statement
The IDS filed on June 5, 2025 is hereby acknowledged and has been placed of record. Please find attached a signed copy of the IDS.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“drive mechanism” in claim 17.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 10, 11, 13, 14 and 17-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 10 and 11, the recitation, “the power section” lacks antecedent basis. To what exactly is this “power section” referring?
Regarding claim 11, the recitation that the power section is “at least a portion of a region defined between the outer circumference of the annular body and an inner surface of the turret” is unclear, particularly in light of the disclosure. As shown and described in the originally filed drawings and specification, the “turret 106” is mounted at the top of “tubular structure 104” (see Figs. 1-3 and 5), and “configured to rotate about an axis 109 of the tubular structure 104...” (see specification paragraph [0089]). Also, as shown and described, the (albeit, indefinitely recited) “power section”, is defined by “at least a portion of a region defined between the outer circumference” of “annular body 136” of “turbine 118”, and “the inner surface of the tubular structure 104” (see specification paragraph [0107]; and see Figs. 6-9); with “turbine 118” being located significantly upstream from “turret 106” (see Fig. 5). Thus, the recitation in claim 11 regarding the location of the “power section” seems, at the very least, to be a mis-representation of the sprinkler in the originally filed disclosure, since it does not seem reasonable to say that the “power section” is defined in part by an inner surface of the turret, when the turret is located a significant distance from the power section, as shown and described.
Regarding claim 13, on lines 2-3, the purpose for the inclusion of “and wherein the plurality of blades are configured to generate torque for rotating the input shaft” is unclear, since this is essentially included with the scope of claim 12 (see lines 4-5 of claim 12).
Regarding claim 17, on line 10, the recitation, “...that together impinge on the plurality of blades” is unclear. More specifically, the claim is not clear as to what exactly are combined to “together impinge...”?
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 12,325,038. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of aforementioned patent include each of the essentially recited structural limitations and interrelated details set forth in the instant application claims, as set forth below:
As to claim 1, see (at least) patented claims 1 and 12.
As to claim 2, see (at least) patented claims 1 and 12.
As to claim 3, see (at least) patented claim 3.
As to claim 4, see (at least) patented claim 4.
As to claim 5, see (at least) patented claim 7.
As to claim 6, see (at least) patented claim 10.
As to claim 7, see (at least) patented claim 11.
As to claim 8, see (at least) patented claim 20.
As to claim 9, see (at least) patented claim 21.
As to claim 10, see (at least) patented claim 22.
As to claim 11, see (at least) patented claim 23.
As to claim 12, see (at least) patented claims 1 and 12.
As to claim 13, see (at least) patented claims 1 and 12.
As to claim 14, see (at least) patented claims 1 and 12.
As to claim 15, see (at least) patented claim 13.
As to claim 16, see (at least) patented claim 14.
As to claim 17, see (at least) patented claim 15.
As to claim 18, see (at least) patented claim 15.
As to claim 19, see (at least) patented claim 16.
As to claim 20, see (at least) patented claim 17.
Allowable Subject Matter
Pending a complete reply (as discussed above in paragraph 8 of the instant Office action), including a timely-filed terminal disclaimer in response to the double patenting rejection set forth above in paragraph 9, claims 1-20 of the instant application would be allowable.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art, alone or in combination, did not show or teach a rotating sprinkler, including the stator spaced upstream from the turbine to form a mixing region therebetween, with the stator comprising one or more diverters having a first opening disposed so as to change a direction of a primary flow path through the stator, the stator forming at least in part a second opening defining a bypass flow path through the stator, with the primary flow path being aligned relative to the plurality of blades so that water exiting the first opening traverses the mixing region and impinges on the plurality of blades, in combination with the valve configured to regulate flow between the primary flow path and the bypass flow path, wherein the first opening is upstream of at least a portion of the second opening when the valve is in an open position, as set forth in claim 1.
The prior art, alone or in combination, did not show or teach a rotating sprinkler, including the stator spaced upstream from the turbine, with the stator comprising one or more diverters having a first opening disposed so as to change a direction of a primary flow path through the stator, the stator forming at least in part a second opening defining a bypass flow path through the stator, with the primary flow path being aligned relative to the plurality of blades, in combination with the valve configured to regulate flow between the primary flow path and the bypass flow path, wherein the first opening is upstream of at least a portion of the second opening when the valve is in an open position, as set forth in claim 12.
The prior art, alone or in combination, did not show or teach a rotating sprinkler, including the stator spaced upstream from the turbine, with the stator comprising one or more diverters having a first opening disposed so as to change a direction of a primary flow path through the stator, the stator forming at least in part a second opening defining a bypass flow path through the stator, with flow from the primary flow path and the bypass flow path together impinging on the plurality of blades, in combination with the valve configured to regulate the flow between the primary flow path and the bypass flow path, wherein the first opening is upstream of at least a portion of the second opening when the valve is in an open position, as set forth in claim 17, as the claim scope is understood (see paragraph 7, above).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Patent to Luo and US Patent Application Publication to Bell are cited as of interest.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARREN W GORMAN whose telephone number is (571)272-4901. The examiner can normally be reached Monday-Thursday 6:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arthur Hall can be reached at (571)270-1814. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DARREN W GORMAN/Primary Examiner, Art Unit 3752
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