DETAILED ACTION
Claims 1-15 are pending.
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 Objections
Claims 4 and 11 are objected to because of the following informalities:
In claim 4, last line, “the notch” should be changed to --said one of the notches--.
In claim 11, line 6, “the notch” should be changed to --said one of the notches--.
Appropriate correction is required.
Applicant is advised that should claims 8 and 9 be found allowable, claims 14 and 15 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof, respectively. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 2-3, 6, 9-10, and 13-15 are rejected (wherein claims 3 and 10 inherit their rejections due to their dependencies) 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.
Claim 2 recites the limitation "the inner wall" in line 2. There is insufficient antecedent basis for this limitation in the claim. As understood, this is the first recitation of the structure, so “the” should be changed to --an--.
Claim 2 recites the limitation "the first direction" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. As understood, this is the first recitation of the direction, so “the” should be changed to --a--.
Claim 6 recites the limitation "the top surface of the cover" in lines 3-4. There is insufficient antecedent basis for this limitation in the claim. As understood, this is the first recitation of the structure, so “the top surface” should be changed to --a top surface--.
Claim 9 recites the limitation "the inner wall" in line 2. There is insufficient antecedent basis for this limitation in the claim. As understood, this is the first recitation of the structure, so “the” should be changed to --an--.
Claim 9 recites the limitation "the first direction" in line 3. There is insufficient antecedent basis for this limitation in the claim. As understood, this is the first recitation of the direction, so “the” should be changed to --a--.
Claim 13 recites the limitation "the top surface of the cover" in lines 3-4. There is insufficient antecedent basis for this limitation in the claim. As understood, this is the first recitation of the structure, so “the top surface” should be changed to --a top surface--.
Claim 14 recites the limitation "the inner wall" in line 2. There is insufficient antecedent basis for this limitation in the claim. As understood, this is the first recitation of the structure, so “the” should be changed to --an--.
Claim 14 recites the limitation "the first direction" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. As understood, this is the first recitation of the direction, so “the” should be changed to --a--.
Claim 15 recites the limitation "the socket drive" in line 1. There is insufficient antecedent basis for this limitation in the claim. As understood, this is the first recitation of the structure, so “the” should be changed to --a--.
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 1-5, 7-12, and 14-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11,598,447. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim a valve-plug assembly comprising a valve comprising one or more notches and one or more circumferential grooves at least partially overlapping with said one or more respective notches, a plug comprising an inner wall, an outer wall from which one or more keys are disposed, said one or more keys sized and shaped to respectively fit within the one or more notches and respectively moved within the one or more circumferential grooves in a first direction as the plug is rotated to secure the plug to the valve, a tamper-evident pin configured to be inserted into a hole in the plug and one of the notches in the valve, wherein the tamper-evident pin is configured to break when pressed against a side wall of the notch by rotating the plug in a second direction, and a socket drive within the inner wall and comprising one or more relief so that a device can rotate the plug in a first direction, but the one or more reliefs prevent the device from rotating the plug in the second direction. ‘447 lacks claiming a cover having a substantially flat horizontal top surface; and at least one blade extending substantially perpendicular from the top surface of the cover, wherein when each of the keys in the plug is inserted into a corresponding notch in the valve, a space exists within each notch above the key and the at least one blade is sized and shaped to fit in the space within each notch above the key.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 12,359,744. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim a valve-plug assembly comprising a valve comprising one or more notches and one or more circumferential grooves at least partially overlapping with said one or more respective notches, a plug comprising an inner wall, an outer wall from which one or more keys are disposed, said one or more keys sized and shaped to respectively fit within the one or more notches and respectively moved within the one or more circumferential grooves in a first direction as the plug is rotated to secure the plug to the valve, a tamper-evident pin configured to be inserted into a hole in the plug and one of the notches in the valve, wherein the tamper-evident pin is configured to break when pressed against a side wall of the notch by rotating the plug in a second direction, a socket drive within the inner wall and comprising one or more relief so that a device can rotate the plug in a first direction, but the one or more reliefs prevent the device from rotating the plug in the second direction, and a cover having a substantially flat horizontal top surface; and at least one blade extending substantially perpendicular from the top surface of the cover, wherein when each of the keys in the plug is inserted into a corresponding notch in the valve, a space exists within each notch above the key and the at least one blade is sized and shaped to fit in the space within each notch above the key.
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.
Claims 1-2, 7-9, and 14-15 (as understood: 2, 9, and 14-15) are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wakefield (US 1,788,786).
Regarding claim 1, Wakefield discloses in Figs. 1-10 a plug 38 for a valve (comprising the contiguous housing portions 2, 3, 6, 11, 13, 66 containing valves therein comprising valves 20, 46), the plug 68 comprising: an outer wall (from which pins 77 extend); and one or more keys 77 disposed on an external surface of the outer wall; wherein said keys 77 are sized and shaped to respectively fit within one or more corresponding notches (comprising the vertical portions of “L-slots 76” that open to the top of the element 66) and one or more circumferential grooves (comprising the horizontal portions of “L-slots 76”) in the valve to secure the plug 68 to the valve.
Regarding claim 2, Wakefield discloses in Figs. 1-10 that the plug 68 further comprises a socket drive 75 disposed within the inner wall and configured to receive a device to rotate the plug 38 within the valve in the first direction.
Regarding claim 7, Wakefield discloses in Figs. 1-10 a valve-plug assembly comprising:
a valve (comprising the contiguous housing portions 2, 3, 6, 11, 13, 66 containing valves therein comprising valves 20, 46) comprising a valve body (comprising contiguous housing portions 2, 3, 6, 11, 13, 66) configured to be inserted into a well opening of a container 1, 4, an upper edge (with projections 69) having one or more notches, and one or more circumferential grooves at least partially overlapping with said one or more respective notches; and
a plug 68 comprising an outer wall (from which pins 77 extend) and one or more keys 77 disposed on an external surface of the outer wall;
wherein the one or more keys 77 are sized and shaped to respectively fit within one or more corresponding notches (comprising the vertical portions of “L-slots 76” that opens to the top of the element 66) and the one or more circumferential grooves (comprising the horizontal portions of the “L-slots 78” in the valve) to secure the plug 68 to the valve;
Regarding claims 8 and 14, Wakefield discloses in Figs. 1-10 that the valve further comprises a threaded portion 3 configured to engage a threaded portion 4 of the well opening of the container 1, 4.
Regarding claims 9 and 15, Wakefield discloses in Figs. 1-10 that the plug 68 further comprises a socket drive 75 disposed within the inner wall and configured to receive a device to rotate the plug 38 within the valve in the first direction.
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.
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 3 and 10 (as understood: both) are rejected under 35 U.S.C. 103 as being unpatentable over Wakefield in view of Sudo et al. (US 5,765,980).
Regarding claims 3 and 10, Wakefield discloses a socket drive 75, as previously discussed, but lacks teaching that the socket drive comprises one or more reliefs configured to prevent the device from rotating the plug within the valve in a second direction.
Sudo teaches in Figs. 6-8 a socket drive 11 disposed within the inner wall of a fastener and configured to receive a device to rotate the lid fastener a first direction, wherein the socket drive 11 comprises one or more reliefs 14 configured to prevent the device from rotating the fastener in a second direction (col. 7, lines 23-45).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the socket drive disclosed in Wakefield to be formed within a centralized inner wall of the plug and comprise one or more reliefs to prevent the device from rotating the plug in a second direction so that the plug can only be loosened by a special tool, as Sudo teaches (col. 7, lines 44-45). In other words, the plug is more resistant to tampering by unauthorized people.
Allowable Subject Matter
Claims 4-5 and 11-12 would be allowable if the double patenting rejection(s) were overcome by amendments or filing of the proper terminal disclaimer and to include all of the limitations of the base claim and any intervening claims.
Claims 6 and 13 would be allowable if the double patenting rejection(s) were overcome by amendments or filing of the proper terminal disclaimer and if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include 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. The prior art fails to disclose or render obvious, in combination with the other limitations recited:
regarding claims 4 and 11, a tamper-evident pin configured to be inserted into the hole and said one of the notches in the valve, and the tamper-evident pin is configured to break when pressed against a side wall of the notch by rotating the plug in a second direction; and
regarding claims 6 and 13, a cover having a substantially flat horizontal top surface; and at least one blade extending substantially perpendicular from the top surface of the cover, wherein when each of the keys in the plug is inserted into a corresponding notch in the valve, a space exists within each notch above the key and the at least one blade is sized and shaped to fit in the space within each notch above the key.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Examiner Jonathan Waddy, whose telephone number is 571-270-3146. The examiner can normally be reached on Monday-Friday (10:00AM-6:00PM EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisors can be reached by phone. Kenneth Rinehart can be reached at 571-272-4881 or Craig Schneider can be reached at 571-272-3607. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J. W./
Examiner, Art Unit 3753
/KENNETH RINEHART/Supervisory Patent Examiner, Art Unit 3753
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