DETAILED ACTION
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 § 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.
Claim 7 is 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.
Claim 7 recites the limitations "the first pressing member" and “the second pressing member” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. It appears this claim should depend from claim 4.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 7 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Tiberghien et al. (EP 2,818,781 A1 hereinafter “Tiberghien”).
In regards to claim 1, Tiberghien discloses a tube coupling configured to connect and couple two tubes for fluid flow, the tube coupling comprising:
a male connector (10, it is noted that end 104 is capable of insertion and thus is male);
a female connector (20, it is noted that end 204 can receive a pipe therein and thus is female); and
an outer seal member (225) configured to seal the male connector and the female connector,
wherein:
the male connector includes a first seal member (122) and a first outer peripheral member (102);
the female connector includes a second seal member (223) and a second outer peripheral member (210);
the second seal member is configured to contact the second outer peripheral member in a closed state such that a flow path in the tube coupling is closed (shown in fig. 3).;
the outer seal member is configured to contact the second outer peripheral member in the closed state (shown in fig. 3); and
the outer seal member is configured to contact the first outer peripheral member in an open state such that the flow path in the tube coupling is open (shown in fig. 5).
In regards to claim 7, Tiberghien further discloses the first pressing member and the second pressing member have respective outer diameters that taper from the first seal member to the second seal member (see tapered region between seals in fig. 3).
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 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,410,877 (reference patent). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 2, and 6 are generic to all that is recited in claims 1-8 of the reference patent. In other words, claims 1-8 of the reference patent fully encompasses the subject matter of claims 1, 2, and 6. Thus, the invention of claims 1-8 of the reference patent is in effect a “species” of the “generic” invention of claims 1, 2, and 6. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1, 2, and 6 are anticipated by claims 1-8 of the patent, claims 1, 2, and 6 are not patentably distinct from claims 1-8, regardless of any additional subject matter presented in claims 1-8. Claims 3-5 are rejected based on their dependency from claim 2.
Allowable Subject Matter
Claims 2-6 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, and if the double patenting rejection is overcome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY T DRAGICEVICH whose telephone number is (571)270-0505. The examiner can normally be reached Monday-Friday 8:00 - 4:30 EST.
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/ZACHARY T DRAGICEVICH/Primary Examiner, Art Unit 3679 02/18/2026