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 .
DETAILED ACTION
This is responsive to the claims filed 8/13/2025. Claims 1 – 20 are pending in this application.
Information Disclosure Statement
The information disclosure statements filed 8/13/2025, 10/10/2025, 2/18/2026 and 7/1/2026 are acknowledged by the examiner.
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.
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Claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 12 and 16 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 4, 5, 6, 7, 8, 1, 5 and 7 of U.S. Patent No. 12,117,094.
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the present application requires “an actuator stem causing the valve to move between an open position, a closed position, and one or more semi-open positions; a magnetic clutch, wherein the magnetic clutch includes an inner magnetic array and an outer magnetic array, wherein the inner magnetic array includes a plurality of constituent magnets or a plurality of distinct magnetic domains, surrounding a segment of the actuator stem; and a valve housing, defining a pressure vessel of the valve, encapsulating the actuator stem and the inner magnetic array, wherein the outer magnetic array surrounding a section of the valve housing; wherein actuation of the outer magnetic array applies torque to the inner magnetic array, thereby causing the actuator stem to actuate; wherein the magnetic clutch is configured to slip without breaking the actuator stem; wherein the magnetic clutch is configured to automatically reset and realign after slipping due to tight spacing of the plurality of constituent magnets or the plurality of distinct magnetic domains; and wherein the inner magnetic array includes at least as many magnetic domains as the outer magnetic array”, the reference patent claim 1 discloses “an actuator stem, rotation of which is configured to actuate the valve, causing the valve to move between an open position, a closed position, and one or more semi-open positions; a magnetic clutch, wherein the magnetic clutch includes an inner magnetic array and an outer magnetic array, wherein the inner magnetic array includes a plurality of constituent magnets or a plurality of distinct magnetic domains, surrounding a segment of the actuator stem; and a valve housing, defining a pressure vessel of the valve, encapsulating the actuator stem and the inner magnetic array, wherein the outer magnetic array surrounding a section of the valve housing; and a position indicator attached to an outside surface of the valve housing configured to detect a configuration of the valve; wherein the plurality of constituent magnets or the plurality of distinct magnetic domains in the inner magnetic array have alternating polarities; wherein actuation of the outer magnetic array applies torque to the inner magnetic array, thereby causing the actuator stem to rotate; wherein the magnetic clutch is configured to slip without breaking the actuator stem; wherein the magnetic clutch is configured to automatically reset and realign after slipping due to tight spacing of the plurality of constituent magnets of the plurality of distinct magnetic domains; and wherein the inner magnetic array includes at least as many magnetic domains as the outer magnetic array”.
Claims 2, 3, 4, 5, 6, 7, 8, 9, 12 and 16 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 3, 4, 5, 6, 7, 8, 1, 5 and 7 of U.S. Patent No. 12,117,094.
Allowable Subject Matter
Claims 17 – 20 are allowed.
Claims 10 – 11, 13 – 15 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:
Regarding claims 1, 9 and 17 Chinese Patent Document to Hu (CN 215487686) discloses an actuator stem (11, Fig. 4), rotation of which is configured to actuate the valve (21, Fig. 4), causing the valve to move between an open position, a closed position, and one or more semi-open positions; a magnetic clutch, wherein the magnetic clutch includes an inner magnetic array (32, Fig. 4) and an outer magnetic array (28, Fig. 4), wherein the inner magnetic array includes a plurality of constituent magnets or a plurality of distinct magnetic domains, surrounding a segment of the actuator stem; and a valve housing (4, Fig. 4), defining a pressure vessel of the valve, encapsulating the inner magnetic array, wherein the outer magnetic array surrounding a section of the valve housing.
Chinese Patent document to Hu does not render obvious in combination with other, the claim limitation “wherein the magnetic clutch is configured to slip without breaking the actuator stem; wherein the magnetic clutch is configured to automatically reset and realign after slipping due to tight spacing of the plurality of constituent magnets of the plurality of distinct magnetic domains”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to UMASHANKAR VENKATESAN whose telephone number is (571)270-5602. The examiner can normally be reached Monday - Friday 9:30 AM - 6:00 PM.
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/UMASHANKAR VENKATESAN/
Primary Examiner, Art Unit 3753
Prosecution Insights