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, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, and 16, respectively, of U.S. Patent No. 12,644,551. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, and 16 of U.S. Patent No. 12,644,551 “anticipate” Application claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, and 16, respectively. Accordingly, Application claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, and 16 are not patentably distinct from Patent claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, and 16, respectively.
Here, Patent claim 1 requires:
A fluid connector comprising: a shell having a fluid channel and an accommodating hole; a ball valve accommodated in the shell and having a through hole; a pin member and a resilient member both arranged in the accommodating hole; a control element arranged outside the shell and cooperating with the pin member for controlling the ball valve to rotate between a closed position for obstructing the fluid channel and an open position for opening the fluid channel; and a restricting member for restricting a rotation operation of the control element; wherein the shell has an engagement hole, and the pin member has a guide structure at a front end thereof; the pin member is resiliently supported by the resilient member and extends out of the accommodating hole when the fluid connector is free of engagement to a matching connector for preventing the control element from rotating the ball valve; when the fluid connector abuts the matching connector and is rotated such that the pin member corresponds to an engagement hole of the matching connector, the pin member is pushed by the resilient member and extends into the engagement hole of the matching connector, and the rotation operation of the control element is able to drive the ball valve to rotate between the closed position and the open position; and when the pin member engages the engagement hole of the matching connector and the ball valve is in the closed position, the fluid connector is rotatable to move the pin member guided by the guide structure to separate from the engagement hole.
While Application claim 1 requires:
A fluid connector comprising: a shell having a fluid channel and an accommodating hole; a ball valve accommodated in the shell and having a through hole; a control element arranged outside the shell for controlling the ball valve to rotate between a closed position and an open position; and a pin member and a resilient member both arranged in the accommodating hole; wherein the shell has an engagement hole, and the pin member has a guide structure at a front end thereof; the pin member is resiliently supported by the resilient member and extending out of the accommodating hole when the fluid connector is free of engagement to a matching connector; when the fluid connector abuts the matching connector and is rotated such that the pin member corresponds to an engagement hole of the matching connector, the pin member is pushed by the resilient member and extends into the engagement hole of the matching connector, and the rotation operation of the control element is able to drive the ball valve to rotate between a closed position for obstructing the flow channel and an open position for opening the flow channel; and when the pin member engages the engagement hole of the matching connector and the ball valve is in the closed position, the fluid connector is rotatable to move the pin member guided by the guide structure to separate from the engagement hole.
Thus, it is apparent that the more specific Patent claim 1 encompasses Application claim 1. Following the rationale in In re Goodman cited in the above paragraph, where 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 Application claim 1 is anticipated by Patent claim 1 and since anticipation is the epitome of obviousness, then Application claim 1 is obvious over Patent claim 1.
Similarly, claims 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over Patent claims 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, and 16, respectively, for the same reason set forth above.
Claim Objections
Claim 11 is objected to because of the following informalities:
In line 13 of the claim the phrase “when the fluid connector abuts the matching connector and is rotated such that the pin member corresponds to an engagement hole of a matching connector” appears to be in error for - - when the fluid connector abuts a matching connector and is rotated such that the pin member corresponds to an engagement hole of the matching connector - -
Appropriate correction is required.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Reinaldo Sanchez-Medina, telephone number 571-270-5168, fax number 571-270-6168. The examiner can normally be reached on Monday-Friday (7:30AM-4:00PM EST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisors can be reached by phone. Craig Schneider can be reached at 571-272-3607 or Kenneth Rinehart can be reached at 571-272-4881. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/REINALDO SANCHEZ-MEDINA/Primary Examiner, Art Unit 3753
