DETAILED ACTION
Status of Submission
The preliminary amendment filed on March 5, 2026 has been entered.
Claims Subject to Examination
Patent claims 1-19 (of which claim 12 is amended) and new reissue claim 20 are subject to examination.
Claim Construction
During examination, the pending claims are normally interpreted according to the broadest reasonable interpretation standard (hereinafter, the “BRI standard”). That is, claims are given their broadest reasonable interpretation consistent with the specification, and limitations in the specification are not read into the claims. See MPEP 2111 et seq.
An exception to the BRI standard occurs when the applicant acts as their own lexicographer. For this exception to apply, the applicant must clearly set forth a special definition of a claim term in the specification that differs from the plain and ordinary meaning it would otherwise possess. See MPEP 2111.01, subsection IV.
Another exception or special case occurs when a claim recites a means-plus-function limitation that must be interpreted in accordance with 35 USC 112 ¶ 6, or 35 USC 112(f). See MPEP 2181. According to the guidance provided by Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc), 35 USC 112 ¶ 6 applies when the claim term fails to recite (i) sufficiently definite structure, and/or (ii) sufficient structure for performing the claimed function.
The current claim limitations are construed under the BRI standard. No explicit claim construction is deemed to be necessary.
Objection to Amendments – Formalities
The claim amendments filed on March 5, 2026 are objected to as failing to comply with 37 CFR 1.173(b)(2), (d) and (g) because:
In claim 12, line 8 includes an improper underline between the words “first” and “cold”.
In claim 12, between lines 14 and 15, the claim limitation “at least one first aperture extending into the first body portion; and” has been omitted improperly. If applicant intends to omit this limitation, then the text must be presented and enclosed in single brackets.
In claim 12, at line 18, “recess; and” should read “recess;” in order to properly reflect the patent claim.
In claim 12, at line 20, “recess.” should read “recess; and” in order to properly reflect the patent claim.
In claim 12, following line 20, the following claim limitations have been omitted improperly. If applicant intends to omit these limitations, then the text must be presented and enclosed in single brackets.
“at least one second aperture extending into the second body portion;”
“wherein the at least one first aperture aligns with the at least one second aperture to couple the first body portion with the second body portion via at least one fastener to form the housing.”
Applicant must place the claims into compliance with 37 CFR 1.173(b)(2), (d) and (g) in response to this Office action.
Original Disclosure – Definition
The instant application seeks reissue of US Patent No. 11,920,691 B2, which issued from US Application No. 17/373,141, which was designated on filing as a continuation of US Application No. 16/413,443 (now US Patent No. 11,060,628 B2), which claimed priority to Provisional Application No. 62/672,218.
Assuming applicant retains the designation of Application No. 17/373,141 as a continuation of Application No. 16/413,443, the “original disclosure” is the disclosure of Application No. 16/413,443 as filed on May 15, 2019. Any subject matter added to the disclosure during any of the prosecution of the instant reissue application, the earlier-concluded prosecution of Application No. 17/373,141, or the earlier-concluded prosecution of Application No. 16/413,443 does not constitute part of the “original disclosure”.
Prohibition of New Matter
35 USC 132(a) prohibits any amendment that introduces new matter into the disclosure of the invention.
35 USC 251(a) prohibits the introduction of new matter into the application for reissue.
Objection to Amendments – New Matter
During the earlier-concluded prosecution of Application No. 17/373,141, patent claim 1 was presented and subsequently amended to recite “a first check valve coupled to the housing and configured to prevent or substantially prevent fluid from flowing from the first mixing valve to the first fluid inlet chamber” (ll. 15-16). The original disclosure fails to provide support for the “or substantially prevent” portion of this claim limitation. Thus, the “or substantially prevent” portion of this claim limitation constitutes new matter that was improperly added to the disclosure during the earlier-concluded prosecution of Application No. 17/373,141.
During the earlier-concluded prosecution of Application No. 17/373,141, patent claim 1 was presented and subsequently amended to recite “a second check valve coupled to the housing and configured to prevent or substantially prevent fluid from flowing from the second mixing valve to the first fluid inlet chamber through the second connecting passage” (ll. 15-16). The original disclosure fails to provide support for the “or substantially prevent” portion of this claim limitation. Thus, the “or substantially prevent” portion of this claim limitation constitutes new matter that was improperly added to the disclosure during the earlier-concluded prosecution of Application No. 17/373,141.
During the earlier-concluded prosecution of Application No. 17/373,141, patent claim 2 was presented and subsequently amended to recite “the first check valve is positioned within or near the first connecting passage”. The original disclosure fails to provide support for the “or near” portion of this claim limitation. Thus, the “or near” portion of this claim limitation constitutes new matter that was improperly added to the disclosure during the earlier-concluded prosecution of Application No. 17/373,141.
During the earlier-concluded prosecution of Application No. 17/373,141, patent claim 3 was presented and subsequently amended to recite “the first check valve is configured to prevent or substantially prevent fluid from flowing from the first mixing valve through the first fluid passage to the second mixing valve”. The original disclosure fails to provide support for the “or substantially prevent” portion of this claim limitation. Thus, the “or substantially prevent” portion of this claim limitation constitutes new matter that was improperly added to the disclosure during the earlier-concluded prosecution of Application No. 17/373,141.
During the earlier-concluded prosecution of Application No. 17/373,141, patent claim 4 was presented and subsequently amended to recite “the second check valve is positioned to prevent or substantially prevent fluid from flowing from the second mixing valve through the second connecting passage to the first mixing valve”. The original disclosure fails to provide support for the “or substantially prevent” portion of this claim limitation. Thus, the “or substantially prevent” portion of this claim limitation constitutes new matter that was improperly added to the disclosure during the earlier-concluded prosecution of Application No. 17/373,141.
During the earlier-concluded prosecution of Application No. 17/373,141, patent claim 12 was presented and subsequently amended to recite “a gap extending between the first hot fluid passage and the first cold fluid passage, wherein the gap permits air from the surrounding atmosphere to pass between the first cold fluid passage and the first hot fluid passage” (omitted from ll. 10-12 of claim 12; recited in new claim 20). The original disclosure fails to provide support for the “extending between the first hot fluid passage and the first cold fluid passage” and “pass between the first cold fluid passage and the first hot fluid passage” portions of these claim limitations. Thus, the “extending between the first hot fluid passage and the first cold fluid passage” and “pass between the first cold fluid passage and the first hot fluid passage” portions of these claim limitations constitute new matter that was improperly added to the disclosure during the earlier-concluded prosecution of Application No. 17/373,141.
During the earlier-concluded prosecution of Application No. 17/373,141, patent claim 12 was presented and subsequently amended to recite “at least one first aperture extending into the first body portion” (omitted from claim 12 between ll. 14-15). The original disclosure fails to provide support for the “extending into” portion of this claim limitation. Thus, the “extending into” portion of this claim limitation constitutes new matter that was improperly added to the disclosure during the earlier-concluded prosecution of Application No. 17/373,141.
During the earlier-concluded prosecution of Application No. 17/373,141, patent claim 12 was presented and subsequently amended to recite “a second portion of the second hot fluid passage fluidly coupling the hot fluid inlet to the second valve recess” (ll. 17-18). The original disclosure fails to provide support for the “fluidly coupling the hot fluid inlet to the second valve recess” portion of this claim limitation. Thus, the “fluidly coupling the hot fluid inlet to the second valve recess” portion of this claim limitation constitutes new matter that was improperly added to the disclosure during the earlier-concluded prosecution of Application No. 17/373,141.
During the earlier-concluded prosecution of Application No. 17/373,141, patent claim 12 was presented and subsequently amended to recite “a second portion of the second cold fluid passage fluidly coupling the cold fluid inlet to the second valve recess” (ll. 19-20). The original disclosure fails to provide support for the “fluidly coupling the cold fluid inlet to the second valve recess” portion of this claim limitation. Thus, the “fluidly coupling the cold fluid inlet to the second valve recess” portion of this claim limitation constitutes new matter that was improperly added to the disclosure during the earlier-concluded prosecution of Application No. 17/373,141.
During the earlier-concluded prosecution of Application No. 17/373,141, patent claim 12 was presented and subsequently amended to recite “at least one second aperture extending into the second body portion” (omitted from claim 12 following l. 20). The original disclosure fails to provide support for the “extending into” portion of this claim limitation. Thus, the “extending into” portion of this claim limitation constitutes new matter that was improperly added to the disclosure during the earlier-concluded prosecution of Application No. 17/373,141.
During the earlier-concluded prosecution of Application No. 17/373,141, patent claim 12 was presented and subsequently amended to recite “the at least one first aperture aligns with the at least one second aperture to couple the first body portion with the second body portion via at least one fastener to form the housing” (omitted from claim 12 following l. 20). The original disclosure fails to provide support for the “the at least one…aligns with the at least one…via at least one fastener” portion of this claim limitation. Thus, the “the at least one…aligns with the at least one…via at least one fastener” portion of this claim limitation constitutes new matter that was improperly added to the disclosure during the earlier-concluded prosecution of Application No. 17/373,141.1
During the earlier-concluded prosecution of Application No. 17/373,141, patent claim 13 was presented and subsequently amended to recite “the first body portion further defines a hot fluid outlet fluidly coupled to the second hot fluid passage and configured to be fluidly coupled to a second mixing valve”. The original disclosure fails to provide support for at least the “hot fluid outlet…configured to be fluidly coupled to a second mixing valve” portion of this claim limitation. Thus, at least the “hot fluid outlet…configured to be fluidly coupled to a second mixing valve” portion of this claim limitation constitutes new matter that was improperly added to the disclosure during the earlier-concluded prosecution of Application No. 17/373,141.
During the earlier-concluded prosecution of Application No. 17/373,141, patent claim 14 was presented and subsequently amended to recite “the first body portion further defines a cold fluid outlet fluidly coupled to the second cold fluid passage and configured to be fluidly coupled to the second mixing valve.”. The original disclosure fails to provide support for at least the “cold fluid outlet…configured to be fluidly coupled to a second mixing valve” portion of this claim limitation. Thus, at least the “cold fluid outlet…configured to be fluidly coupled to a second mixing valve” portion of this claim limitation constitutes new matter that was improperly added to the disclosure during the earlier-concluded prosecution of Application No. 17/373,141.
During the earlier-concluded prosecution of Application No. 17/373,141, the following additional amendments/changes made to the original disclosure:
The abstract was changed to recite the “substantially prevent” limitation addressed above.
The specification was changed to recite the “or substantially prevent” limitation addressed above. See col. 2, l. 2 of the patent.
The specification was changed to recite the “gap extending between the hot fluid passage and the cold fluid passage” limitation addressed above. See col. 2, ll. 12-13 of the patent.
The specification was changed to recite the “air from the surrounding atmosphere pass between the first cold fluid passage and the first hot fluid passage” limitation addressed above. See col. 2, ll. 14-15 of the patent.
For these reasons, the amendments/changes made to the original disclosure during the earlier-concluded prosecution of Application No. 17/373,141 improperly introduced new matter. Applicant is required to cancel the new matter in response to this Office action.
As addressed further below, this reissue application could be used to correct applicant’s priority claim by newly designating Application No. 17/373,141 as a continuation-in-part of Application No. 16/413,443. If such a correction to the priority claim is properly made:
It will not be necessary to cancel the new matter recited in patent claims 1-4 since this subject matter was present in Application No. 17/373,141 on the date that application was filed.
It will still be necessary to cancel the new matter recited in patent claims 12-14 (with the possible exception of the “gap” limitations) since this subject matter was added to Application No. 17/373,141 after its date of filing.
Defective Priority Claim
As explained in MPEP 201.07, the disclosure presented in a continuation application must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application. As explained above, applicant priority claim is defective because Application No. 17/373,141 was improperly designated as a continuation of Application No. 16/413,443.
Applicant is required to correct the priority claim by either:
Canceling all new matter that was added to the original disclosure during the earlier-concluded prosecution of Application No. 17/373,141, thereby making Application No. 17/373,141 (now Patent No. 11,920,691 B2) a proper continuation of Application No. 16/413,443; or
Newly designating Application No. 17/373,141 as a continuation-in-part of Application No. 16/413,443 while canceling new matter improperly added to Application No. 17/373,141 after its filing date.
As explained in MPEP 1402, correction of failure to adequately claim a benefit under 35 U.S.C. 120 is a proper ground for reissue. For applications filed under 35 U.S.C. 111(a), a priority claim under 37 CFR 1.78 and 35 USC 120 (i.e., the required reference to the prior application to which priority is claimed) must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application. See 37 CFR 1.78(d)(3)(ii) and MPEP 211.03. If adding a new benefit claim in a reissue application, the reissue applicant must file a petition for an unintentionally delayed priority claim under 37 CFR 1.78(e). See MPEP 211.04.
Accordingly, the Office will not grant a request for a corrected filing receipt (based on a correction of applicant’s priority claim) in the present application unless the priority claim under 37 CFR 1.78 and 35 USC 120 (i.e., the required reference to the prior application) is submitted within the time period required by 37 CFR 1.78, or a grantable petition to accept an unintentionally delayed priority claim is filed. For further explanation, see MPEP 211.02(a), 211.03 and 211.04.
Establishing Right to Take Action
This application is objected to under 37 CFR 1.172(a) as the assignee has not established its ownership interest in the patent for which reissue is being requested.
The Statement under 37 CFR 3.73(c), i.e., Form PTO/AIA /96, filed on March 5, 2026 is defective because it fails to properly identify a chain of title from the inventors to the current assignee. The current assignee is identified as Bradley Fixtures, LLC, and the form indicates that the title was transferred from Bradley Fixtures Corporation to Bradley Fixtures, LLC. However, the Statement under 37 CFR 3.73(c) fails to identify the Reel and Frame numbers for this change of title, and a copy of a proper USPTO assignment document was not attached to the statement.2 According to current USPTO assignment records, Bradley Fixtures, LLC has not been recorded as the current assignee of US Patent No. 11,920,691 B2. Thus, the assignee has failed to properly establish its right to take action.
An appropriate paper satisfying the requirements of 37 CFR 3.73 must be submitted in reply to this Office action.
Consent of Assignee
This application is objected to under 37 CFR 1.172(a) as lacking a proper written consent of all assignees owning an undivided interest in the patent. See MPEP 1410.01.
The Reissue Application: Consent of Assignee, i.e., Form PTO/AIA /53, filed on March 5, 2026 is defective because it identifies the Name of Patentee(s) as Bradley Fixtures, LLC. As explained above, Bradley Fixtures, LLC has not been recorded as the current assignee of US Patent No. 11,920,691 B2, and Bradley Fixtures, LLC has not established its right to act.
A proper written consent of the assignee in compliance with 37 CFR 1.172 and 3.73 is required in reply to this Office action.
Reissue Oath/Declaration
OBJECTION 1: The Reissue Application Declaration By The Assignee (Form PTO/AIA /06) filed on March 5, 2026 is defective because it identifies the name of the assignee as Bradley Fixtures, LLC and, thus, was executed on behalf of Bradley Fixtures, LLC. According to current USPTO assignment records, Bradley Fixtures, LLC has not been recorded as the assignee of US Patent No. 11,920,691 B2. As explained above, Bradley Fixtures, LLC has not established its right to act.
OBJECTION 2: The Reissue Application Declaration By The Assignee (Form PTO/AIA /06) filed on March 5, 2026 is defective because it was submitted with two different versions of the first page of Form PTO/AIA /06, with different persons identified as the first-named inventor. While the box was checked stating that additional inventors are named on separately numbered sheets attached hereto, applicant failed to include a proper supplemental sheet identifying the inventor information for the second-named inventor.
OBJECTION 3: The Reissue Application Declaration By The Assignee (Form PTO/AIA /06) filed on March 5, 2026 is defective because it fails to properly and specifically identify at least one error which can be relied upon to support the reissue application. See 37 CFR 1.175 and MPEP 1414-1414.01.
As required by 37 CFR 1.175(a), the reissue oath/declaration must specifically identify at least one error pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue. In identifying the error, it is sufficient that the reissue oath/declaration identify a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid. It is not sufficient to merely state that applicant seeks to broaden or narrow the scope of a patent claim. Further, a statement in the reissue oath/ declaration of “…failure to include a claim directed to…” and then reciting all the limitations of a newly added claim would not be considered a sufficient error statement because applicant has not pointed out what the other claims lacked that the newly added claim has, or vice versa.
In the present case, the declaration’s error statement reads as follows:
Claim 12 includes a limitation regarding a gap extending between the first hot fluid passage and the second hot fluid passage that was not relied upon for patentability.
As explained below, the “gap” limitation of claim 12 constitutes a surrender-generating limitation. Since omission of the “gap” limitation from claim 12 constitutes impermissible recapture, omission of such limitation cannot serve as a proper basis for reissue. Thus, the error statement fails to properly identify an error which can be relied upon to support this reissue application.
Claim Rejections - 35 USC § 251
The following is a quotation of 35 U.S.C. 251:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
(b) MULTIPLE REISSUED PATENTS.— The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
(c) APPLICABILITY OF THIS TITLE.— The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS.—No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
GROUND 1: Claims 1-20 are rejected under 35 U.S.C. 251 as being based upon a defective reissue oath/declaration. See 37 CFR 1.175. See the explanation above.
GROUND 2: New reissue claim 20 is rejected under 35 U.S.C. 251 because it introduces new matter into the application for reissue. The new matter recited in the claim is explained in detail above.
GROUND 3: Claims 12-15 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the earlier-concluded reexamination proceeding.
During the earlier-concluded prosecution of Application No. 17/373,141 (which issued as US Patent No. 11,920,691 B2), applicant responded to the previous examiner’s prior art rejections by:3
Amending claim 13 (later renumbered as patent claim 12) to recite a number of additional limitations, including (i) a housing comprising a first body portion coupled with a second body portion, (ii) the first body portion defining a first portion of a second hot fluid passage, a first portion of a second cold fluid passage, and at least one first aperture extending into the first body portion, (iii) the second body portion defining a second valve recess, a second portion of the second hot fluid passage fluidly coupling the hot fluid inlet to the second valve recess, a second portion of the second cold fluid passage fluidly coupling the cold fluid inlet to the second valve recess, and at least one second aperture extending into the second body portion, and (iv) the at least one first aperture aligns with the at least one second aperture to couple the first body portion with the second body portion via at least one fastener to form the housing.
Arguing that the prior art relied upon by the previous examiner fails to teach (i) a housing comprising a first body portion and a second body portion, (ii) the first body portion defining a first valve recess…and at least one first aperture extending into the first body portion, (iii) the second body portion defining a second valve recess…and at least one second aperture extending into the second body portion, and (iv) the at least one first aperture aligns with the at least one second aperture to couple the first body portion with the second body portion via at least one fastener to form the housing.
Arguing that the prior art relied upon by the previous examiner fails to teach (i) a housing comprising a first body portion coupled with a second body portion, and (ii) the first body portion defining a first valve recess…a hot fluid inlet…a cold fluid inlet…a first hot fluid passage…a first cold fluid passage…a gap extending between the first hot fluid passage and the first cold fluid passage…a first portion of a second hot fluid passage, and a first portion of a second cold fluid passage.
Further arguing that the prior art relied upon by the previous examiner fails to teach a first body portion defining a first portion of a second hot fluid passage, a first portion of a second cold fluid passage, and a gap extending between the first hot fluid passage and the first cold fluid passage.
Thus, the “gap” limitation of patent claim 12 constitutes one of several surrender-generating limitations, i.e., limitations that were added to the patent claims and/or argued by the applicant to secure allowance. Complete omission of the “gap” surrender-generating limitation from reissue claim 12 (and claims 13-15 depending therefrom) constitutes impermissible recapture. Reissue claims 12-15 do not retain this surrender-generating limitation in broadened yet patentable form.
Reissue claims 12-15 do not avoid recapture based on overlooked aspects because they are not directed to a separate invention/embodiment/species that was never presented in the original application. Rather, claims 12-15 are directed to a valve assembly (i.e., the embodiment of Figs. 18-27) that was covered by (i) at least some of the claims as originally filed in Application No. 17/373,141, and (ii) the claims as issued in US Patent No. 11,920,691 B2.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
GROUND 4: Claims 1-15 and 20 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement because these claims recite new matter. See the explanation above. Dependent claims are included at least because of their dependencies.
GROUND 5: Claim 2 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
The written description requirement serves both to satisfy applicant’s obligation to disclose the technologic knowledge upon which the patent is based, and to demonstrate that the inventor(s) was in possession of the invention that is claimed. It is not enough that a skilled artisan could theoretically construct his/her own version of the claimed invention. Rather, applicant bears the burden of setting forth sufficient information to show that the inventor had possession of the claimed invention. Thus, the written description requirement requires applicant to go beyond a discussion of mere concepts and suggestions. It is not sufficient to merely outline desired results that the claimed invention is expected to achieve. Rather, the specification must explain how the invention is structured and how it functions in order to achieve the desired results. While subject matter that is conventional or well known in the art need not be described in detail, the specification must provide a complete description of each of the essential features recited in the claims which cause the claimed invention to achieve the desired results.
Claim 2 recites “the first check valve is positioned within or near the first connecting passage”. The embodiment of Figs. 18-27 is disclosed as having a first check valve positioned within the first connecting passage. However, the specification fails to describe any embodiment in which a first check valve is positioned “near” (i.e., adjacent to but not within) the first connecting passage. The specification fails to explain how such an embodiment would be structured, or how such an embodiment would function. Absent a complete description of essential features, applicant’s disclosure fails to establish applicant’s possession of the claimed invention.
Claim Rejections - 35 USC § 112(b)
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.
GROUND 6: Claims 6, 10, 11-15 and 20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 6 recites “the housing defines a gap extending therethrough, wherein the gap extends between the first fluid inlet chamber and the second fluid passage”. This claimed subject matter fails to accurately define the invention, as disclosed by applicant, because the void (gap) 372 does not extend between the fluid inlet chamber 410 and the fluid passage 362. Rather, the void (gap) 372 extends between a portion of the first body 302 that defines the fluid inlet chamber 410 and portions of the first and second bodies 302, 303 that define the fluid passage 362.4 Likewise, the void (gap) 372 does not extend between the fluid inlet chamber 420 and the fluid passage 360. Rather, the void (gap) 372 extends between a portion of the first body 302 that defines the fluid inlet chamber 420 and portions of the first and second bodies 302, 303 that define the fluid passage 360.
Claim 10 recites “only one first fluid inlet” (ll. 1-2) and “only one second fluid inlet” (l. 2). It is unclear how the fluid inlets of claim 10 relate to the fluid inlets previously introduced in claim 1. Is the first fluid inlet of claim 10 the same inlet as the first fluid inlet of claim 1, or are they different fluid inlets? Is the second fluid inlet of claim 10 the same inlet as the second fluid inlet of claim 1, or are they different fluid inlets?
Claim 11 recites “the gap extends directly between the first fluid passage and the second fluid passage”. This claimed subject matter fails to accurately define the invention, as disclosed by applicant, because the void (gap) 372 does not extend directly between the fluid passage 360 and the fluid passage 362. Rather, the void (gap) 372 extends between portions of the first and second bodies 302, 303 that define the fluid passage 360 and portions of the first and second bodies 302, 303 that define the fluid passage 362.5 Further, the void (gap) 372 does not extend “directly” between the passages 360, 362 since it is not in direct communication with the passages 360, 362.
Claim 12 recites “a second portion of the second hot fluid passage fluidly coupling the hot fluid inlet to the second valve recess” (ll. 17-18). This claimed subject matter fails to accurately define the invention, as disclosed by applicant, because the second portion of the second hot fluid passage (alone) is not capable of fluidly coupling the hot fluid inlet to the second valve recess. Rather, the first and second portions of the second hot fluid passage function together to fluidly couple the hot fluid inlet to the second valve recess.
Claim 12 recites “a second portion of the second cold fluid passage fluidly coupling the cold fluid inlet to the second valve recess” (ll. 19-20). This claimed subject matter fails to accurately define the invention, as disclosed by applicant, because the second portion of the second cold fluid passage (alone) is not capable of fluidly coupling the cold fluid inlet to the second valve recess. Rather, the first and second portions of the second cold fluid passage function together to fluidly couple the cold fluid inlet to the second valve recess.
Claim 13 recites “the first body portion further defines a hot fluid outlet fluidly coupled to the second hot fluid passage and configured to be fluidly coupled to a second mixing valve”. This claimed subject matter fails to accurately define the invention, as disclosed by applicant, because the first body portion is not described as having a hot fluid outlet that is configured to be fluidly coupled to the second mixing valve. Further, since the second mixing valve is in the second body portion, it is not accurate to characterize the first body portion as having a hot fluid outlet that is configured to be fluidly coupled to a second mixing valve.
Claim 14 recites “the first body portion further defines a cold fluid outlet fluidly coupled to the second cold fluid passage and configured to be fluidly coupled to the second mixing valve.” This claimed subject matter fails to accurately define the invention, as disclosed by applicant, because the first body portion is not described as having a cold fluid outlet that is configured to be fluidly coupled to the second mixing valve. Further, since the second mixing valve is in the second body portion, it is not accurate to characterize the first body portion as having a cold fluid outlet that is configured to be fluidly coupled to a second mixing valve.
Claim 20 recites “a gap extending between the first hot fluid passage and the first cold fluid passage”. This claimed subject matter fails to accurately define the invention, as disclosed by applicant, because the void (gap) 372 does not extend between the fluid passage 360 and the fluid passage 362. Rather, the void (gap) 372 extends between portions of the first and second bodies 302, 303 that define the fluid passage 360 and portions of the first and second bodies 302, 303 that define the fluid passage 362.6
Claim 20 recites “the gap permits air from the surrounding atmosphere to pass between the first cold fluid passage and the first hot fluid passage”. This claimed subject matter fails to accurately define the invention, as disclosed by applicant, because the void (gap) 372 does not permit air from the surrounding atmosphere to pass between the fluid passage 360 and the fluid passage 362. Rather, the void (gap) 372 extends between portions of the first and second bodies 302, 303 that define the fluid passage 360 and portions of the first and second bodies 302, 303 that define the fluid passage 362. Such portions of the first and second bodies 302, 302 create a physical barrier between air from the surrounding atmosphere and the passages 360, 362. Thus, surrounding air cannot “pass between” the passages 360, 362.
Claim 15 is included because of its dependency.
Listing of Prior Art
The following is a listing of the prior art cited in this Office action together with the shorthand reference used for each document (listed alphabetically):
“Kline et al.”
US Patent No. 5,647,531
“Ravedati”
US Publication No. 2007/0289647 A1
“Swanson”
US Patent No. 4,290,450
“Taylor et al.”
US Patent No. 6,929,188 B2
“Yang”
US Patent No. 7,344,088 B2
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.
GROUND 7: Claims 16-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kline et al.
Kline et al. discloses a valve assembly, comprising:
A first mixing valve 50 (e.g., the left valve 50 in Fig. 2) having a first length extending along a first longitudinal axis, and a second mixing valve 50 (e.g., the right valve 50 in Fig. 2) having a second length extending along a second longitudinal axis different from the first longitudinal axis. See Figs. 2 and 7; col. 6, l. 30 to col. 7, l. 5.
A housing 31 configured to receive the first and second mixing valves 50, the housing 31 defining: a first (hot) fluid inlet 32; a second (cold) fluid inlet 33; a first fluid passage 45 fluidly coupling the first (hot) fluid inlet 32 to both of the mixing valves 50; and a second fluid passage 46 fluidly coupling the second (cold) fluid inlet 33 to both of the mixing valves 50. See Figs. 2 and 7; col. 5, l. 53 to col. 6, l. 48.
With respect to claims 17 and 18, Fig. 2 shows that the first longitudinal axis is parallel with and offset from the second longitudinal axis.
With respect to claim 19, Fig. 2 shows that a first portion of the first mixing valve 50 and a second portion of the second mixing valve 50 extend away from the housing 31 in the same direction.
Claim Rejections – 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).
GROUND 8: Claims 1, 2 and 5-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-9 of US Patent No. 11,060,628 B2 in view of Kline et al.
Claims 1, 2 and 5-11 of the instant application recite a broader version of the valve assembly recited in claims 1 and 3-9 of US Patent No. 11,060,628 B2. While claims 1, 2 and 5-11 of the instant application omit some of the limitations of the valve assembly recited in claims 1 and 3-9 of US Patent No. 11,060,628 B2, the omission of one or more limitations with the consequent loss of their function is recognized to be within the level of ordinary skill in the art.
While claims 1, 2 and 5-11 of the instant application use the broader terms “first” and “second” in place of the narrower terms “hot” and “cold” recited in claims 1 and 3-9 of US Patent No. 11,060,628 B2, such a broadening of the claims scope is recognized to be within the level of ordinary skill in the art. Further, Kline et al. teaches first and second mixing valves, first and second inlets, and first and second fluid passages.
While claim 1 of the instant application recites the broader limitation “prevent or substantially prevent” in place of the narrower limitation “prevent” recited in claim 1 of US Patent No. 11,060,628 B2, such a broadening of the claims scope is recognized to be within the level of ordinary skill in the art.
While claim 1 of the instant application adds the limitation “through the second connecting passage” to the limitation concerning the function of the second check valve, such an addition does not constitute a patentable distinct since claim 1 of US Patent No. 11,060,628 B2 requires that (i) the second connecting passage fluidly couples the hot (or first) fluid inlet chamber to the second mixing valve, and (ii) the second check valve is configured to prevent fluid from flowing from the second mixing valve to the hot (or first) fluid inlet chamber. Since the second connecting passage is required to fluidly couple the first fluid inlet chamber to the second mixing valve, and since the second check valve functions to prevent fluid from flowing from the second mixing valve to the first fluid inlet chamber, the skilled artisan would have found it obvious to rely upon the second check valve to prevent fluid from flowing from the second mixing valve to the first fluid inlet chamber through the second connecting passage.
For at least these reasons, claims 1, 2 and 5-11 of the instant application are not patentably distinct from claims 1 and 3-9 of US Patent No. 11,060,628 B2.
GROUND 9: Claims 16-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11 and 12 of US Patent No. 11,060,628 B2 in view of Kline et al.
Claims 16-19 of the instant application recite a broader version of the valve assembly recited in claims 11 and 12 of US Patent No. 11,060,628 B2. While claims 16-19 of the instant application omit some of the limitations of the valve assembly recited in claims 11 and 12 of US Patent No. 11,060,628 B2, the omission of one or more limitations with the consequent loss of their function is recognized to be within the level of ordinary skill in the art.
While claims 16-19 of the instant application use the broader terms “first” and “second” in place of the narrower terms “hot” and “cold” recited in claims 11 and 12 of US Patent No. 11,060,628 B2, such a broadening of the claims scope is recognized to be within the level of ordinary skill in the art. Further, Kline et al. teaches first and second mixing valves, first and second inlets, and first and second fluid passages.
While claim 16 of the instant application adds the limitations “having a first length” and “having a second length” to the limitations concerning the first and second mixing valves, such an addition does not constitute a patentable distinction because Kline et al. teaches first and second mixing valves having first and second lengths.
While claim 16 of the instant application use the broader term “different” in place of the narrower term “offset” recited in claim 11 of US Patent No. 11,060,628 B2, such a broadening of the claims scope does not constitute a patentable distinction because the “offset” axes required by claim 11 of US Patent No. 11,060,628 B2 are necessarily “different” axes. Further, Kline et al. teaches first and second mixing valves having different first and second longitudinal axes.
While claim 17 of the instant application adds the limitation “parallel”, such an addition does not constitute a patentable distinction because Kline et al. teaches first and second mixing valves having parallel first and second longitudinal axes.
For at least these reasons, claims 16-19 of the instant application are not patentably distinct from claims 11 and 12 of US Patent No. 11,060,628 B2.
Overcoming Double Patenting Rejection
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Pertinent Prior Art
The following prior art is considered pertinent to applicant’s disclosure but is not relied upon to reject any claim.
Yang teaches a valve assembly comprising a pressure balance device 20 (with a valve-like member 23) and a mixing valve 30 received in a common housing 10 having a cold fluid inlet 11, a hot fluid inlet 12 and mixed fluid outlets 13, 14.
Swanson teaches a valve assembly comprising first, second and third mixing valves 12, 14, 16 received in a common housing 10 having a cold fluid inlet 85, a hot fluid inlet 81 and a mixed fluid outlet 76.
Ravedati teaches a valve assembly comprising first, second and third mixing valves 12-14 received in a common housing 2 having a cold fluid inlet 4, a hot fluid inlet 3 and a mixed fluid outlet 5a.
Taylor et al. teaches a valve assembly comprising first and second mixing valves 16, 20 received in a common housing 12 having a cold fluid inlet 24, a hot fluid inlet 22 and a mixed fluid outlet 30.
Specification
The title of the invention is not descriptive of the claimed invention since patent claims 1-19 are directed to a valve assembly having two mixing valves. The claims are not merely drawn to a housing for the two valves. A new title is required that is clearly indicative of the invention to which the claims are directed.
The specification is objected to because the paragraph located at col. 15, ll. 15-23 is confusing and inaccurate. At col. 15, l. 17, it appears that “spacers 434” should read “check valves 432”. At col. 15, l. 19, “spacers 434” is inaccurate because the spacers 434 do not have their lateral movement limited; rather, the spacer limit the lateral movement of the check valves. At col. 15, ll. 22 and 23, “spacers 434” appears to be inaccurate for similar reasons.
The specification is objected to under 37 CFR 1.75(d)(1) as failing to provide proper antecedent basis for the claimed subject matter. See MPEP 608.01(o). Specifically, the specification fails to describe the longitudinal axes of the mixing valves as being “parallel” (claim 17) or “offset” (claim 18). Further, the specification fails to describe the mixing valves as having respective portions that “extend away from the housing in the same direction” (claim 19).
Drawings
The drawings are objected to under 37 CFR 1.83(a) for failing to show every feature of the invention specified in the claims. Specifically, the drawings fail to show a first check valve positioned near the first connecting passage (claim 2). Figs. 18-27 show a first check valve positioned within the first connecting passage. However, the drawings fail to show a first check valve positioned “near” (i.e., adjacent to but not within) the first connecting passage.
The drawings are objected to because:
In Fig. 4, reference number 184 should be changed to 134. See Fig. 1. Reference number 184 does not appear in the specification.
In Fig. 5, reference number 130 should be changed to 132, and reference number 134 should be changed to 136. See Figs. 1-2.
The drawings fail to comply with 37 CFR 1.84(p)(4). The same reference character must never be used to designate different parts. However, in Fig. 8, reference number 170 designates a different part (a structurally different heat transfer barrier) than the part designated by reference number 170 in Figs. 1-3.
In Fig. 13, reference number 130 should be changed to 132, and reference number 132 should be changed to 130. See Figs. 1 and 9-12.
In Fig. 23, the bottom occurrence of reference number 12 should be changed to 50. See Figs. 18-19 and 21.
The objection to the drawings will not be held in abeyance.
Amendments in Reissue Applications
Applicant is notified that any subsequent amendment to the specification, claims or drawings must comply with 37 CFR 1.173(b)-(g).
Failure to fully comply with 37 CFR 1.173(b)-(g) will generally result in a notification to applicant that an amendment before final rejection is not completely responsive. Such an amendment after final rejection will not be entered.
Disclosure Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which the patent for which reissue is sought is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP 1404, 1442.01 and 1442.04.
Filing and Contact Information
All correspondence relating to this reissue application should be directed:
By Patent Center7: Registered users may submit via the Patent Center at: https://patentcenter.uspto.gov/
By Mail8 to: Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
By FAX to: (571) 273-8300
By hand: Customer Service Window
Knox Building
501 Dulany Street
Alexandria, VA 22314
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Peter English whose telephone number is (571)272-6671. The examiner can normally be reached on Monday-Thursday (8:00 am - 6:00 pm EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eileen Lillis, can be reached at 571-272-6928.
/PETER C ENGLISH/Reexamination Specialist, Art Unit 3993
Conferees:
/SARAH B MCPARTLIN/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
1 Note that the claim encompasses a construction in which one first aperture aligns with more than one second aperture, and a construction in which plural fasteners couple to more than one first aperture and/or more than one second aperture. Such constructions are not supported by the original disclosure.
2 Each assignment document submitted to the Office for recording must be accompanied by a cover sheet as required by 37 CFR 3.28. See MPEP 302.07.
3 See the amendment and arguments filed on October 10, 2023.
4 The structure that bounds and serves to enclose a chamber or passage is not part of the chamber or passage itself.
5 The structure that bounds and serves to enclose a passage is not part of the passage itself.
6 The structure that bounds and serves to enclose a passage is not part of the passage itself.
7 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).
8 Mail Stop REISSUE should only be used for the initial filing of reissue applications, and should not be used for any subsequently filed correspondence in reissue applications. See MPEP 1410.
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