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 .
Election/Restrictions
It is noted that Applicant previously elected Group 1 – directed to a composite diaphragm without traverse (see CTNF mailed 01/31/2021).
Information Disclosure Statement
The information disclosure statement filed 01/09/2026 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. Since no copy of the final office action cited in the NPL section of the IDS has been provided, this document has not been considered. The examiner notes that exceptions for providing a copy of non-patent documents ONLY applies to U.S. patents, U.S. patent application publications, or U.S. pending applications (limited to the specification, including claims, and drawings) – thus for the cited office action in the IDS filed on 01/09/2026 to be considered a copy of the office action must be provided.
Claim Objections
Claims 1-3, 5-6, 25-27, and 39-44 are objected to because of the following informalities:
Claim 1 Line 30 currently states:
“permeation barrier while the encapsulating second and third layers preserve fluoropolymer”.
Should be changed to state:
--permeation barrier, while the encapsulating second and third layers preserve the fluoropolymer--.
Claim 25 Line 17 currently states:
“stresses and protecting the fluoropolymer from abrasion and operational damage,”.
Should be changed to state:
--stresses and protecting the fluoropolymer material from abrasion and operational damage,--.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph 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.
Claims 1-3, 5-6, 25-27, and 34-47 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding Claims 1 & 25 & 34: each of these independent claims is directed to a diaphragm having three layers (Claim 1 has a first layer, a second layer and a third layer; Claim 25 has a first outer layer, a second outer layer, and a vapor barrier layer; and Claim 34 has a first outer layer, a second outer layer, and a vapor barrier layer). And each of the independent claims requires that the first layer/vapor barrier layer has a thickness between 0.02 mm and 0.8 mm. Additionally, both of Claims 1 & 25 require the outer/external second & third layers to form a bead.
However, in the instant application, the only part of the disclosure directed to a diaphragm having a thickness between 0.02 mm and 0.8 mm, as claimed is diaphragm 152 which is described in the SPEC (Page 10 Line 27-Page 11 Line 9) and illustrated in Figs 7-12. Additionally, diaphragm 152 is described as being formed from a flat planar piece of diaphragm material 150. Where there is no description of the diaphragm material 150 having three layers. Furthermore, the SPEC (Page 12 Line 4-11) explicitly states that diaphragm 152 has no bead or other non-planar retention feature.
Accordingly, since the independent claims are directed to a three layer diaphragm which is formed of multiple discrete materials (e.g. the diaphragm 202 described in Figs 15-16 or the diaphragm 250 described in Figs 17-18), and the SPEC does not discloses that the articulated diaphragms of multiple discrete materials, has a thickness between 0.02 mm and 0.8 mm for the first layer/vapor barrier layer and/or a bead as claimed; it follows that the claim(s) 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 had possession of the claimed invention at the time the application was filed.
Regarding Claim 25: Claim 25 Line 21-23 state:
“wherein the first, second, and central portions of the sidewall are configured to distribute bending strain through the encapsulated vapor barrier layer to prevent localized creasing or tearing of the fluoropolymer material during repeated diaphragm actuation”.
The examiner is unable to find support for this language in the as filed SPEC. The Examiner would like to know, specifically which part of the SPEC supports this language?
Regarding Claim 39: Claim 39 states:
“wherein the first layer terminates short of a peripheral edge of the diaphragm so that the second and third layers are directly bonded together at the periphery to form a continuous elastomeric seal surrounding the fluoropolymer layer.”
The examiner is unable to find support for this language in the as filed SPEC. Additionally, Fig 16 illustrates the first layer 222 extending to the peripheral edge of the diaphragm. The Examiner would like to know, specifically which part of the SPEC supports this language?
Regarding Claim 40: Claim 40 states:
“wherein the first layer is of substantially uniform composition, with regions of differing flexural stiffness resulting from the second and third layers being thicker adjacent a peripheral bead than in a central portion, thereby increasing sealing strength while maintaining flexibility for diaphragm movement.”
The examiner is unable to find support for this language in the as filed SPEC. The Examiner would like to know, specifically which part of the SPEC supports this language?
Regarding Claim 42: Claim 42 states:
“wherein the vapor-barrier layer and outer layers are selected to reduce hydrocarbon vapor permeation relative to diaphragms formed solely of elastomeric or fabric-reinforced rubber materials.”
The examiner is unable to find support for this language in the as filed SPEC. The Examiner would like to know, specifically which part of the SPEC supports this language?
Regarding Claim 43: Claim 43 states:
“wherein the vapor-barrier layer and encapsulating outer layers cooperate to resist cracking or delamination of the fluoropolymer layer during repeated flexure under pump operating pressures.”
The examiner is unable to find support for this language in the as filed SPEC. The Examiner would like to know, specifically which part of the SPEC supports this language?
Regarding Claim 45: Claim 45 states:
“wherein the fluoropolymer of the vapor-barrier layer comprises a fluoroelastomer material selected to maintain flexibility at low operating temperatures.”
The examiner is unable to find support for this language in the as filed SPEC. The Examiner would like to know, specifically which part of the SPEC supports this language?
Regarding Claim 46: Claim 46 states:
“the fluoropolymer barrier layer resists … swelling, or embrittlement caused by prolonged fuel contact.”
The examiner is unable to find support for this language in the as filed SPEC. The Examiner would like to know, specifically which part of the SPEC supports this language?
Regarding Claim 47: Claim 47 states:
“wherein bonding between the vapor-barrier layer and at least one of the outer layers is enhanced by surface adhesion promoted through heating or chemical bonding during molding of the outer-layer material.”
The examiner is unable to find support for this language in the as filed SPEC. The Examiner would like to know, specifically which part of the SPEC supports this language?
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.
Claims 34-38, 41-42, and 45-47 are 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.
Regarding Claim 34: Line 4-7 states:
“a first outer layer formed directly on the vapor barrier layer of a first material to resist degradation from the fluid; and
a second outer layer opposing the first outer layer and formed directly on the vapor barrier layer of a second material to resist abrasion from a spring,”.
It is unclear the exact limitations the applicant is introducing here, specifically it is unclear if Applicant is claiming in Line 4-5 that the first outer layer is of a first material or if Applicant is claiming that the vapor barrier layer is of a first material? Similarly it is unclear if Applicant is claiming in Line 6-7 that the second outer layer is of a second material or if Applicant is claiming that the vapor barrier layer is of a second material? Accordingly, the scope of claim 34 is unclear. For the purpose of examination it will be assumed that the vapor barrier layer is of the first material and the second outer layer is of the second material.
Regarding Claim 41: The term “substantially prevent” in claim 41 is a relative term which renders the claim indefinite. The term “substantially prevent” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Regarding Claim 42: Line 1-3 states: “wherein the vapor-barrier layer and outer layers are selected to reduce hydrocarbon vapor permeation relative to diaphragms formed solely of elastomeric or fabric-reinforced rubber materials.”. It is unclear the exact limitations the applicant is introducing here, since not all elastomeric or fiber reinforced rubber diaphragms are made of the same material, and thus have different vapor permeation levels, thus it is unclear what the particular requirement for the claimed hydrocarbon vapor permeation (level) is, and how this effects the material of the vapor barrier layer and the outer layers in claim 42. Thus the language of the claim does not meet the requirements of §112(b), given that it is not currently known or readily available (from standard reference works for example) and the PTO does not have laboratory facilities for determining the required hydrocarbon vapor permeation value of all elastomeric diaphragms and all fiber-reinforced rubber material diaphragms that would be necessary for determining the standard that the diaphragm being claimed would be reduced relative to. Thus the language in the claim does not apprise one of ordinary skill in the art the scope of the invention as the required value or degree of hydrocarbon vapor permeation is unknown. --For examination purposes the hydrocarbon vapor permeation level performed by the diaphragm taught by the prior art is believed to meet the limitations of the claim and Applicant has the burden to show that the hydrocarbon vapor permeation in the prior art has a materially different level of hydrocarbon vapor permeation to what is required in claim 42.--.
Finally; depending claim(s) inherit deficiencies from the parent claim(s). Appropriate correction is required.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-3, 5-6, 25-27, 34-37, and 39-47 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oikawa USPN 6173959 in view of Huss USPN 5907992 as evidenced by Kent US 2004/0239047.
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Annotated Figure 1 of Oikawa USPN 6173959 (Attached Figure C)
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Annotated Figure 4 of Oikawa USPN 6173959 (Attached Figure A)
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Annotated paragraph 0044 in SPEC of instant application (Attached Figure D)
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Annotated Figure (Attached Figure R)
Regarding Claim 1: Oikawa USPN 6173959 discloses the limitations: A diaphragm (diaphragm 2) for a fluid pump (for the fuel pump in Fig 1, Column 3 Line 34-38), comprising:
a first layer formed from a first material (Column 5 Line 7-10, Column 6 Line 24-32 – diaphragm 2 is a rubber membrane having a cloth layer therein; the first layer is the cloth layer and the first material is cloth, additionally see Annotated Figure 4 of Oikawa USPN 6173959 (Attached Figure A) above);
a second layer coupled to the first layer and formed from a second material different than the first material (Column 6 Line 24-32, the second layer is the layer of NBR rubber to the left of the cloth layer in Figure 4, the second material is NBR rubber, the second material (NBR rubber) is different from the first material (cloth), also see Attached Figure A); and
a third layer (Attached Figure A, the third layer is the layer of NBR rubber to the right of the cloth layer in Figure 4),
wherein the first layer is received between the second layer and the third layer (Attached Figure A, as seen in Attached Figure A the first layer is received between the second and third layers) and is fully encapsulated between the second layer and the third layer (from what is shown in Figures 4-6 the first/cloth layer is fully encapsulated between the second and third layers as claimed in the same manner as shown in Figure 16 of the instant application, thus the prior art of Oikawa addresses the claim language within the same confines as the instant application), mechanically supporting the first layer against flexural and clamping stresses (it is noted that the exterior portions of the first layer would inherently support an interior portion of the first layer against flexural and clamping stresses as claimed; and the prior art of Oikawa would achieve this within the same confines as the instant application; additionally or in the alternate, the second and third layers that encapsulate the first layer would inherently mechanically support the first layer against flexural and clamping stresses as claimed given that the second and third layers encapsulate the first layer) while protecting the first layer from abrasion and operational damage (it is noted that the exterior portions of the first layer would inherently protect the interior portion of the first layer from abrasion and operation damage within the same confines as the instant application; additionally or in the alternate, the second and third layers that encapsulate the first layer would inherently protect the first material from abrasion and operational damage as claimed given that the second and third layers encapsulate the first layer);
wherein the first layer is continuous and without perforations (as seen in Figure 1 the diaphragm 2 has no holes or perforations in it at all, thus the first/cloth layer in the diaphragm is continuous and without perforations as claimed) in an entire area of the diaphragm adapted to be exposed to a fluid (Column 3 Line 34-38, Column 1 Line 41-55, a fluid = fuel, an entire area of the diaphragm adapted to be exposed = area of the diaphragm 2 in Figure 1 which is located radially inside of rib 27; there are no perforations in the diaphragm 2, thus the first/cloth layer would be continuous and without perforations in the entire area claimed), thereby providing a continuous layer (since the first/cloth layer does not have perforations it provides a continuous layer),
wherein portions of the second layer and the third layer (portions of the second layer and the third layer = first portion of 2nd layer & first portion of 3rd layer in Attached Figure A) define a bead (i.e. define annular rib 27, Column 4 Line 62-65) about a periphery of both the second layer and the third layer (as understood from Figure 1 and Figure 2 the bead 27 extends about a periphery of the diaphragm 2 and given what is illustrated in Figure 4 the bead 27 also extends about a periphery of both the second and third layers as claimed, as seen in Attached Figure A the first portion of the 2nd layer defines a left side of the bead, and the first portion of the 3rd layer defines a right side of the bead),
one side of the bead (i.e. a left side of the bead in Attached Figure A) being defined by the second layer (the left side of the bead is defined by the first portion of the 2nd layer) and an opposite side of the bead (i.e. a right side of the bead in Attached Figure A) being defined by the third layer (the right side of the bead is defined by the first portion of the 3rd layer), the bead being adapted to be trapped between two bodies (two bodies = pump casing 24 and first cover 25, as shown in Figure 1 and Figure 4 the bead 27 is trapped between the two bodies as claimed); and
wherein a flexible sidewall (see Annotated Figure 1 of Oikawa USPN 6173959 (Attached Figure C) above) of the diaphragm extends radially inwardly from the bead (as seen in Attached Figure A & Attached Figure C the sidewall extends radially inward from the bead 27 as claimed), and includes:
a first portion of the sidewall that is coupled to the bead (as seen in Attached Figure C the identified first portion of the sidewall is coupled with the bead 27 as claimed), wherein the first portion has a shape (as seen in Attached Figure C the identified first portion has a generally flat shape);
a second portion of the sidewall (Attached Figure C), positioned inward of the first portion (Attached Figure C), that is generally convex (as seen in Attached Figure C the identified second portion of the sidewall is generally convex as claimed; Additionally see the Annotated Figure (Attached Figure R) above) and leads to a central portion that is generally planar (Attached Figure C) to provide a flat surface (Attached Figure C) configured to engage one or more springs (on Page 4 Line 25-28 of the REM filed on 12/10/2024 applicant stated that ¶0044 supports the amendments to the claims, as seen in Annotated paragraph 0044 in SPEC of instant application (Attached Figure D) above, the springs engage the diaphragm 14 via spring spacers 92; in the prior art of Oikawa spring 23 in Fig 1 engages the identified central portion of the diaphragm via a spring spacer (Attached Figure C); thus the prior art of Oikawa addresses the langue of the claim within the same confines as the instant application), the first, second, and central portions configured to distribute bending strain through the encapsulate first layer to prevent localized creasing or tearing during repeated diaphragm actuation (the examiner notes that, the claims do not recite any particular structure beside what is claimed and made obvious by the prior art of Oikawa that would enable the function of “to distribute bending strain through the encapsulated first layer to prevent localized creasing or tearing during repeated diaphragm actuation”. Thus, because the structure of Oikawa makes obvious the claimed structure, it is reasonable to conclude that it will also meet the functional limitation of “to distribute bending strain through the encapsulated first layer to prevent localized creasing or tearing during repeated diaphragm actuation”),
wherein the encapsulating second and third layers preserve the first material durability and elasticity under cyclic fluid pump loading (the examiner notes that, the claims do not recite any particular structure beside what is claimed and made obvious by the prior art of Oikawa that would enable the encapsulating second and third layers to preserve the durability and elasticity of the first material under cyclic fluidic pump loading. Thus, because the structure of Oikawa makes obvious the claimed structure, it is reasonable to conclude that it will also meet the functional limitation). Oikawa USPN 6173959 is silent regarding the limitations: wherein the first layer is constructed to substantially prevent vapor permeation through the diaphragm, thereby providing a vapor barrier.
However, Huss USPN 5907992 does disclose the limitations: A diaphragm 10 for a fluid pump (since Column 4 Line 6-15 identifies the diaphragm as having a fluid side, and discusses “Pump parts such as follower and flange” the diaphragm is inherently used in a fluid pump), comprising: a first layer formed from a first material (first layer = fabric inner layer 4 – Fig. 3, first material = nylon, Column 3 Line 29-42, Column 4 Line 54-56).
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Annotated paragraph 0009 in SPEC of instant application (Attached Figure S)
Further, Kent US 2004/0239047 discloses that nylon is a material that is known to act as a vapor permeation barrier (¶0030-¶0031, ¶0033). Additionally, Page 1 Line 22-Page 2 Line 1 of the SPEC filed 01/31/2019 states that the first material can be “nylons” to inhibit or prevent vapor permeation through the diaphragm, also see Annotated paragraph 0009 in SPEC of instant application (Attached Figure S) above which clearly states that nylon material is able to inhibit or prevent vapor permeation. And the disclosure of Kent (¶0030-¶0031 & ¶0033) is similar to the language of the instant application in that “nylons” are able to act as a barrier to vapor in a fuel system (¶0026-¶0027). From these statements it is understood that all nylons are able to act as a vapor permeation barrier.
Hence it would have been obvious, to one of ordinary skill in the art to replace the cloth first material for the first layer of Oikawa USPN 6173959 with the nylon fabric layer 4 of Huss USPN 5907992 in order to provide a desired amount of reinforcement to the diaphragm (Column 3 Line 29-42, Column 4 Line 54-56).
Additionally Regarding Claim 1: the prior art of Kent US 2004/0239047 provides evidence that after the combination of Oikawa USPN 6173959 as modified by Huss USPN 5907992, the nylon material of Huss would be able to substantially prevent vapor permeation through the diaphragm as claimed, since Kent states that nylons are able to act as a permeation barrier (¶0031, ¶0033) and the SPEC (Page 1 Line 22-Page 2 Line 1) of the instant application makes the same statement.
Further Regarding Claim 1: Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 discloses the claimed invention except for “[the] first layer formed from fluoropolymer material”. It would have been obvious to one having ordinary skill in the art at the time the invention was made to use a material for the first material which is not susceptible to chemical attack such as a fluoropolymer material, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Additionally Regarding Claim 1: Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 discloses the claimed limitations except for: “the fluoropolymer material having a thickness between 0.02 mm and 0.8 mm, while remaining flexible at the thickness, the encapsulated fluoropolymer material provides a thin, flexible, low-permeation barrier”. It would have been an obvious matter of design choice to --design the fluropolymer material to have a thickness between 0.02 mm and 0.8 mm, while remaining flexible at the thickness, such that the encapsulated fluoropolymer material provides a thin, flexible, low-permeation barrier--, since no stated problem is solved or unexpected results obtained in having the fluoropolymer material having a thickness between 0.02 mm and 0.8 mm, while remaining flexible at the thickness, the encapsulated fluoropolymer material provides a thin, flexible, low-permeation barrier versus the design taught by Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047. Applicant has not disclosed why it is important/critical that the fluoropolymer material having a thickness between 0.02 mm and 0.8 mm, while remaining flexible at the thickness, the encapsulated fluoropolymer material provides a thin, flexible, low-permeation barrier and has not demonstrated that this feature solves any stated problem or is for any particular purpose. Specifically, Page 14 Line 15-24 of the SPEC indicates that the material of the middle/first layer inhibits fuel vapor permeation through the diaphragm (e.g. like the first layer taught by Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047). Thus, when the fluropolymer material of the first layer is designed to have a thickness between 0.02 mm and 0.8 mm, while remaining flexible at the thickness, such that the encapsulated fluoropolymer material provides a thin, flexible, low-permeation barrier the first layer of Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 will also meet Applicant’s disclosed functional limitation of inhibiting fuel vapor permeation through the diaphragm.
Further Regarding Claim 1: the combination of Oikawa USPN 6173959 in view of Huss USPN 5907992 and Kent US 2004/0239047 discloses the claimed limitations except: “wherein the first portion is generally concave”. It would have been an obvious matter of design choice to --design the first portion to be generally concave--, since no stated problem is solved or unexpected results obtained in having the first portion being generally concave versus the design taught by Oikawa USPN 6173959 in view of Huss USPN 5907992 and Kent US 2004/0239047. Applicant has not disclosed why it is important/critical that the first portion being generally concave & has not demonstrated that this feature solves any stated problem or is for any particular purpose. Specifically, Page 14 Line 1-12 of the SPEC indicates that the first portion 212 is used to connect the bead 204 to the second portion 214 (e.g. like the articulated first portion in Attached Figure C taught by Oikawa USPN 6173959). Thus, when the first portion is designed to be generally concave the articulated first portion in Attached Figure C taught by Oikawa USPN 6173959 in the combination of Oikawa USPN 6173959 in view of Huss USPN 5907992 and Kent US 2004/0239047 will also meet Applicant’s disclosed functional limitation of connecting the bead to the second portion.
Regarding Claim 2: Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 discloses the claimed invention except for the limitations: “wherein the fluropolymer material is selected from the group consisting of: perfluoroalkoxy (PFA), polyfluoroethylenepropylene (FEP), or polytetrafluoroethylene (PTFE)”. It would have been obvious to one having ordinary skill in the art at the time the invention was made to use a material for the fluropolymer material which is not susceptible to chemical attack such as perfluoroalkoxy (PFA), polyfluoroethylenepropylene (FEP), or polytetrafluoroethylene (PTFE), since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding Claim 3: Oikawa USPN 6173959 does disclose the limitations: wherein the second material includes NBR rubber (the second material is NBR rubber – Column 6 Line 24-32, also see Attached Figure A).
Regarding Claim 5: Oikawa USPN 6173959 does disclose the limitations: wherein the third layer is formed from the second material (as seen in Attached Figure A both the second and third layers are formed from NBR rubber, also see Column 6 Line 24-32).
Regarding Claim 6: Claim 6 recites product by process claim language:
“wherein the second layer and the third layer are both overmolded on the first layer”
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (see MPEP 2113).
Therefore, since the final structure of Oikawa USPN 6173959 as modified by Huss USPN 5907992 and as evidenced by Kent US 2004/0239047 is the same structure as described by claim 6, Oikawa USPN 6173959 as modified by Huss USPN 5907992 and as evidenced by Kent US 2004/0239047 meets the limitations of claim 6 even though the same manufacturing process (overmolding) may not have been used.
Regarding Claim 25: Oikawa USPN 6173959 discloses the limitations: A diaphragm for a fluid pump, comprising:
a first outer layer (Column 6 Line 24-32, the first outer layer is the layer of NBR rubber to the left of the cloth layer in Figure 4);
a second outer layer (the second outer layer is the layer of NBR rubber to the right of the cloth layer in Figure 4) opposing the first outer layer (see Fig 4);
wherein the first and second outer layers are formed of a first material (first material = NBR rubber; both the first and second outer layers are formed from NBR rubber, also see Column 6 Line 24-32),
wherein an annular bead (i.e. annular rib 27, Column 4 Line 62-65) is formed about a periphery of the first and second outer layers (as understood from Figure 1 and Figure 2 the bead 27 extends about a periphery of the diaphragm 2 and given what is illustrated in Figure 4 the bead 27 also extends about a periphery of both the first and second outer layers as claimed), the annular bead configured for forming a sealing engagement within a housing of a fluid pump (fluid pump = fuel pump shown in Fig 1; housing = 24,25,26 – Column 5 Line 58-Column 6 Line 15);
a flexible sidewall (Attached Figure C) radially inward from the annular bead (Attached Figure C), the flexible sidewall having: a first portion (Attached Figure C) coupled to the annular bead (as seen in Attached Figure C the articulated first portion is coupled to bead 27 as claimed), wherein the first portion has a shape (as seen in Attached Figure C the identified first portion has a generally flat shape); a second portion (Attached Figure C) radially inward of the first portion (as seen in Attached Figure C the second portion is located radially inward of the first portion as claimed), wherein the second portion is generally convex (as seen in Attached Figure C the identified second portion of the sidewall is generally convex as claimed); and a central portion (Attached Figure C) radially inward of the second portion (as seen in Attached Figure C the central portion is located radially inward of the second portion as claimed), wherein the central portion is generally planar (Attached Figure C) to provide a flat surface (Attached Figure C) configured to engage one or more springs (on Page 4 Line 25-28 of the REM filed on 12/10/2024 applicant stated that ¶0044 supports the amendments to the claims, as seen in Annotated paragraph 0044 in SPEC of instant application (Attached Figure D) above, the springs engage the diaphragm 14 via spring spacers 92; in the prior art of Oikawa spring 23 in Fig 1 engages the identified central portion of the diaphragm via a spring spacer (Attached Figure C); thus the prior art of Oikawa addresses the langue of the claim within the same confines as the instant application); and
a layer formed of a second material (Column 5 Line 7-10, Column 6 Line 24-32 – diaphragm 2 is a rubber membrane having a cloth layer therein; the layer is the cloth layer and the second material is cloth), different from the first material (it is the second material cloth is different from the first material NBR rubber), the layer having a thickness (the cloth layer of the diaphragm inherently has a thickness), the layer being encapsulated within the opposing outer layers (as seen in Figs 4-6 the layer/cloth is encapsulated between the first and second outer layers as claimed in the same manner as shown in Figure 16 of the instant application, thus the prior art of Oikawa addresses the claim language within the same confines as the instant application), the opposing outer layers mechanically supporting the layer against flexural and clamping stresses (the opposing first and second outer layers that encapsulate the cloth layer would inherently mechanically support the cloth layer against flexural and clamping stresses as claimed given that the opposing first and second outer layers encapsulate the cloth layer) and protecting the layer from abrasion and operational damage (the opposing first and second outer layers that encapsulate the cloth layer would inherently protect the first material from abrasion and operational damage as claimed given that the opposing first and second outer layers encapsulate the cloth layer),
wherein the layer is continuous and without perforations (as seen in Figure 1 the diaphragm 2 has no holes or perforations in it at all, thus the layer/cloth in the diaphragm is continuous and without perforations as claimed) in an entire area of the diaphragm adapted to be exposed to a fluid (Column 3 Line 34-38, Column 1 Line 41-55, a fluid = fuel, an entire area of the diaphragm adapted to be exposed = area of the diaphragm 2 in Figure 1 which is located radially inside of rib 27; there are no perforations in the diaphragm 2, thus the layer/cloth would be continuous and without perforations in the entire area claimed), thereby providing a continuous layer (since the cloth layer does not have perforations it provides a continuous layer), and
wherein the first, second, and central portions are configured to distribute bending strain through the encapsulated layer to prevent localized creasing or tearing during repeated diaphragm actuation (the examiner notes that, the claims do not recite any particular structure beside what is claimed and made obvious by the prior art of Oikawa that would enable the function of “to distribute bending strain through the encapsulated layer to prevent localized creasing or tearing during repeated diaphragm actuation”. Thus, because the structure of Oikawa makes obvious the claimed structure, it is reasonable to conclude that it will also meet the functional limitation of “to distribute bending strain through the encapsulated layer to prevent localized creasing or tearing during repeated diaphragm actuation”). Oikawa USPN 6173959 is silent regarding the limitations: (the layer is) a vapor barrier layer.
However, Huss USPN 5907992 does disclose the limitations: A diaphragm 10 for a fluid pump (since Column 4 Line 6-15 identifies the diaphragm as having a fluid side, and discusses “Pump parts such as follower and flange” the diaphragm is inherently used in a fluid pump), comprising: a layer formed from a second material (layer = fabric inner layer 4 – Fig. 3, second material = nylon, Column 3 Line 29-42, Column 4 Line 54-56).
Further, Kent US 2004/0239047 discloses that nylon is a material that is known to act as a vapor permeation barrier (¶0030-¶0031, ¶0033). Additionally, Page 1 Line 22-Page 2 Line 1 of the SPEC filed 01/31/2019 states that “nylons” inhibit or prevent vapor permeation through the diaphragm, also see Annotated paragraph 0009 in SPEC of instant application (Attached Figure S) above which clearly states that nylon material is able to inhibit or prevent vapor permeation. And the disclosure of Kent (¶0030-¶0031 & ¶0033) is similar to the language of the instant application in that “nylons” are able to act as a barrier to vapor in a fuel system (¶0026-¶0027). From these statements it is understood that all nylons are able to act as a vapor permeation barrier.
Hence it would have been obvious, to one of ordinary skill in the art to replace the cloth material for the layer of Oikawa USPN 6173959 with the nylon fabric layer 4 of Huss USPN 5907992 in order to provide a desired amount of reinforcement to the diaphragm (Column 3 Line 29-42, Column 4 Line 54-56).
Further Regarding Claim 25: Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 discloses the claimed invention except for “[the] vapor barrier layer formed from fluoropolymer material”. It would have been obvious to one having ordinary skill in the art at the time the invention was made to use a material for the vapor barrier layer/second material which is not susceptible to chemical attack such as a fluoropolymer material, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Additionally Regarding Claim 25: Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 discloses the claimed limitations except for: “the fluoropolymer material having a thickness between 0.02 mm and 0.8 mm”. It would have been an obvious matter of design choice to --design the fluropolymer material to have a thickness between 0.02 mm and 0.8 mm--, since no stated problem is solved or unexpected results obtained in having the fluoropolymer material having a thickness between 0.02 mm and 0.8 mm versus the design taught by Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047. Applicant has not disclosed why it is important/critical that the fluoropolymer material having a thickness between 0.02 mm and 0.8 mm and has not demonstrated that this feature solves any stated problem or is for any particular purpose. Specifically, Page 14 Line 15-24 of the SPEC indicates that the material of the middle/first layer inhibits fuel vapor permeation through the diaphragm (e.g. like the first layer taught by Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047). Thus, when the fluropolymer material of the vapor barrier layer is designed to have a thickness between 0.02 mm and 0.8 mm the vapor barrier layer of Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 will also meet Applicant’s disclosed functional limitation of inhibiting fuel vapor permeation through the diaphragm.
Further Regarding Claim 25: the combination of Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 discloses the claimed limitations except: “wherein the first portion is generally concave”. It would have been an obvious matter of design choice to --design the first portion to be generally concave--, since no stated problem is solved or unexpected results obtained in having the first portion being generally concave versus the design taught by Oikawa USPN 6173959 in view of Huss USPN 5907992 and Kent US 2004/0239047. Applicant has not disclosed why it is important/critical that the first portion being generally concave & has not demonstrated that this feature solves any stated problem or is for any particular purpose. Specifically, Page 14 Line 1-12 of the SPEC indicates that the first portion 212 is used to connect the bead 204 to the second portion 214 (e.g. like the articulated first portion in Attached Figure C taught by Oikawa USPN 6173959). Thus, when the first portion is designed to be generally concave the articulated first portion in Attached Figure C taught by Oikawa USPN 6173959 in the combination of Oikawa USPN 6173959 in view of Huss USPN 5907992 and Kent US 2004/0239047 will also meet Applicant’s disclosed functional limitation of connecting the bead to the second portion.
Regarding Claim 26: Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 discloses the claimed invention except for the limitations: “wherein the fluropolymer material is selected from the group consisting of: perfluoroalkoxy (PFA), polyfluoroethylenepropylene (FEP), or polytetrafluoroethylene (PTFE)”. It would have been obvious to one having ordinary skill in the art at the time the invention was made to use a material for the fluropolymer material which is not susceptible to chemical attack such as perfluoroalkoxy (PFA), polyfluoroethylenepropylene (FEP), or polytetrafluoroethylene (PTFE), since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding Claim 27: Oikawa USPN 6173959 does disclose the limitations: wherein the first material is NBR rubber (the second material is NBR rubber – Column 6 Line 24-32, also see Attached Figure A). In the alternate, Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 discloses the claimed invention except for the limitations: “wherein the first material is selected from the group consisting of: H-NBR, NBR coated or impregnated fiber, or a fluoroelastomer”. It would have been obvious to one having ordinary skill in the art at the time the invention was made to use a material for the first material which is not susceptible to chemical attack such as H-NBR, NBR coated or impregnated fiber, or a fluoroelastomer, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding Claim 34: Oikawa USPN 6173959 discloses the limitations: A diaphragm (diaphragm 2, for the fuel pump in Fig 1, Column 3 Line 34-38) comprising:
a layer (layer = cloth layer in the diaphragm 2, see Attached Figure A, Column 5 Line 7-10, Column 6 Line 24-32) having a thickness (the cloth layer in the diaphragm inherently has a thickness);
a first outer layer (= the layer of NBR rubber to the left of the cloth layer in Fig. 4, Column 6 Line 24-32) formed directly on the layer of a first material (as seen in Fig 4 the articulated first outer layer is formed directly on the layer as claimed; the first material of the layer = the cloth material) to resist degradation from the fluid (since the NBR rubber of the first outer layer is formed directly on the left side of the cloth layer, the material of the first outer layer protects/resists degradation from the fluid to protect the layer of first material as claimed); and
a second outer layer (= the layer of NBR rubber to the right of the cloth layer in Fig 4) opposing the first outer layer (as seen in Fig 4) and formed directly on the layer (as seen in Fig 4) of a second material (the second outer layer is formed of NBR rubber, the second material is NBR rubber) to resist abrasion from a spring (as understood from Fig 4 & Fig 1 the material of the second outer layer is formed directly on the layer, and is capable of resisting abrasion from a spring within the same confines that the outer layer made from NBR rubber (see Page 14 Line 25-Page 15 Line 2) in the SPEC of the instant application is able to resist abrasion from a spring),
wherein:
the layer is fully encapsulated between the first and second outer layers (as seen in Figs 4-6, the cloth layer is fully encapsulated between the first and second outer layers as claimed in the same manner as shown in Figure 16 of the instant application, thus the prior art of Oikawa addresses the claim language within the same confines as the instant application), and the first and second outer layers mechanically support the layer against flexural and clamping stresses (the first and second outer layers that encapsulate the cloth layer would inherently mechanically support the cloth layer against flexural and clamping stresses as claimed given that the first and second outer layers encapsulate the cloth layer) while protecting the layer from abrasion and operational damage (it is noted that since the first and second outer layers that encapsulate the cloth layer would inherently protect the cloth layer from abrasion and operational damage as claimed given that the first and second outer layers encapsulate the cloth layer),
the layer is continuous and without perforations (as seen in Figure 1 the diaphragm 2 has no holes or perforations in it at all, thus the cloth layer in the diaphragm is continuous and without perforations as claimed) in an entire area of the diaphragm adapted to be exposed to a fluid (Column 3 Line 34-38, Column 1 Line 41-55, a fluid = fuel, an entire area of the diaphragm adapted to be exposed = area of the diaphragm 2 in Figure 1 which is located radially inside of rib 27; there are no perforations in the diaphragm 2, thus the cloth layer would be continuous and without perforations in the entire area claimed), thereby providing a continuous layer (since the cloth layer does not have perforations it provides a continuous layer), and
the diaphragm is configured to maintain performance during repeated diaphragm flexure under cyclic pump loading (since, the claims do not recite any particular structure beside what is claimed and made obvious by the prior art of Oikawa that would enable the ability to maintain performance during repeated diaphragm flexure under cyclic pump loading. Thus, because the structure of Oikawa makes obvious the claimed structure, it is reasonable to conclude that the diaphragm of Oikawa will also meet the functional limitation of being able to maintain performance during repeated diaphragm flexure under cyclic pump loading as claimed).
Oikawa USPN 6173959 is silent regarding the limitations: the layer is a vapor barrier, thereby providing a vapor barrier layer.
However, Huss USPN 5907992 does disclose the limitations: A diaphragm 10 for a fluid pump (since Column 4 Line 6-15 identifies the diaphragm as having a fluid side, and discusses “Pump parts such as follower and flange” the diaphragm is inherently used in a fluid pump), comprising: a vapor barrier layer formed from a first material (vapor barrier layer = fabric inner layer 4 – Fig. 3, first material = nylon, Column 3 Line 29-42, Column 4 Line 54-56).
Further, Kent US 2004/0239047 discloses that nylon is a material that is known to act as a vapor permeation barrier (¶0030-¶0031, ¶0033). Additionally, Page 1 Line 22-Page 2 Line 1 of the SPEC filed 01/31/2019 states that the first material can be “nylons” to inhibit or prevent vapor permeation through the diaphragm, also see Annotated paragraph 0009 in SPEC of instant application (Attached Figure S) above which clearly states that nylon material is able to inhibit or prevent vapor permeation. And the disclosure of Kent (¶0030-¶0031 & ¶0033) is similar to the language of the instant application in that “nylons” are able to act as a barrier to vapor in a fuel system (¶0026-¶0027). From these statements it is understood that all nylons are able to act as a vapor permeation barrier.
Hence it would have been obvious, to one of ordinary skill in the art to replace the cloth first material for the first layer of Oikawa USPN 6173959 with the nylon fabric layer 4 of Huss USPN 5907992 in order to provide a desired amount of reinforcement to the diaphragm (Column 3 Line 29-42, Column 4 Line 54-56).
Additionally Regarding Claim 34: the prior art of Kent US 2004/0239047 provides evidence that after the combination of Oikawa USPN 6173959 as modified by Huss USPN 5907992, the nylon material of Huss would be able to prevent vapor permeation through the diaphragm, and therefore provide a vapor barrier layer as claimed, since Kent states that nylons are able to act as a permeation barrier (¶0031, ¶0033) and the SPEC (Page 1 Line 22-Page 2 Line 1) of the instant application makes the same statement.
Further Regarding Claim 34: Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 discloses the claimed invention except for “[the] vapor barrier layer formed of a fluoropolymer”. It would have been obvious to one having ordinary skill in the art at the time the invention was made to use a material for the vapor barrier layer which is not susceptible to chemical attack such as a fluoropolymer material, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Additionally Regarding Claim 34: Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 discloses the claimed limitations except for: “the fluoropolymer having a thickness between 0.02 mm and 0.8 mm”. It would have been an obvious matter of design choice to --design the fluropolymer to have a thickness between 0.02 mm and 0.8 mm--, since no stated problem is solved or unexpected results obtained in having the fluoropolymer material having a thickness between 0.02 mm and 0.8 mm versus the design taught by Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047. Applicant has not disclosed why it is important/critical that the fluoropolymer material having a thickness between 0.02 mm and 0.8 mm and has not demonstrated that this feature solves any stated problem or is for any particular purpose. Specifically, Page 14 Line 15-24 of the SPEC indicates that the material of the middle/first layer inhibits fuel vapor permeation through the diaphragm (e.g. like the first layer taught by Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047). Thus, when the fluropolymer is designed to have a thickness between 0.02 mm and 0.8 mm the first layer of Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 will also meet Applicant’s disclosed functional limitation of inhibiting fuel vapor permeation through the diaphragm.
Regarding Claims 35-37: Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 discloses the claimed invention except for the limitations: “wherein the fluropolymer material is: perfluoroalkoxy (PFA) – claim 35, polyfluoroethylenepropylene (FEP) – claim 36, or polytetrafluoroethylene (PTFE) – claim 37”. It would have been obvious to one having ordinary skill in the art at the time the invention was made to use a material for the fluropolymer material which is not susceptible to chemical attack such as perfluoroalkoxy (PFA), polyfluoroethylenepropylene (FEP), or polytetrafluoroethylene (PTFE), since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding Claim 39: Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 discloses the claimed limitations except for: “wherein the first layer terminates short of a peripheral edge of the diaphragm so that the second and third layers are directly bonded together at the periphery to form a continuous elastomeric seal surrounding the fluoropolymer layer”. It would have been an obvious matter of design choice to --design the diaphragm such that the first layer terminates short of a peripheral edge of the diaphragm so that the second and third layers are directly bonded together at the periphery to form a continuous elastomeric seal surrounding the fluoropolymer layer--, since no stated problem is solved or unexpected results obtained in having the first layer terminates short of a peripheral edge of the diaphragm so that the second and third layers are directly bonded together at the periphery to form a continuous elastomeric seal surrounding the fluoropolymer layer versus the design taught by Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047. Applicant has not disclosed why it is important/critical that the first layer terminates short of a peripheral edge of the diaphragm so that the second and third layers are directly bonded together at the periphery to form a continuous elastomeric seal surrounding the fluoropolymer layer and has not demonstrated that this feature solves any stated problem or is for any particular purpose. Page 14 Line 15-24 of the SPEC indicates that the material of the middle/first layer inhibits fuel vapor permeation through the diaphragm (e.g. like the first layer taught by Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047). Thus, when the diaphragm is designed such that the first layer terminates short of a peripheral edge of the diaphragm so that the second and third layers are directly bonded together at the periphery to form a continuous elastomeric seal surrounding the fluoropolymer layer the first layer of Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 will also meet Applicant’s disclosed functional limitation of inhibiting fuel vapor permeation through the diaphragm.
Regarding Claim 40: Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 discloses limitations: wherein the first layer is of substantially uniform composition (as understood from the teachings of Oikawa & Huss the first layer is substantially uniform as claimed), with regions of differing flexural stiffness resulting from the second and third layers being thicker adjacent a peripheral bead than in a central portion, thereby increasing sealing strength while maintaining flexibility for diaphragm movement (since, the claims do not recite any particular structure beside what is claimed and made obvious by the prior art of Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 that would enable the regions of differing flexural stiffness resulting from the second and third layers being thicker adjacent a peripheral bead than in a central portion, thereby increasing sealing strength while maintaining flexibility for diaphragm movement. Thus, because the structure of Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 makes obvious the claimed structure, it is reasonable to conclude that it will also meet the functional limitation).
Regarding Claim 41: Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 discloses the claimed limitations except for: “wherein the fluoropolymer layer inhibits fuel-vapor permeation through the diaphragm to substantially prevent hydrocarbon emission during normal pump operation”. It would have been an obvious matter of design choice to --design the diaphragm such that the fluoropolymer layer inhibits fuel-vapor permeation through the diaphragm to substantially prevent hydrocarbon emission during normal pump operation--, since no stated problem is solved or unexpected results obtained in having the fluoropolymer layer inhibits fuel-vapor permeation through the diaphragm to substantially prevent hydrocarbon emission during normal pump operation versus the design taught by Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047. Applicant has not disclosed why it is important/critical that the fluoropolymer layer inhibits fuel-vapor permeation through the diaphragm to substantially prevent hydrocarbon emission during normal pump operation and has not demonstrated that this feature solves any stated problem or is for any particular purpose. Specifically, Page 14 Line 15-24 of the SPEC indicates that the material of the middle/first layer inhibits fuel vapor permeation through the diaphragm (e.g. like the first layer taught by Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047). Thus, when the diaphragm is designed such that the fluoropolymer layer inhibits fuel-vapor permeation through the diaphragm to substantially prevent hydrocarbon emission during normal pump operation the first layer of Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 will also meet Applicant’s disclosed functional limitation of inhibiting fuel vapor permeation through the diaphragm.
Regarding Claim 42: wherein the vapor-barrier layer and outer layers are selected to reduce hydrocarbon vapor permeation relative to diaphragms formed solely of elastomeric or fabric-reinforced rubber materials (because, the claims do not recite any particular structure beside what is claimed and made obvious by the prior art of Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 that would enable the vapor-barrier layer and outer layers to reduce hydrocarbon vapor permeation relative to diaphragms formed solely of elastomeric or fabric-reinforced rubber materials. Thus, because the structure of Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 makes obvious the claimed structure, it is reasonable to conclude that it will also meet the functional limitation that - the vapor-barrier layer and outer layers are selected to reduce hydrocarbon vapor permeation relative to diaphragms formed solely of elastomeric or fabric-reinforced rubber materials – as claimed).
Regarding Claim 43: wherein the vapor-barrier layer and encapsulating outer layers cooperate to resist cracking or delamination of the fluoropolymer layer during repeated flexure under pump operating pressures (because, the claims do not recite any particular structure beside what is claimed and made obvious by the prior art of Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 that would enable the vapor-barrier layer and encapsulating outer layers cooperate to resist cracking or delamination of the fluoropolymer layer during repeated flexure under pump operating pressures. Thus, because the structure of Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 makes obvious the claimed structure, it is reasonable to conclude that it will also meet the functional limitation that - the vapor-barrier layer and encapsulating outer layers cooperate to resist cracking or delamination of the fluoropolymer layer during repeated flexure under pump operating pressures).
Regarding Claim 44: Claim 44 recites product by process claim language:
wherein the vapor-barrier layer is bonded to at least one of the outer layers by an adhesive or by overmolding of the outer-layer material onto the fluoropolymer layer
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (see MPEP 2113).
Therefore, since the final structure of Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 is the same structure as described by claim 44, Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 meets the limitations of claim 44 even though the same manufacturing process (e.g. the vapor-barrier layer is bonded to at least one of the outer layers by an adhesive or by overmolding of the outer-layer material onto the fluoropolymer layer) may not have been used.
Regarding Claim 45: Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 discloses the claimed invention except for the limitations: “wherein the fluropolymer of the vapor-barrier layer comprises a fluoroelastomer material selected to maintain flexibility at low operating temperatures”. It would have been obvious to one having ordinary skill in the art at the time the invention was made to use a fluroelastomer material selected to maintain flexibility at low operating temperatures for the fluropolymer, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding Claim 46: Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 discloses limitations: wherein the diaphragm is configured for use in fuel systems (Oikawa teaches that diaphragm 2 is used in a fuel pump (Column 4 Line 48-61). Accordingly the combination of prior art would be configured for use in a fuel system as claimed) and the fluoropolymer barrier layer resists degradation, swelling, or embrittlement caused by prolonged fuel contact (since, the claims do not recite any particular structure beside what is claimed and made obvious by the prior art of Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 that would enable the fluoropolymer barrier layer to resist degradation, swelling, or embrittlement caused by prolonged fuel contact. Thus, because the structure of Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 makes obvious the claimed structure, it is reasonable to conclude that it will also meet the functional limitation that the fluoropolymer barrier layer resists degradation, swelling, or embrittlement caused by prolonged fuel contact).
Regarding Claim 47: Claim 47 recites product by process claim language:
wherein bonding between the vapor-barrier layer and at least one of the outer layers is enhanced by surface adhesion promoted through heating or chemical bonding during molding of the outer-layer material
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (see MPEP 2113).
Therefore, since the final structure of Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 is the same structure as described by claim 47, Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 meets the limitations of claim 47 even though the same manufacturing process (bonding between the vapor-barrier layer and at least one of the outer layers that is enhanced by surface adhesion promoted through heating or chemical bonding during molding of the outer-layer material) may not have been used.
Claim(s) 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 as applied to claim 34 above, and further in view of JP 4185223. Examiners Note: For the purposes of examining the instant application, the examiners submitted English translation of JP 4185223, submitted with this office action, is referenced hereinafter.
Regarding Claim 38: Oikawa USPN 6173959 in view of Huss USPN 5907992 & Kent US 2004/0239047 discloses in the above mentioned Figures and Specifications the limitations set forth in claim 34. Oikawa USPN 6173959 does not disclose the limitations: wherein at least part of the second outer layer of the diaphragm is covered with a fluorine coating.
However JP 4185223 teaches that: it is known in the art to coat the outer surface of a diaphragm on the driving air supply side with a fluorine-based grease (Line 69-77) in order to improve the chemical resistance of the diaphragm (Line 69-77).
Hence it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the outer surface of the second outer layer of the diaphragm (e.g. the outer surface on the driving side of the diaphragm in Fig 1) of Oikawa USPN 6173959 with the fluorine-grease application surface 11 and fluorine-grease coating taught by JP 4185223 in order to improve the oil resistance of the diaphragm (Line 69-77).
Examiner's Note: The Examiner respectfully requests of the Applicants in preparing responses, to fully consider the entirety of the references as potentially teaching all or part of the claimed invention. It is noted, REFERENCES ARE RELEVANT AS PRIOR ART FOR ALL THEY CONTAIN. “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments (see MPEP § 2123). Additionally the origin of the drawing is immaterial. For instance, drawings in a design patent can anticipate or make obvious the claimed invention, as can drawings in utility patents. When the reference is a utility patent, it does not matter that the feature shown is unintended or unexplained in the specification. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979). (See MPEP § 2125). The Examiner has cited particular locations in the reference(s) as applied to the claims above for the convenience of the Applicants. Although the specified citations are representative of the teachings of the art and are applied to the specific limitations within the individual claims, typically other passages and figures will apply as well.
Furthermore: with respect to the prior art and the determination of obviousness, it has been held that Prior art is not limited just to the references being applied, but includes the understanding of one of ordinary skill in the art. The "mere existence of differences (i.e. a gap) between the prior art and an invention DOES NOT ESTABLISH the inventions nonobviousness." Dann v. Johnston, 425 U.S. 219, 230, 189 USPQ 257, 261 (1976). Rather, in determining obviousness the proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts. And factors other than the disclosures of the cited prior art may provide a basis for concluding that it would have been obvious to one of ordinary skill in the art to bridge the gap. (See MPEP § 2141).
Response to Arguments
Applicant's arguments filed 10/14/2025 have been fully considered but they are not persuasive.
Page 10 ¶1-¶4: Applicant argues that the prior art does not make obvious the limitations of claim 1 because the passages cited in the art of Kent do not satisfy the structural or functional limitations recited in claim 1.
--Arguments not persuasive. The examiner notes that the prior art of Kent clearly teaches that nylon and different fluorine based polymers that can be used as vapor barriers (¶0030-¶0032). And the prior art of Kent is directed to deformable parts which are used in a hydrocarbon based fuel environment. Accordingly, using a fluoropolymer for the vapor-barrier layer/first layer – as claimed – would be an obvious matter of selecting a known material on the basis of its suitability for the intended use as an obvious matter of design choice, especially given the teachings of Kent.
Additionally, regarding the thickness claimed and functional features recited in claim 1, the examiner notes that the disclosure of the instant application does not provide any reason why it is important to have a thickness between 0.02 mm and 0.8 mm for the vapor-barrier layer/first layer & in a diaphragm having three layers – as claimed. Accordingly, the thickness being claimed is an obvious design choice that a PHOSITA would have been able to make at the time the application was filed.
Accordingly, for the reasons described above, Applicants arguments are not persuasive.--.
Page 10 ¶5-Page 11 Line 6: Applicant argues that ¶0043 of the SPEC provides a teaching for the claimed range of thicknesses.
--Examiner disagrees. Below is ¶0043 from US 2019/0162177 – which is the publication for the instant application.
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As seen above the diaphragm being described is diaphragm 152 shown in Figs 7-10, which is made of a single piece of material, and is not a composite diaphragm having three different layers. Accordingly, the cited passage fails to provide a teaching why one would provide the three layer diaphragm (illustrated in Figure 16 of the instant application) with a first layer / vapor barrier layer having a thickness between about 0.02 and 0.8 mm as claimed. Accordingly Applicants arguments are not persuasive.--.
Page 11 ¶1-¶2: Applicant argues that the prior art combination depends upon impermissible hindsight.
--Examiner disagrees. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Accordingly, Applicants arguments are not persuasive.--.
Page 11 ¶3-Page 12 ¶3: Applicant continues to travers the rejection of claim 1 – by arguing that the prior art does not teach the first layer is fully encapsulated between the second and third layers as claimed.
--Examiner disagrees. The manner that the first layer is shown between the second and third layers in Fig 4 of Oikawa is identical to how the first layer is shown between the second and third layers in Fig 16 of the instant application. Accordingly the prior art addresses the claim language within the same confines as the instant application.
Further regarding applicants assertion that the prior art is unable to address the flexural or clamping stresses claimed or the abrasion resistance claimed, the examiner disagrees. This is because the functional limitations being argued/claimed are merely inherent properties of the diaphragm which is constructed as claimed. Thus since the diaphragm taught by the prior art addresses all of the structural features claimed, it is reasonable to conclude that the prior art diaphragm will also inherently address the functional limitations claimed, in the same manner as the diaphragm of the instant application.
Accordingly, Applicants arguments are not persuasive.--.
Page 12 ¶4: Applicant argues that the prior art does not teach the encapsulation claimed and cites ¶0053 of the publication and Fig 16 as teaching the benefits of the encapsulation which are claimed.
--Examiner disagrees. ¶0053 does not teach any of the claimed benefits of the encapsulation, as seen below.
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Additionally, as explained above, the manner that the first layer is shown between the second and third layers in Fig 4 of Oikawa is identical to how the first layer is shown between the second and third layers in Fig 16 of the instant application. Accordingly the prior art addresses the claim language within the same confines as the instant application.
Accordingly, Applicants arguments are not persuasive.--.
Page 13 ¶1-¶2: Applicant continues to argue the prior art does not teach the encapsulation claimed.
--Examiner disagrees. Since Art of Oikawa teaches the first/cloth layer being encapsulated between the other layers of the diaphragm, when the first/cloth layer is replaced with the fluoropolymer material as explained in the rejection above, it would be encapsulated between the other layers of the diaphragm in the same manner as taught by Oikawa. Accordingly, Applicants arguments are not persuasive.--.
Page 13 ¶3-¶7: Applicant argues that the prior art does not teach the first layer is continuous and without perforations, thereby providing a continuous vapor barrier.
--Examiner disagrees. Since Art of Oikawa teaches the first/cloth layer being encapsulated between the other layers of the diaphragm doesn’t have any holes or perforations in it at all, the first/cloth layer in the diaphragm is continuous and without perforations as claimed. Therefore, when the first/cloth layer is replaced with the fluoropolymer material as explained in the rejection above, it would be continuous and without perforations in the same manner as taught by Oikawa. Accordingly, Applicants arguments are not persuasive.--.
Page 14 ¶1-¶4: Applicant argues that the prior art does not teach the bead as recited in claim 1.
--Examiner disagrees. Since Art of Oikawa teaches the bead as claimed, following the combination of prior art as explained above, Oikawa would still teach the bead as claimed. Additionally, since the structure of the bead in Fig 4 of Oikawa is the same as the structure of the bead in Fig 16 of the instant application, it follows that the prior art addresses the claim language within the same confines as the instant application. Accordingly, Applicants arguments are not persuasive.--.
Page 14 ¶5-Page 16 ¶3: Applicant argues that the concave part of the diaphragm is provided to provide flexibility as described in ¶0050 and thus is not an obvious design choice.
--Examiner disagrees.
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As seen above, ¶0050 states that the sidewall is contoured as desired to provide desired flexibility, and states that this desired flexibility can be achieved with either a FLAT or CONCAVE first portion 212 that is coupled to the bead 204. Thus since applicants SPEC teaches that the first portion can have a shape other than the concave shape claimed to achieve the desired flexibility, it follows that providing the diaphragm such that the first portion is concave is merely a choice a PHOSITA would make to provide the diaphragm as claimed. Accordingly, Applicants arguments are not persuasive.--.
Page 16 ¶4-Page 17 ¶9: Applicant argues that the prior art does not teach the limitations: "wherein the encapsulated fluoropolymer material provides a thin, flexible, low-permeation barrier while the encapsulating second and third layers preserve fluoropolymer material durability and elasticity under cyclic fuel-pump loading." And does not address all the features recited in claim 1.
--Examiner disagrees. Since the prior art teaches all the structure recited in the claims, it is reasonable to conclude that the fluoropolymer material taught by the prior art would also provide a thin, flexible, low-permeation barrier in the same manner as the instant application since the structures are the same. Additionally, since the structure of the encapsulating second and third layers are the same in the prior art as in the instant application, it follows that the encapsulating layers of the prior art would inherently preserve fluoropolymer material durability and elasticity under cyclic fuel-pump loading in the same manner as the instant application.
Additionally, it is noted that Oikawa is directed to a fuel pump just like the fuel pump in the instant application. Thus the fuel pump of Oikawa would experience the same kind of cyclic loading as in the instant application, and a PHOSITA would expect the diaphragm taught by the combination of prior art to function in the same manner as in the instant application. Thus since the structures are the same in the prior art and the instant application, it is reasonable to conclude that the prior art will perform the same functions as the device of the instant application.
Accordingly, Applicants arguments are not persuasive.--.
Applicant’s arguments (Page 17 ¶10-Page 23 ¶7) with respect to claim(s) 1 & 25 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the arguments directed to the art of Schwartzwalder. Additionally, regarding the arguments directed to the art of Oikawa, Huss, and/or Kent it is noted that these arguments have already been addressed above by the examiner in addressing the arguments against claim 1.
Furthermore, regarding Applicants argument Page 21 ¶1-¶2, that the prior art does not teach that the flexible sidewall is able to "... distribute bending strain through the encapsulated vapor barrier layer to prevent localized creasing or tearing ... ". The examiner notes, that this feature is understood to be directed to the particular arrangement of structural elements of the diaphragm. Thus, since the combination of prior art has the same structure as the diaphragm claimed, it is reasonable to conclude that the flexible sidewall in the prior art combination will also be able to perform the function of distribute bending strain through the encapsulated vapor barrier layer to prevent localized creasing or tearing as claimed.
Accordingly, Applicants arguments are not persuasive.--.
Page 23 Last line-Page 27 ¶1: Applicant argues that the prior art of record does not make obvious the features recited in claim 34.
--Examiner disagrees. As explained in the office action above, the prior art addressees the language recited in claim 34. Additionally, Applicant has not argued against the particular way the examiner has applied the art to the language of claim 34. Accordingly, since applicants arguments are not commensurate with how the examiner applied the prior art to the language of claim 34, they are not convincing.--.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Atsumi US 2019/0023021 - teaches that: it is known in the art to coat the outer surface of a diaphragm with fluorine resin (¶0060) in order to improve the chemical resistance of the diaphragm (¶0060).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH S HERRMANN whose telephone number is (571)270-3291. The examiner can normally be reached 8:00 AM - 5:00 PM EST.
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/CHARLES G FREAY/Primary Examiner, Art Unit 3746
/JOSEPH S. HERRMANN/ Examiner, Art Unit 3746