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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/16/2026 has been entered.
Status of the Claims
Claims 2 and 21 have been cancelled. Claim 1 has been amended. Claims 3-20 are as previously presented. Therefore, claims 1 and 3-20 are currently pending and have been considered below.
Response to Amendment
Applicant’s amendment overcomes the previously set-forth rejections under 35 U.S.C. 103. However, new grounds of rejection are made in view of Applicant’s amendment.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “fixing member” in claim 11.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
The disclosure describes the fixing member as a plurality of wedges, a flat spring, or a protrusion (filed specification at [0011] and [0012], and claims 12 – 14).
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR 10-1628096.
Regarding claim 1, KR 10-1628096 discloses fluid discharge valve (“condensed water drain valve for fuel cell system” [Title]) comprising:
a housing (see annotated Fig. 2) that defines a flow path configured to guide fluid;
a partition (Fig. 2, diaphragm 91 [page 4 of attached translation])) that faces the flow path and is configured to move relative to the flow path (“diaphragm 91 selectively opens and closes the discharge port 13 of the valve body 10” [page 4); and
a heater (“PTC heater 19” [page 3]) coupled and fixed to the housing (Fig. 2), the heater being configured to supply heat to the flow path (“a PTC heater 19, which receives electric energy and generates thermal energy to thaw freezing of condensed water” [page 3]),
wherein the flow path comprises:
a first flow path (Fig. 2, first flow path 11) that is in fluid communication with an outside of the housing and extends along a first direction toward the partition (Fig. 2), the first flow path being configured to introduce the fluid into the housing (“inlet port 11” [page 3]), and
a second flow path (Fig. 2, second flow path 13) that extends from the first flow path along a second direction different from the first direction (Fig. 2), the second flow path being configured to discharge the fluid to the outside of the housing (“discharge port 13” [page 3]), and
wherein the heater has a first side that faces the first flow path and a second side that faces the second flow path (Fig. 2), the heater being configured to provide heat to both of the first flow path and the second flow path (PTC heater 19 is described as generating thermal energy to thaw freezing of condensed water; Fig. 2 shows the locations of PTC heater 19, first flow path 11, and second flow path 13; given the positioning of PTC heater 19, first flow path 11, and second flow path 13, it is understood that PTC heater 19 provides heat to both first flow path 11 and second flow path 13).
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Fig. 2 of KR 10-1628096, annotated
Regarding claim 10, KR 10-1628096 discloses wherein the first direction is parallel to a horizontal direction, and the second direction is parallel to a vertical direction orthogonal to the horizontal direction (Fig. 2).
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.
Claims 5 – 9, 11 – 12, 16 – 17, and 19 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over KR 10-1628096 in view of Park et al. (KR 10-2317903).
Regarding claim 5, KR 10-1628096 does not expressly disclose an electrode that is inserted into the housing and contacts the heater.
Park is directed to an exhaust valve for a fuel cell [Abstract]. Park discloses an electrode that is inserted into a housing and contacts a heater (Figs. 2 and 6 – 8 show an electrode 510 contacting heating element 550 (comprising first heating element 551 and second heating element 552)).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include an electrode that is inserted into the housing and contacts the heater. This is a known way of supplying power to a heater for a valve, applied to a known valve, to yield predictable results.
Regarding claim 6, KR 10-1628096 does not expressly disclose wherein the electrode comprises a first electrode that faces the first flow path, and wherein the heater is disposed between the electrode and the first flow path.
Park discloses wherein the electrode comprises a first electrode (Fig. 6, electrode 510) that faces a first flow path (Fig. 6, flow path 130), and wherein the heater (Fig. 6, heating elements 551 and 552) is disposed between the electrode (Fig. 6, electrode 510) and the first flow path (Fig. 6, flow path 130).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the electrode comprises a first electrode that faces the first flow path, and wherein the heater is disposed between the electrode and the first flow path. This is a known way of supplying power to a heater for a valve, applied to a known valve, to yield predictable results.
Regarding claim 7, KR 10-1628096 and Park do not expressly disclose wherein the electrode further comprises a second electrode that surrounds the second flow path.
However, Park discloses an electrode that surrounds a flow path (Figs. 6 – 8 show electrode 510 surrounding flow path 130).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the electrode further comprises a second electrode that surrounds the second flow path. This is merely a duplication of parts. “[T[he courts have held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.” MPEP § 2144.04-VI-B.
Regarding claim 8, KR 10-1628096 and Park do not expressly disclose wherein the first electrode and the second electrode are directly connected to each other.
However, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein a first electrode and a second electrode are directly connected to each other. This would allow for using a single power supply for two electrodes, as opposed to requiring separate power supplies for two electrodes.
Regarding claim 9, KR 10-1628096 discloses wherein the housing has an inner surface that defines the second flow path (see Fig. 2 showing second flow path 13).
KR 10-1628096 does not expressly disclose wherein the second electrode surrounds an entire circumference of the inner surface of the housing.
Park discloses wherein an electrode surrounds a partial circumference of an inner surface of a housing (Figs. 6 – 8 show wherein electrode 510 surrounds a partial circumferences of an inner surface of a housing).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the second electrode surrounds a partial circumference of the inner surface of the housing. This is a known way of supplying power to a heater for a valve, applied to a known valve, to yield predictable results.
Park does not expressly disclose wherein the second electrode surrounds an entire circumference of the inner surface of the housing.
However, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the second electrode surrounds an entire circumference of the inner surface of the housing. This is merely a change in the shape of the electrode. The courts have held that a change in shape alone, without demonstration of the criticality of a specific limitation, may be considered obvious to a person of ordinary skill in the art. MPEP § 2144.04-IV-B.
Regarding claim 11, KR 10-1628096 does not expressly disclose a fixing member that couples and fixes the electrode to the housing.
Park discloses a fixing member that couples and fixes the electrode to the heater housing (Fig. 8 shows electrode 510 and fixing members / “protrusions 570” that fix electrode 510 to heating elements 551 and 552; see also Figs. 10 – 12).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a fixing member that couples and fixes the electrode to the housing. The use of a fixing member to fix one element to another is the use of a known technique, applied to a known device, to yield predictable results. Additionally, while Park disclose fixing the electrode to the heater using a fixing member, rather that fixing the electrode to the housing using a fixing member, it would have been obvious to one of ordinary skill in the art to apply this known technique to fix an electrode to another adjacent object, such as a housing, with a reasonable expectation of success.
Regarding claim 12, KR 10-1628096 does not expressly disclose wherein the fixing member comprises a plurality of wedges that are inclined with respect to the first direction or the second direction, each of the plurality of wedges having an end coupled to the electrode.
Park discloses wherein the fixing member comprises a plurality of wedges that are inclined with respect to the first direction or the second direction, each of the plurality of wedges having an end coupled to the electrode (see Figs. 8 and 10 – 12, showing fixing member 570 as a plurality of wedges inclined at angle θ (Fig. 11) and having an end coupled to electrode 510 (note: electrode 510 comprises portion 512, which is shown in Figs. 11 and 12)).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the fixing member comprises a plurality of wedges that are inclined with respect to the first direction or the second direction, each of the plurality of wedges having an end coupled to the electrode. The use of a fixing member to fix one element to another is the use of a known technique, applied to a known device, to yield predictable results.
Regarding claim 16, KR 10-1628096 does not expressly disclose an electrode that is inserted between the housing and the heater and surrounds the heater, the electrode having a circular ring shape.
Park discloses an electrode (Fig. 6, electrode 510) that is inserted between the housing and the heater (Fig. 6, heating elements 551 and 552), and surrounds the heater (Figs. 6 and 7).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include an electrode that is inserted between the housing and the heater and surrounds the heater. This is a known way of supplying power to a heater for a valve, applied to a known valve, to yield predictable results.
Park does not expressly disclose the electrode having a circular ring shape.
However, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the electrode having a circular ring shape, since the courts have held that a change in shape alone, without demonstration of the criticality of a specific limitation, may be considered obvious to a person of ordinary skill in the art. MPEP § 2144.04-IV-B.
Regarding claim 17, KR 10-1628096 does not expressly disclose wherein the electrode is in contact with an outer circumferential surface of the heater and an inner circumferential surface of the housing.
Park discloses wherein the electrode (Figs. 6 and 7, electrode 510) is in contact with an outer circumferential surface of the heater (Figs. 6 and 7, heating elements 551 and 552) and an inner circumferential surface of the housing (see Fig. 6).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the electrode is in contact with an outer circumferential surface of the heater and an inner circumferential surface of the housing. This is a known way of supplying power to a heater for a valve, applied to a known valve, to yield predictable results.
Regarding claim 19, KR 10-1628096 does not expressly disclose an electrode that is inserted between the housing and the heater and surrounds the heater, the electrode having a quadrangular ring shape.
Park discloses an electrode (Fig. 6, electrode 510) that is inserted between the housing and the heater (Fig. 6, heating elements 551 and 552), and surrounds the heater (Figs. 6 and 7).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include an electrode that is inserted between the housing and the heater and surrounds the heater. This is a known way of supplying power to a heater for a valve, applied to a known valve, to yield predictable results.
Park does not expressly disclose the electrode having a quadrangular ring shape.
However, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the electrode having a quadrangular ring shape, since the courts have held that a change in shape alone, without demonstration of the criticality of a specific limitation, may be considered obvious to a person of ordinary skill in the art. MPEP § 2144.04-IV-B.
Regarding claim 20, KR 10-1628096 does not expressly disclose wherein the housing has a plurality of housing surfaces that face and surround the electrode, wherein the electrode has a plurality of electrode surfaces that face the plurality of housing surfaces and surround the heater, and wherein the heater has a plurality of heater surfaces that face the plurality of electrode surfaces and surround the first flow path.
Park discloses wherein the housing has a plurality of housing surfaces that face and surround the electrode (see Figs. 6 – 8, with Fig. 6 the housing surrounding electrode 510, and Figs. 7 – 8 showing the shape electrode 510, indicating that the housing has a plurality of housing surfaces that face and surround the electrode) wherein the electrode has a plurality of electrode surfaces that face the plurality of housing surfaces (Figs 6 – 8) and surround the heater (Figs. 6 – 8 show wherein the surfaces of electrode 510 surround heating elements 551 and 552), and wherein the heater has a plurality of heater surfaces (Figs. 7 – 8 show a plurality of surfaces of heating elements 551 and 552) that face the plurality of electrode surfaces and surround the first flow path (Figs 6 – 8).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the housing has a plurality of housing surfaces that face and surround the electrode, wherein the electrode has a plurality of electrode surfaces that face the plurality of housing surfaces and surround the heater, and wherein the heater has a plurality of heater surfaces that face the plurality of electrode surfaces and surround the first flow path. This is a known way of supplying power to a heater for a valve, applied to a known valve, to yield predictable results.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over KR 10-1628096 in view of Park et al. (KR 10-2317903), further in view of Kim (US 2012/0111848).
Regarding claim 13, KR 10-1628096 and Park do not expressly disclose wherein the fixing member comprises a flat spring that has one side fixed to the electrode.
Kim discloses wherein a fixing member comprises a spring that has one side fixed to a heater (Fig. 1, spring / elastic member 20 is positioned in spring seating boss 4; spring seating boss 4 is a heater fixing boss 6, which fixes a heater 10 to another element [0045]-[0049]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the fixing member comprises a flat spring that has one side fixed to the electrode. Using a spring as a fixing member is a known means for fixing one element to another, applied to a known device, to achieve predictable results.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over KR 10-1628096 in view of Park et al. (KR 10-2317903), further in view of Kim et al. (US 2019/0131506).
Regarding claim 14, KR 10-1628096 and Park do not expressly disclose wherein the fixing member comprises a protrusion that has a first end coupled to the electrode and a second end coupled to the housing, the protrusion extending from the first end to the second end in a direction perpendicular to an extension direction of the electrode.
Kim discloses wherein a fixing member comprises a protrusion (Fig. 17, “fixing protrusions 76” [0069]) that has a first end coupled to an electrode (Fig. 17, first/bottom end of protrusion 76 is coupled to “electrode 30” [0069] when upper mold 70 is connected with lower mold 60) and a second end coupled to a housing (Fig. 17, housing is upper portion of upper mold 70), the protrusion extending from the first end to the second end in a direction perpendicular to an extension direction of the electrode (Fig. 17, protrusions 76 extend from the first end to the second end in a vertical direction shown in Fig. 17, while electrodes 30 extend into the page; the vertical direction and the ‘into the page’ direction are perpendicular).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the fixing member comprises a protrusion that has a first end coupled to the electrode and a second end coupled to the housing, the protrusion extending from the first end to the second end in a direction perpendicular to an extension direction of the electrode. This allows for “maintain[ing] the position of the electrodes 30” [0069].
Allowable Subject Matter
Claims 3, 4, 15, and 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Regarding claim 3, it would not have been obvious to modify KR 10-1628096 to include wherein the partition is configured to move in a direction parallel to the first direction. Regarding claim 4, while the heater surrounds an entire circumference of the inner surface defining the second flow path, the heater does not surround an entire circumference of the inner surface defining the first flow path, and it would not have been obvious to modify the valve of KR 10-1628096 to include this. Regarding claims 15 and 18, it would not have been obvious to modify KR 10-1628096 to include wherein the heater surrounds the first flow path.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH KERR whose telephone number is (571)272-3073. The examiner can normally be reached M - F, 8:30 AM - 4:30 PM.
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/ELIZABETH M KERR/ Primary Examiner, Art Unit 3761