DETAILED ACTION
Claims 2-16, and 18-31 are pending, with claims 25-31 being new. Claims 1 and 17 have been cancelled. Claims 2-6, 8, 13-14, and 16 remain withdrawn.
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 .
Information Disclosure Statement
The US patent applications cited in the IDS filed 12 November 2025 – US 20100090151 and US 20190195389 – were indicated as not being considered because they were previously cited in the IDS filed 12 May 2023 and considered.
Response to Arguments
Applicant's arguments filed 1 December 2025 have been fully considered but they are not persuasive for the following reasons in view of the newly applied prior art references – Iwabuchi et al. (US 2005/0121634), Burmester (US 2006/0108550), and Banzhaf (US 2019/0195389).
The applicant argues with respect to claim 25 on pgs. 8-9 of the Response that the prior art lacks “the coupling element is received at least partially in the recess on the bottom face of the valve positioner.” However, Iwabuchi discloses in Figs. 1-3 that the coupling element 35 is received at least partially in the recess on the bottom face of the valve positioner (comprising casing 16 and the annular member 31 fixed to the casing 16, as disclosed in paragraph 39, the source of the actuating fluid provided to casing 16, and the conduit(s) extending between the source and the casing, and alternatively including any structures inside the casing 16). Banzhaf teaches in Figs. 1-4 the coupling element 18b is received at least partially in the recess on the bottom face of the valve positioner (comprising housing part 18a). The teaching of Banzhaf is used to modify Burmester, specifically the connection of the valve actuator (comprising housing members 101, 102 and some of the structurers therein) to the valve positioner 7.
Claim Objections
Claim 23 is objected to because of the following informalities:
In claim 23, line 2, “being” should be changed to --is--.
Appropriate correction is required.
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.
Claims 18-20 and 22-30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Iwabuchi et al. (US 2005/0121634).
Regarding claim 25, Iwabuchi discloses in Figs. 1-3 a valve system comprising:
a valve including a valve stem 27c;
a valve actuator (comprising casing 17 and some of the structurers therein) for controlling opening and closing of the valve and comprising a piston 27 (excluding the stems 27b, 27c extending therefrom) coupled to the valve stem 27c and defining a first chamber (below the piston 27) of the valve actuator;
a valve positioner (comprising casing 16 and the annular member 31 fixed to the casing 16, as disclosed in paragraph 39, the source of the actuating fluid provided to casing 16, and the conduit(s) extending between the source and the casing, and alternatively including any structures inside the casing 16) for controlling the valve actuator and adjusting the position of the valve stem 27c, wherein the valve positioner comprises a bottom face having a recess (in which the coupling element 35 is inserted, with the recessed portion is formed by the annular member 31 fixed in the bore of the coupling element 35); and
a coupling system comprising:
a coupling element 35 for connecting the valve positioner to the valve actuator (because the coupling element 35 provides a projection from the valve actuator, that the valve positioner receives, like a plug in a socket), the coupling element 35 comprising a first channel (the bore through the coupling element 35, including air chamber 36) in fluid communication with a fluid outlet of the valve positioner (comprising any of the flow paths through the valve positioner, as indicated by the flow line(s) through the valve positioner in Figs. 2-3);
a stem extension 27b that moves with the valve stem 27c and comprises a second channel 27e in fluid communication with the first channel and the first chamber of the valve actuator,
wherein the coupling element 35 is received at least partially in the recess on the bottom face of the valve positioner.
Regarding claim 18, Iwabuchi discloses in Figs. 1-3 that the valve actuator comprises an end cap (comprising intermediate casing 17, which forms an end cap over casing 18, or comprising the top portion of intermediate casing 17, which includes an inward shoulder forming an end cap of the interior of the valve actuator) defining a top face of the valve actuator, the coupling element 35 being received at least partially in an opening of the end cap.
Regarding claim 19, Iwabuchi discloses in Figs. 1-3 a sealing element (comprising the unlabeled seal between the top end of the coupling element 35 and the protruding portion 16a of the upper casing 16) between the coupling element 35 and the end cap of the valve actuator.
Regarding claim 20, Iwabuchi discloses in Figs. 1-3 that a largest diameter of the coupling element 35 is strictly smaller than a largest diameter of the end cap (of casing 17).
Regarding claim 22, Iwabuchi discloses in Figs. 1-3 wherein the valve actuator comprises at least one spring 39 above the piston.
Regarding claim 23, Iwabuchi discloses in Figs. 1-3 a largest diameter of the coupling element 35 being smaller than a largest diameter of the at least one spring 39.
Regarding claim 24, Iwabuchi discloses in Figs. 1-3 the stem extension 27b extending at least partially through the at least one spring 39.
Regarding claim 26, Iwabuchi discloses in Figs. 1-3 a largest diameter of the coupling element 35 is strictly smaller than a largest diameter of the valve actuator (comprising casing 17).
Regarding claim 27, Iwabuchi discloses in Figs. 1-3 that the stem extension 27b is received at least partially in the first channel of the coupling element 35.
Regarding claim 28, Iwabuchi discloses in Figs. 1-3 that the system comprises a sealing element (comprising the unlabeled seal between the top end of the coupling element 35 and the protruding portion 16a of the upper casing 16) between the coupling element 35 and the valve actuator (specifically between the top end of the coupling element 35 and the recess portion 17a of the intermediate casing 17 of the valve actuator).
Regarding claim 29, Banzhaf teaches in Figs. 1-4 that the valve positioner is configured for commanding in a proportional manner the opening of the valve (via the valve 14 in the valve positioner).
Regarding claim 30, Iwabuchi discloses in Figs. 1-3 that the opening (in the end cap formed by the intermediate casing 17) for receiving the coupling element 35 is situated centrally in the end cap 17.
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 9 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Iwabuchi in view of Tanikawa et al. (US 2010/0090151).
Regarding claim 9, Iwabuchi discloses a stem extension, as previously discussed, but lacks the stem extension extending through the piston in the first chamber.
Tanikawa teaches in Fig. 1 a stem extension extending through a piston into a first chamber (as shown in the annotation of Fig. 1 below).
[AltContent: textbox (Coupling element)][AltContent: textbox (Valve actuator)][AltContent: textbox (Stem extension)][AltContent: textbox (Valve stem)][AltContent: textbox (Valve positioner)][AltContent: textbox (piston)][AltContent: textbox (First chamber)][AltContent: textbox (First channel)][AltContent: textbox (second channel)][AltContent: textbox (Alternative portion of valve stem or stem extension)][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow]
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the connection of the valve stem, piston, and stem extension disclosed by Iwabuchi so that the stem extension extends through the piston, into the first chamber, and into the valve stem, as Tanikawa teaches, to provide a modular construction, so there’s more flexibility in assembly and disassembly, and repairs/replacements of the stems and/or piston are simpler and cheaper.
Regarding claim 11, Iwabuchi discloses in Figs. 1-3 the stem extension 27b being at least partially received in the first channel of the coupling element 35 at a first end. Tanikawa teaches in Fig. 1 that the stem extension is configured to be received at least partially in the valve stem 8 at a second end (opposite from the first end that extends upward from the piston).
Regarding claim 12, Iwabuchi discloses the second channel 27e having a cross section, observed perpendicularly to a longitudinal axis of the valve system, but lacks teaching that said cross section of the second channel is reduced when approaching the second end.
Tanikawa teaches in Fig. 1 the second channel (through the stem extension) having a cross section, observed perpendicularly to a longitudinal axis of the valve system, that is reduced when approaching the second end (as shown in Fig. 1 with the conical end of the second channel, which one having ordinary skill in the art would recognize as probably being caused by the drill bit used to create the second channel).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the cross section of the second channel in Iwabuchi reduce when approaching the second end, as Tanikawa teaches, as an obvious change in shape, for which the applicant hasn’t disclosed criticality (MPEP 2144.04(IV)(B)). Furthermore, one having ordinary skill in the art would recognize the reduction as an apparent consequence of drilling out the bore forming the second channel with a drill bit with a tapered end. It would have been obvious to driller out the second channel with an ordinary drill bit with a tapered end, as is a common and simple way of forming a channel, and to disregard the tapered end of the channel for simpler and inexpensive manufacturing, rather than implementing additional finishing techniques to the channel, such as smoothing out the end of the channel.
Claims 7, 9-11, 15, 18, 21, 29, and 31 (alternatively: 9, 11, 18, and 29) are rejected under 35 U.S.C. 103 as being unpatentable over Burmester (US 2006/0108550) in view of Banzhaf (US 2019/0195389).
Regarding claim 25, Burmester discloses in Figs. 1-6 a valve system comprising:
a valve including a valve stem 203;
a valve actuator (comprising housing members 101, 102 and some of the structurers therein) for controlling opening and closing of the valve and comprising a piston 104 coupled to the valve stem 203 (via stem extension 103) and defining a first chamber 100a (below the piston 104) of the valve actuator;
a valve positioner 7 for controlling the valve actuator and adjusting the position of the valve stem 203; and
a stem extension 103 (alternatively including the header 103a attached to the stem 103) that moves with the valve stem 203 and comprises a second channel 106 and the first chamber 100a of the valve actuator.
Burmester lacks teaching that the valve positioner comprises a bottom face having a recess, a coupling system comprising a coupling element for connecting the valve positioner to the valve actuator, the coupling element comprising a first channel in fluid communication with a fluid outlet of the valve positioner, wherein the coupling element is received at least partially in the recess on the bottom face of the valve positioner.
Banzhaf teaches in Figs. 1-4 a valve positioner (comprising housing part 18a) comprising a bottom face having a recess, a coupling system comprising a coupling element 18b for connecting the valve positioner to the valve actuator (comprising housing member 18c and some of the structures therein), the coupling element 29b comprising a first channel (comprising the central bore through when the stems extend), wherein the coupling element 18b is received at least partially in the recess on the bottom face of the valve positioner.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the valve disclosed by Burmester to include a coupling element that is fitted into a recess on the bottom face of the valve positioner to connect the valve positioner to the valve actuator, and comprising a first channel through which the stems extend, as Banzhaf teaches, because Burmester is silent with regard to the specific details of connecting the valve positioner to the valve actuator and the modular design taught by Banzhaf allows for simple and flexible assembly and disassembly. In modifying Burmester in view of Banzhaf to include the coupling element separate from the valve positioner and valve actuator, the bore in the coupling element (through which the stems extend) would provide a first channel like the bore in the valve positioner disclosed by Burmester through which the stem extension partially extends, so that the valve positioner would be provided with a first channel in fluid communication with the fluid outlet 7b of the valve positioner and the second channel in the valve stem disclosed by Burmester would be in fluid communication with the first channel.
Regarding claim 7, Burmester discloses in Figs. 1-6 that the positioner 7 comprises a positioner stem 7a received at least partially in the stem extension 103.
Regarding claim 9, Burmester discloses in Figs. 1-6 the stem extension 103 extending through the piston 104 into the first chamber 100a.
Regarding claim 10, Burmester discloses in Figs. 1-6 the second channel comprising at least a fluid outlet 106a that opens in to the first chamber 100a of the valve actuator.
Regarding claim 11, Burmester discloses in Figs. 1-6 the stem extension 103 (including the header 103 attached thereto) being at least partially received in the first channel of the coupling element (taught by Banzhaf, because the stem extension 103 extends out the top of the valve actuator and into the positioner 7) at a first end and being configured to be received at least partially in the valve stem 203 at a second end (via header 103a).
Regarding claim 15, Burmester in view of Banzhaf a method for assembling a valve positioner to a valve actuator using a coupling system according to claim 25, the method comprising the assembling of the coupling element to the valve actuator and the coupling of the stem extension to the valve stem.
Regarding claim 18, Banzhaf teaches in Figs. 1-4 that the valve actuator comprises an end cap (comprising housing member 18c, which forms an end cap over housing member 18d, or comprising the top portion of housing member 8c, which includes an inward shoulder forming an end cap of the interior of the valve actuator) defining a top face of the valve actuator, the coupling element 18b being received at least partially in an opening of the cap.
Regarding claim 21, Banzhaf teaches in Figs. 1-4 that the coupling element 18b comprises an upper positioner-side portion and a lower actuator-side portion, and an annular flange (formed by the lower extension that fits into the housing member 18c and the upwardly extended, apparently threaded, portion that fits into the housing member 18a) situated between the positioner-side portion and the actuator-side portion, the top face of the valve actuator being situated below the annular flange.
Regarding claim 29, Banzhaf teaches in Figs. 1-4 that the valve positioner is configured for commanding in a proportional manner the opening of the valve (paragraph 50).
Regarding claim 31, Banzhaf teaches in Figs. 1-4 that the upper positioner-side portion is at least partially received in the recess on the bottom face of the valve positioner 18a.
Conclusion
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 Examiner Jonathan Waddy, whose telephone number is 571-270-3146. The examiner can normally be reached on Monday-Friday (10:00AM-6:00PM EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisors can be reached by phone. Kenneth Rinehart can be reached at 571-272-4881 or Craig Schneider can be reached at 571-272-3607. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J. W./
Examiner, Art Unit 3753
/KENNETH RINEHART/Supervisory Patent Examiner, Art Unit 3753