DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/10/2025 has been entered.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claim 12-13 and 15-22 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. Claim 12 puts forth that the support ring rests only on an upper end face of the plastic molding. Applicant’s specification puts forth that the support ring also rests on the connecting piece (6). Applicant does not provide disclosure for a configuration where the support ring rests only on the plastic molding. As such, the limitation is a recitation of new matter.
The remaining claims are rejected due to dependency from claim 12.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 12-13 and 15-23 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.
Claim 12 recites the limitation "the conical surface" in line 14. There is insufficient antecedent basis for this limitation in the claim. Does the surface refer to the later recited “conically extending shoulder, or a different surface?”
Claim 23 recites the limitation "fluid pressure" in line 15. There is insufficient antecedent basis for this limitation in the claim.
In claim 23, the limitation “so that radial gaps are avoided” is unclear. What radial gaps are being addressed? Is there an element with which the radial gap is being formed relative to the valve, or are there radial gaps within the valve itself? An art rejection will not be provided, due to the lack of clarity regarding the radial gaps.
The remaining claims are rejected due to dependency from claim 12.
Claim Rejections - 35 USC § 102/103
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.
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.
Claim(s) 12-13 and 15 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Fukutomi (US 6,402,061) in view of Wieczorek (US 2004/0056120).
Regarding claim 12, Fukutomi discloses a fuel injection valve for a fuel injection system of an internal combustion engine, the fuel injector configured to inject fuel directly into the combustion chamber of the internal combustion engine, the fuel injection valve comprising:
an actuator (6), an excitation of which achieves a lifting movement of a valve needle (15) (Column 3, lines 53-62), as a result of which an actuation of a valve closing body (tip of the needle valve), which together with a valve seat (13) surface forms a sealing seat, is enabled (Column 3, lines 55-59);
an inlet side inlet connection (Examiner’s Annotated Figure 1) for a supply of fuel (The limitation is interpreted as a recitation of intended use, and therefore afforded limited patentable weight; The filter is for receiving a supply of fuel);
a sealing ring surrounding the inlet connection on the inlet connection (Examiner’s Annotated Figure 1);
a plastic overmolding (The cross-hatching appears to depict that the overmolding is a plastic material) which forms at least part of a valve housing (Figure 2, The overmolding houses the valve and valve body); and
a support ring (Examiner’s Annotated Figure 1) which engages under the sealing ring and rests directly and only on an upper end face of the overmolding facing the sealing ring (Examiner’s Annotated Figure 1), so that an axial support of the sealing ring is provided indirectly via the overmolding (The structure provides for the claimed result), wherein axial forces are transmitted by the sealing ring into the plastic overmolding normal to the conical surface (As best understood, the forces are transmitted with a normal element, due to the shape of the overmolding), wherein the support ring is supported on a conically extending shoulder (Examiner’s Annotated Figure 1, The support ring is supported on the shoulder, as the overmolding rests on the shoulder, and the support ring rests on the overmolding), wherein the inlet connection is made of metal (Figure 2; The cross hatching depicts a metal material; See MPEP 608.02 IX) and includes the conically extending shoulder (Examiner’s Annotated Figure 1), wherein the upper end face of the plastic overmolding and the conically extending shoulder of the inlet connection form a peripheral, uniform, upper slanted end of the valve housing (Figure 2), but fails to disclose that the upper end face of the plastic overmolding and the conically extending shoulder of the inlet connection extend with the same inclination.
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 device of Fukutomi to feature the surfaces having the same inclination since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Fukutomi would not operate differently with the inclination and since the surfaces are intended to have an inclination, the device would function appropriately having the claimed inclination. Further, it appears that applicant places no criticality on the claimed inclination.
Should it be found that Fukutomi fails to disclose that the overmolding is made of a plastic material.
Wieczorek discloses an injector that includes a plastic overmolding on a metal injector.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Sumida with the disclosures of Wieczorek, providing the overmolding to be of a plastic material, as the configurations were known in the art before the effective filing date of the claimed invention, and the modification would have yielded predictable results, including provision of an injector that may withstand high-pressure and high-temperature operation. Further, it has been held to be within the general skill of a worker in the art to select a known component or material on the basis of suitability for the intended use as a matter of obvious mechanical design expediency. In re Leshin, 125 USPQ 416. Also see MPEP 2144.07. Sinclair & Carroll Co. v. Interchemical Corp. states "Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.
Regarding claim 13, Fukutomi alone or in combination with Wieczorek discloses the fuel injection valve according to claim 12, wherein the upper end face of the plastic overmolding has a conically obliquely extending configuration (Examiner’s Annotated Figure 1, The overmolding extends conically toward the sealing ring).
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Examiner’s Annotated Figure 1
Regarding claim 15, Fukutomi alone or in combination with Wieczorek discloses the fuel injection valve according to claim 13, wherein the support ring includes a conical inner side which faces toward the upper end face of the plastic overmolding (Examiner’s Annotated Figure 1).
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.
Claim(s) 12, 16 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Sumida (US 5,630,400) in view of Wieczorek.
Regarding claim 12, Sumida discloses a fuel injection valve for a fuel injection system of an internal combustion engine, the fuel injector configured to inject fuel directly into the combustion chamber of the internal combustion engine, the fuel injection valve comprising:
an actuator (22), an excitation of which achieves a lifting movement of a valve needle (12) (Column 6, lines 28-39), as a result of which an actuation of a valve closing body (tip of the needle valve), which together with a valve seat (10) surface forms a sealing seat, is enabled (Column 6, lines 35-40);
an inlet side inlet connection (Examiner’s Annotated Figure 2) for a supply of fuel (The limitation is interpreted as a recitation of intended use, and therefore afforded limited patentable weight; The filter of the connection is for receiving a supply of fuel);
a sealing ring (25) surrounding the inlet connection on the inlet connection (Figure 3);
a overmolding (Examiner’s Annotated Figure 2) which forms at least part of a valve housing (Figure 3);
and a support ring (Examiners Annotated Figure 2) which engages under the sealing ring and rests directly and only on an upper end face of the overmolding facing the sealing ring (Examiner’s Annotated Figure 2), so that an axial support of the sealing ring is provided indirectly via the overmolding (The structure provides for the claimed result), wherein axial forces are transmitted by the sealing ring into the plastic overmolding normal to the conical surface (As best understood, the forces are translated normal to the conically extending upper end face),
wherein the support ring (Examiner’s Annotated Figure 2) is supported on a conically extending shoulder, wherein the inlet connection is made of metal (Figure 2; The cross hatching depicts a metal material; See MPEP 608.02 IX) and includes the conically extending shoulder (Examiner’s Annotated Figure 2), wherein the upper end face of the plastic overmolding and the conically extending shoulder of the inlet connection extend with the same inclination and form a peripheral, uniform, upper slanted end of the valve housing (The conically extending upper end face and the shoulder extend parallel to one another, with the same inclination).
Sumida fails to disclose that the overmolding is made of a plastic material.
Wieczorek discloses an injector that includes a plastic overmolding on a metal injector.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Sumida with the disclosures of Wieczorek, providing the overmolding to be of a plastic material, as the configurations were known in the art before the effective filing date of the claimed invention, and the modification would have yielded predictable results, including provision of a injector that may withstand high-pressure and high-temperature operation. Further, it has been held to be within the general skill of a worker in the art to select a known component or material on the basis of suitability for the intended use as a matter of obvious mechanical design expediency. In re Leshin, 125 USPQ 416. Also see MPEP 2144.07. Sinclair & Carroll Co. v. Interchemical Corp. states "Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.
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Examiner’s Annotated Figure 2
Regarding claim 16, Sumida in view of Wieczorek discloses the fuel injection valve according to claim 12, wherein the upper end face of the plastic overmolding is configured such that it extends flat at right angles to a longitudinal axis of the valve, onto which the support ring is placed flat with its underside (Examiner’s Annotated Figure 2; The upper end face of the overmolding includes a flat portion, vertical portion and angular portion; The flat portion extends to the central longitudinal axis of the valve).
Regarding claim 21, Sumida in view of Wieczorek discloses the fuel injection valve according to claim 12, wherein at least one peripheral puncture is provided on the outer perimeter of the inlet connection near the upper end face of the plastic overmolding (Examiner’s Annotated Figure 2) into which plastic can penetrate during a final overmolding of the plastic overmolding (The structure provides for the claimed capability) and secures the plastic overmolding against axial displacement relative to the inlet connection (The overmolding is hooked into the puncture, which secures against axial displacement).
Regarding claim 22, Sumida in view of Wieczorek discloses the fuel injection valve according to claim 21, wherein the upper end face of the plastic overmolding has a conical configuration (Examiner’s Annotated Figure 2), wherein a puncture of the at least one peripheral punction, furthest upstream in axial direction is placed at a level of the conically extending upper end face of the plastic overmolding and thus also in an immediate vicinity of the support ring resting on the conical surface (Examiner’s Annotated Figure 2, The elements are placed about the upper level of the housing body, in the claimed vicinity).
Claim(s) 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Sumida (US 5,630,400) in view of Wieczorek and Beckmann (US 2016/0281857).
Regarding claim 17, Sumida in view of Wieczorek discloses the fuel injection valve according to claim 12, where the support ring includes a contact surface for the sealing ring which facing the sealing ring (Figure 3, top surface of support ring), but fails to disclose that the surface is V-shaped in cross- section.
Beckmann discloses an injector support ring (22) that has a v-shaped surface (34) facing a sealing ring (21).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Sumida in view of Wieczorek with the disclosures of Beckmann, replacing the support ring of Sumida with that of Beckmann, thereby providing a support ring (Beckmann, 22) that includes a v-shaped surface facing the sealing ring (Beckmann, Figure 12), in order to provide for effective management of the forces exerted on the sealing ring at varying pressures, as disclosed by Beckmann (Paragraph 37).
Regarding claim 18, Sumida in view of Wieczorek and Beckmann discloses the fuel injection valve according to claim 17, wherein the V-shaped contact surface of the support ring includes two flanks (Examiner’s Annotated Figure 3) on which two force components act via the sealing ring when fluid pressure is applied (The opposing vertical and radial forces act on the flanks via the sealing ring).
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Examiner’s Annotated Figure 3
Regarding claim 19, Sumida in view of Wieczorek and Beckmann discloses the fuel injection valve according to claim 17, wherein the V-shaped contact surface of the support ring is rounded in a center of the V-shaped contact surface (Beckmann, Figure 12).
Regarding claim 20, Sumida in view of Wieczorek and Beckmann discloses the fuel injection valve according to claim 17, but fails to disclose wherein a radially inner flank of the V-shaped contact surface of the support ring is lower in its axial extension than a radially outer flank of the V-shaped contact surface of the support ring.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to shape the flank as claimed since it has been held that shape is a matter of choice which one of ordinary skill in the art would have found absent persuasive evidence that the shape is critical. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Response to Arguments
Applicant's arguments filed 12/10/2025 have been fully considered but they are not persuasive.
As to Applicant’s position that the prior art fails to disclose the transmission of axial forces as claimed, the alignment of the sealing relative to the components of the device provides for the claimed function. If a force is exerted on the sealing ring, the force will be transmitted into the overmolding, with a normal element.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER R. DANDRIDGE whose telephone number is (571)270-1505. The examiner can normally be reached M-T 9am-7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arthur O. Hall can be reached on (571)270-1814. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CHRISTOPHER R. DANDRIDGE
Primary Examiner
Art Unit 3752
/CHRISTOPHER R DANDRIDGE/Primary Examiner, Art Unit 3752