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 .
Status
This Office Action is in response to the remarks and amendments filed 04/28/2026. Claims 1-6, 8, 10-17 and 19-21 remain pending for consideration on the merits.
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)(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 10-11, 13, 15-17 and 19-21 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Minamida (JP 2015021578 A).
Regarding Claim 10, Minamida teaches a reversing valve [Figs. 1-2] comprising:
a valve housing [1] defining a valve channel along a length thereof;
a discharge inlet assembly comprising first [11] and second [12] discharge ports extending from a surface of the valve housing [¶ 0032; Fig. 1; apparent from inspection];
a reversing assembly comprising:
first [21] and second [23] reversing ports extending from the surface of the valve housing [¶ 0035; Figs. 1-2]; and
a suction port [22] extending from the surface of the valve housing between the first and second reversing ports [¶ 0035; Figs. 1-2; apparent from inspection]; and
an actuator assembly [3] slidably disposed within the valve channel, the actuator assembly comprising:
a slider [portion of 3 surrounding 31] defining a slider cavity [31] [¶ 0036; valve body 3 is axially slideable within the cavity of body 1, such that passage 31 may be positioned over the first reversing port and the suction port (Fig. 1), or the passage 31 may be positioned over the second reversing port and the suction port (Fig. 2)]; and
an actuator seat [remaining portion of 3] defining a slider opening [Fig. 1; the actuator assembly 3 defines portion 31 carved out within the block portion, wherein portion 31 may provide connection to port 21, likened to a first slider opening of the instant Application, or portion 31 may provide connection to port 23, likened to a second slider opening of the instant Application], through which a portion of the slider is disposed [Fig. 1; apparent from inspection that sliding portion 31 is carved out of the block portion 3],
wherein the actuator assembly is selectively positionable between a first position [Fig. 2], wherein the first discharge port [11] is fluidly connected to the first reversing port [21; via 32] to define a discharge path [¶ 0047] and the suction port [22] is fluidly connected to the second reversing port [23] by the slider cavity [31] to define a suction path [Fig. 2; apparent from inspection], and a second position [Fig. 1], wherein the second discharge port [12] is fluidly connected to the second reversing port [23; via 33], wherein the discharge path [33] directly contacts the actuator seat [Fig. 1; path 33 is disposed in the part of the block portion 3 not making up the suction path 31, thus contacting the actuator seat] and the suction path separately directly contacts the slider to thermally insulate the discharge path from the suction path [Fig. 2; apparent from inspection that both discharge paths 32 and 33 are not in contact with path 31].
Regarding Claim 11, Minamida teaches the reversing valve of claim 10 above and Minamida teaches wherein the actuator seat defines a first discharge channel [32] and a second discharge channel [33], wherein the first discharge channel fluidly connects the first discharge port [11] to the first reversing port [21] when the actuator assembly is in the first position [Fig. 2], and wherein the second discharge channel fluidly connects the second discharge [12] port to the second reversing port [23] when the actuator assembly is in the second position [Fig. 1].
Regarding Claim 13, Minamida teaches the reversing valve of claim 10 above and Minamida teaches wherein the slider cavity [31] fluidly connects the first reversing port [21] to the suction port [22] when the actuator assembly is in the second position [Fig. 1].
Regarding Claim 15, Minamida teaches a reversing valve [Figs. 1-3] comprising:
a first reversing port [21];
a second reversing port [23];
a discharge port [4a, 4b] for providing a discharge flow to one of the first and second reversing ports [¶ 0006-0007; See Fig. 3, providing a single outlet for ports 4a and 4b when connected to either reversing ports 21 and 23];
a suction port [22] for receiving a suction flow from one of the first and second reversing ports [¶ 0037; Figs. 1-2; via pathway 31]; and
an actuator assembly [3], comprising
a slider [portion of 3 surrounding 31] defining a slider cavity [31] [¶ 0036; valve body 3 is axially slideable within the cavity of body 1]; and
an actuator seat [remaining portion of 3] defining a slider opening [Fig. 1; the actuator assembly 3 defines portion 31 carved out within the block portion, wherein portion 31 may provide connection to port 21, likened to a first slider opening of the instant Application, or portion 31 may provide connection to port 23, likened to a second slider opening of the instant Application], through which a portion of the slider is disposed [Fig. 1; apparent from inspection that sliding portion 31 is carved out of the block portion 3],
wherein the actuator assembly is selectively positionable between a first position [Fig. 2], wherein the first discharge port [11] is fluidly connected to the first reversing port [21; via 32] to define a discharge path [32] [¶ 0047] and the suction port [22] is fluidly connected to the second reversing port [23] by the slider cavity [31] to define a suction path [Fig. 2; apparent from inspection], wherein the discharge path [32] directly contacts the actuator seat [Fig. 1; path 32 is disposed in the part of the block portion 3 not making up the suction path 31, thus contacting the actuator seat], and the suction path separately directly contacts the slider to thermally insulate the discharge path from the suction path [Fig. 2; apparent from inspection that both discharge paths 32 and 33 are not in contact with path 31].
Regarding Claim 16, Minamida teaches the reversing valve of claim 15 above and Minamida teaches wherein the actuator assembly [3] is selectively positionable in a second position [Fig. 1], in which the discharge port [4a, 4b] provides the discharge flow to the second reversing port [23; via 33] and the first reversing port [21] provides the suction flow to the suction port [22; via 31].
Regarding Claim 17, Minamida teaches the reversing valve of claim 15 above and Minamida teaches wherein the actuator assembly is constructed from a thermally insulating material [¶ 0060-0061; Minamida describes utilizing steel and resin; however Minamida emphasizes selecting other materials providing that their thermal conductivity is preferably low (i.e. utilizing a thermally insulating material)].
Regarding Claim 19, Minamida teaches the reversing valve of claim 15 above and Minamida teaches wherein the actuator assembly [3] includes a baffle [wall portions of 3] configured to separate the discharge flow from the suction flow [¶ 0036-0037; flowpaths 31, 32 and 33 are separated within 3; therefore, the structure is considered to be made of baffles since they merely separate the suction and discharge flows].
See alternative 103 rejection below.
Regarding Claim 20, Minamida teaches the reversing valve of claim 15 above and Minamida teaches wherein the discharge port is constructed with a tapering diameter configured to increase or decrease a velocity of the discharge flow [¶ 0039; Figs. 1-2; apparent from inspection that flow paths 32 and 33 towards discharge port 4a, 4b is tapered].
Regarding Claim 21, Minamida teaches the reversing valve of claim 15 above and Minamida teaches wherein the slider is constructed from a thermally insulating material [¶ 0061-0062; Minamida explains that the valve body and seat may be made of certain materials, however other suitable materials may be used providing a preferable low thermal conductivity].
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.
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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka et al. (US 20190203989 A1, hereinafter “Tanaka”) and further in view of Fröhling et al. (US 20110036117 A1, hereinafter “Frohling”).
Regarding Claim 1, Tanaka teaches a vapor compression system [Fig. 1; ¶ 0042] comprising:
an indoor heat exchanger [5];
an outdoor heat exchanger [3];
a compressor [1] having an inlet [1a] fluidly connected to a suction flow and an exit [1b] fluidly connected to a discharge flow [Fig. 1; apparent from inspection];
a first valve [11] selectively positionable to fluidly connect the discharge flow to one of the indoor and outdoor heat exchangers [3] [Fig. 1; apparent from inspection valve 11 may lead to heat exchanger 3], wherein the first valve is a reversing valve including three open ports [¶ 0048-0049; Fig. 2; valve 11 comprises at least ports P1, P2 and P3, wherein the valve may reverse between positions linking P1 to P2 or P1 to P3]; and
a second valve [12] selectively positionable to fluidly connect the suction flow to one of the indoor and outdoor heat exchangers [5] [Fig. 1; apparent from inspection valve 12 may lead from heat exchanger 5].
While Tanaka discloses that the second valve is a three-way valve [¶ 0050], Tanaka does not explicitly teach wherein the second valve is a passive three-way valve.
However, Frohling teaches an HVAC system [Figs. 8-9] comprising a compressor [14], a plurality of heat exchangers [11, 12, 13] operating as either condensers or evaporators depending on the operation mode [¶ 0098]. The system further comprises a first valve [41] downstream of the compressor to direct fluid flow towards the heat exchangers depending on the desired heating or cooling operation [¶ 0114], as well as a second valve [21] that may be a passive valve, wherein fluid may be configured to flow towards the compressor from the passive valve [¶ 0115-0116]. Frohling further teaches that the passive valve operates such that the higher pressure side of the valve is closed, thereby providing a means to facilitate flow to the compressor from the appropriate components depending on the desired mode of operation [¶ 0116]. For example, in an operation where liquid refrigerant may be present in the accumulator due to incomplete evaporation, the passive valve provides a means to prevent flow to and from the accumulator, while enabling alternative flow on the lower pressure side, thus providing a required reheat or afterheating power [¶ 0126-0128]. One of ordinary skill in the art could have combined the passive valve as claimed by known methods and that in combination, the passive would perform the same function as it did separately, and one of ordinary skills would have recognized that the results of the combination were predictable i.e. providing a means for refrigerant flow relying on pressure differentials enables the system to flow according to the desired heating/cooling operation and thus provides a required reheat or afterheating power by allowing refrigerant to flow from the necessary component while preventing undesired flow, thereby improving the system [¶ 0126-0128].
Therefore, it is a simple mechanical expedient that would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the assembly of Tanaka to have wherein the second valve is a passive three-way valve, in view of the teachings of Frohling, where the elements could have been combined by known methods, with no change in their respective function, and the combination would have yielded predictable results i.e. providing a means for refrigerant flow relying on pressure differentials enables the system to flow according to the desired heating/cooling operation and thus provides a required reheat or afterheating power by allowing refrigerant to flow from the necessary component while preventing undesired flow, thereby improving the system [¶ 0126-0128].
Regarding Claim 2, Tanaka, as modified, teaches the vapor compression system of claim 1 above and Tanaka teaches wherein the system is configured to operate in a heating mode when the first valve [11] is positioned to fluidly connect the discharge flow to the indoor heat exchanger [5] and the second valve [12] is positioned to fluidly connect the suction flow to the outdoor heat exchanger [3] [¶ 0046].
Regarding Claim 3, Tanaka, as modified, teaches the vapor compression system of claim 1 above and Tanaka teaches wherein the system is configured to operate in a cooling mode when the first valve [11] is positioned to fluidly connect the discharge flow to the outdoor heat exchanger [3] and the second valve [12] is positioned to fluidly connect the suction flow to the indoor heat exchanger [5] [¶ 0045].
Regarding Claim 4, Tanaka, as modified, teaches the vapor compression system of claim 1 above and Tanaka teaches wherein the first valve [11] comprises a first three-way valve, and wherein the second valve [12] comprises a second three-way valve [¶ 0048].
Claim 7 canceled
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka and Frohling as applied to claim 1 above, and further in view of Akitoshi et al. (JP 2022186854A, hereinafter “Akitoshi”).
Regarding Claim 5, Tanaka, as modified, teaches the vapor compression system of claim 1 above but Tanaka does not explicitly teach wherein the first valve comprises a first four-way reversing valve having three open ports and one sealed port, and wherein the second valve comprises a second four-way reversing valve having three open ports and one sealed port.
However, Akitoshi teaches a refrigerant circuit [Fig. 1] comprising a compressor [21], an outdoor heat exchanger [13], an indoor heat exchanger [15] and a first and second four-way valve [81, 82] wherein both four-way valves each have one port sealed [¶ 0053-0054]. Akitoshi teaches that this configuration allows for the valves to switch between different flow states, thereby providing a means to better utilize the system in different scenarios [¶ 0055]. One of ordinary skill in the art could have applied a known technique to a known device (i.e. provide a four-way valve with a three-way valve configuration) and that in combination, the technique would improve the known device in a similar manner, and one of ordinary skills would have recognized that the results of the combination were predictable i.e. the configuration allows for the valves to switch between different flow states, thereby providing a means to better utilize the system in different scenarios, thus improving the system [¶ 0055].
Therefore, it is a simple mechanical expedient that would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the assembly of Tanaka to have wherein the first valve comprises a first four-way reversing valve having three open ports and one sealed port, and wherein the second valve comprises a second four-way reversing valve having three open ports and one sealed port, in view of the teachings of Akitoshi, where applying a known technique to a known device with no change in their respective function, would improve the known device in a similar manner and the combination would have yielded predictable results i.e. the configuration allows for the valves to switch between different flow states, thereby providing a means to better utilize the system in different scenarios, thus improving the system.
Regarding Claim 6, Tanaka, as modified, teaches the vapor compression system of claim 1 above, but Tanaka does not explicitly teach wherein the first valve comprises a first four-way reversing valve having three open ports and one sealed port.
However, Akitoshi teaches a refrigerant circuit [Fig. 1] comprising a compressor [21], an outdoor heat exchanger [13], an indoor heat exchanger [15] and a first and second four-way valve [81, 82] wherein both four-way valves each have one port sealed [¶ 0053-0054]. Akitoshi teaches that this configuration allows for the valves to switch between different flow states, thereby providing a means to better utilize the system in different scenarios [¶ 0055]. One of ordinary skill in the art could have applied a known technique to a known device (i.e. provide a four-way valve with a three-way valve configuration) and that in combination, the technique would improve the known device in a similar manner, and one of ordinary skills would have recognized that the results of the combination were predictable i.e. the configuration allows for the valves to switch between different flow states, thereby providing a means to better utilize the system in different scenarios, thus improving the system [¶ 0055].
Therefore, it is a simple mechanical expedient that would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the assembly of Tanaka to have wherein the first valve comprises a first four-way reversing valve having three open ports and one sealed port, in view of the teachings of Akitoshi, where applying a known technique to a known device with no change in their respective function, would improve the known device in a similar manner and the combination would have yielded predictable results i.e. the configuration allows for the valves to switch between different flow states, thereby providing a means to better utilize the system in different scenarios, thus improving the system.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Tanaka and Frohling as applied to claim 1 above, and further in view of Matsuda et al. (EP 3379176 A1, hereinafter “Matsuda”).
Regarding Claim 8, Tanaka, as modified, teaches the vapor compression system of claim 1 above and Tanaka teaches wherein the system is configured to operate in a heating mode when the first valve [11] is positioned to fluidly connect the discharge flow to the indoor heat exchanger [5] [¶ 0046], wherein the system is configured to operate in a cooling mode when the first valve [11] is positioned to fluidly connect the discharge flow to the outdoor heat exchanger [3] [¶ 0045].
Tanaka does not explicitly teach wherein the system is operable in heating or cooling mode without changing a direction of flow through the indoor and outdoor heat exchangers.
However, Matsuda teaches a refrigeration cycle device [Fig. 1] comprising a compressor [7], indoor heat exchanger [1], outdoor heat exchanger [2], and a flow switching device [3] [¶ 0010]. Matsuda further teaches that the described configuration provides the refrigerant flow in a constant direction, and not reversed both at the time of cooling operations and heating operations [¶ 0024-0026], thus increasing both heat exchanger’s heat transfer performance [¶ 0026]. One of ordinary skill in the art could have applied a known technique to a known device (i.e. providing a system with constant, non-reversed flows through heat exchangers) and that in combination, the technique would improve the known device in a similar manner (i.e. achieve thermal counterflow in both heating and cooling operations), and one of ordinary skills would have recognized that the results of the combination were predictable i.e. increasing the logarithmic mean temperature difference between the refrigerant and air in the heat exchanger(s), thus increasing the heat exchanger’s heat transfer performance and improving the system [¶ 0026].
Therefore, it is a simple mechanical expedient that would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the assembly of Tanaka to have wherein the system is operable in heating or cooling mode without changing a direction of flow through the indoor and outdoor heat exchangers, in view of the teachings of Matsuda, where applying a known technique to a known device with no change in their respective function, would improve the known device in a similar manner and the combination would have yielded predictable results i.e. increasing the logarithmic mean temperature difference between the refrigerant and air in the heat exchanger(s), thus increasing the heat exchanger’s heat transfer performance and improving the system.
Claim 9 canceled
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Minamida as applied to claim 10 above, and further in view of Zhou et al. (US 20080226482 A1, hereinafter “Zhou”).
Regarding Claim 12, Minamida teaches the reversing valve of claim 10 above but Minamida does not explicitly further teach comprising a solenoid valve configured to control the actuator assembly.
However, Zhou teaches a compressor with controlled capacity, comprising a reversing valve [50; Fig. 4] made up of at least a solenoid valve [51] and a slide valve [53] [¶ 0020] wherein the solenoid valve controls the slide valve [¶ 0033], thereby providing a means to move the moveable valve core and enable different valve port configuration [¶ 0033]. One of ordinary skill in the art could have combined the solenoid valve as claimed by known and that in combination, the solenoid valve would perform the same function as it did separately, and one of ordinary skills would have recognized that the results of the combination were predictable i.e. providing a means to move the moveable valve core and enable different valve port configuration, thus improving operation of the system [¶ 0033].
Therefore, it is a simple mechanical expedient that would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the assembly of Minamida to have a solenoid valve configured to control the actuator assembly, in view of the teachings of Zhou where the elements could have been combined by known methods with no change in their respective function and the combination would have yielded predictable results i.e. providing a means to move the moveable valve core and enable different valve port configuration, thus improving operation of the system.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Minamida as applied to claim 10 above, and further in view of Tanaka.
Regarding Claim 14, Minamida teaches the reversing valve of claim 10 above, and while Minamida teaches the practice of utilizing the reversing valve within a compression system [¶ 0034], Minamida does not explicitly teach a reversible vapor compression system, wherein the system is configured to operate in cooling mode when the actuator assembly is in the first position, and wherein the system is configured to operate in heating mode when the actuator assembly is in the second position.
However, Tanaka teaches the use of a reversing slide valve [Figs. 13-16] wherein Figure 13 shows one configuration of the reversing valve during cooling operation and Figure 14 shows another configuration of the reversing valve during heating operation [¶ 0099]. Thus, one of ordinary skill in the art could have combined the reversing valve as claimed by known methods and that in combination, the reversing valve would perform the same function as it did separately, and one of ordinary skills would have recognized that the results of the combination were predictable i.e. providing a means to switch the operation mode of the system, thereby improving the controllability of the system [¶ 0099, 0102].
Therefore, it is a simple mechanical expedient that would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the assembly of Minamida to have a reversible vapor compression system, wherein the system is configured to operate in cooling mode when the actuator assembly is in the first position, and wherein the system is configured to operate in heating mode when the actuator assembly is in the second position, in view of the teachings of Tanaka where the elements could have been combined by known methods with no change in their respective function and the combination would have yielded predictable results i.e. providing a means to switch the operation mode of the system, thereby improving the controllability of the system.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Minamida as applied to claim 15 above, and further in view of Sisk et al. (US 6,289,931 B1).
Claim 18 canceled
Regarding Claim 19, Minamida teaches the reversing valve of claim 15 above and while Minamida teaches that the actuator assembly [3] comprises structure configured to separate the discharge flow from the suction flow [¶ 0036-0037; flowpaths 31, 32 and 33 are separated within 3], an alternative combination may also provide wherein the actuator assembly includes a baffle configured to separate the suction and discharge flows.
Sisk teaches a four-way reversing valve [Figs. 5 and 10-11] to be used in a heat pump [Col. 1, 11-30], wherein the valve comprises a radial drive mechanism for rotating the valve member in order to provide the corresponding ports to a customized radial angle from one another (i.e. 90 degrees, 135 degrees, etc.) [Col. 2, 6-41]. Furthermore, Figs. 5 and 10-11 display a body member [72] configured to separate the flows within the valve [Col. 4, 8-18]. One of ordinary skill in the art could have combined the baffle plate as claimed by known methods and that in combination, the baffle plate would perform the same function as it did separately, and one of ordinary skills would have recognized that the results of the combination were predictable i.e. providing a baffle within a rotating mechanism provides a means for angling the ports at specific degree increments relative to one another, thereby improving operation in certain situations [Col. 1, 17-30 and Col. 2, 6-20].
Therefore, it is a simple mechanical expedient that would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the assembly of Minamida to have wherein the actuator assembly includes a baffle configured to separate the suction and discharge flows, in view of the teachings of Sisk, where the elements could have been combined by known methods with no change in their respective function and the combination would have yielded predictable results i.e. providing a baffle within a rotating mechanism provides a means for angling the ports at specific degree increments relative to one another, thereby improving operation in certain situations.
Response to Arguments
On pages 7-10 of the remarks, Applicant argues that the applied prior art does not anticipate independent claim 10, as the prior art does not name its functional components as a plurality of parts. Upon consultation with additional office personnel, Applicant’s arguments have been considered but are not entirely convincing.
Specifically, Applicant is alleging that the convention of describing the claimed structure as an assembly implies some structural advantage not covered by the prior art reference. Applicant further alleges that the claim limitation “to thermally insulate the discharge path from the suction path”, discloses the technical benefit of describing the structure as an assembly. Respectfully, when considering the broadest reasonable interpretation of the claims, the Examiner considers the prior art, Minamida, to also fulfill the functional advantage of thermally isolating the discharge path from the suction path. Specifically, independent claim 10 dictates that the actuator assembly is slidable between first and second positions, such that discharge and reversing ports form respective suction and discharge paths, wherein the discharge and suctions paths are not in contact (“discharge path contacts the actuator seat and the suction path directly contacts the slider”), such as to provide the advantage of thermal insulations. Upon inspection of Minamida Figs. 1-2, it is apparent that pathways 32 and 33 (discharge pathways) are not in contact with the pathway 31 (suction pathway). Under the claim’s broadest reasonable interpretation, the two separate flows are completely separate and do not mix, and are therefore considered thermally isolated. Therefore, if the alleged advantage of the claimed invention is also present in the prior art, this would generally lead one of ordinary skill in the art to conclude that the proposed advantage is not an effect of the claimed structure. This line of reasoning further reinforces the Examiner’s interpretation of the prior art, in that the claims do not yet explicitly require any sort of disconnect between the components describing the discharge path and the suction path. Therefore the currently applied prior art is considered to contain the structure of the claimed assembly, as the rejection cites portions of the block [3] as the assembly, having subsections [portion of 3 surrounding 31] as well as [remaining portion of 3] annotated as the claimed slider and actuator seat. To surmise, the claim language specifying the thermal advantage does not imply the required structural relationship intended by Applicant, as the broadest reasonable interpretation implies that the device of the prior art provides isolated flowpaths wherein their fluids do not mix, and may therefore also be considered thermally isolated.
While the Examiner generally understands the delineation Applicant is aiming for to distinguish the claimed reversing assembly from the prior art, the claims as they are written, when considering the broadest reasonable interpretation, are considered to be anticipated by the prior art. In the interest of compact prosecution, the Examiner may recommend that Applicant further specify the precise structure to which they are attributing the advantage of “thermal isolation” (For example, Applicant may specify that the assembly comprises further air gaps or dead space in the assembly wherein fluid does not flow, between the slider and the actuator seat, such as to define structure for the alleged advantage of “thermal isolation”). As a good faith testament, please see Annotated Fig. 1 of Minamida below to see further demonstration of the Examiner’s current interpretation regarding the naming convention of the current claim set to define the assembly in light of the prior art. Upon comparison of Annotated Fig. 1 and the independent claim 10, the Examiner resentfully sees no distinguishing claim language that eliminate the block 3 as being considered the reversing assembly. Please also note, that the elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990). Please also note, that a reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)) [MPEP 2131]. Thus the broadest reasonable interpretation of the current claims is considered to be met by the structure of the prior art. Accordingly, the rejection is maintained.
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On pages 10-12 of the remarks, Applicant argues that the Office Action relies upon equivalence to establish a prima facie case of anticipation and is improper. The Remarks further uses this interpretation to state that the previous Office Action concedes that Minamida does not establish a prima facie case of anticipate with respect to claim 10. Applicant’s arguments have been considered but are not persuasive.
Respectfully, the previous Office Action does not recite any case of equivalence in the rejection of the claims themselves, rather Applicant appears to be referring to the supplemental context provided in the Response to argument sections. As stated, the analysis provided in the previous answer is merely to further elaborate on the real differences between the invention and the prior art, and was not explicitly stated in regards to the current claims. Specifically, the analysis was in response to Applicant’s remarks submitted on 12/02/2025. Applicant’s remarks generally discussed other limitations considered by applicant to provide implied structure, however to the Examiner they appeared to overreach the specific limitations of the claims. The Examiner’s response to Applicant’s remarks should not be construed as admission of requiring the 102 rejection to be supported using a case of equivalence (as the rejection itself did not), rather the remarks were intended to respond in good faith to provide Applicant with further possible lines of reasoning in arguendo, solely in the interest of compact prosecution to avoid further amendments that do not appear to be much more when considering their broadest reasonable interpretation. Note, the rejection itself does not yet incorporate any alleged cases of equivalence, rather the claim language itself is broad enough that that the naming conventions and steps of making alone do not appear to delineate the end product invention from the prior art. In general, it seems that the supplemental narrative of the Examiner’s discussion in the Response to arguments section has been misconstrued as necessary explanation not offered in the rejection above. Respectfully, Examiner believes that the current claim language itself does not constitute the structure intended to be implied by Applicant to appropriately delineate the claimed invention from the prior art. Accordingly, the rejection is maintained.
On pages 12-15, Applicant argues that the proposed modification of Tanaka and Frohling would render the prior art invention being modified unsatisfactory for its intended purpose. Applicant’s arguments have been considered but are not persuasive.
Applicant appears to explain the subjective opinion that because Tanaka explicitly teaches the use of actively controlled valves, this therefore implies that the whole device of Tanaka would be unsatisfactory if a passive valve were utilized in replacement. Specifically, prior art suggestions of the claimed invention is not necessarily negated by desirable alternative (i.e. active valve), rather the prior art does not constitute teaching away from another alternative (i.e. passive valve) because the disclosure does not explicitly criticize, discredit, or otherwise discourage the solution claimed. Furthermore, Applicant’s arguments are merely reiterating the function of the prior art without pointing to specific citation that would lead one of ordinary skill in the art to believe that a passive valve could not accomplish the same function via explicit criticism or discredit of a passive valve. Accordingly, the rejection is maintained.
On pages 15-17, Applicant argues the remainder of dependent claims are allegedly allowable at least based on their dependency to an allegedly allowable independent claim. As all independent claims remain rejected above, all claims depending therefrom also remain rejected.
Conclusion
THIS ACTION IS MADE FINAL. 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 KEITH S MYERS whose telephone number is (571)272-5102. The examiner can normally be reached 8:00-4:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jerry-Daryl Fletcher can be reached at (571) 270-5054. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KEITH STANLEY MYERS/Examiner, Art Unit 3763
/JERRY-DARYL FLETCHER/Supervisory Patent Examiner, Art Unit 3763
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