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 .
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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 13 Jan 2026 has been entered.
Response to Arguments
Applicant's arguments filed 13 Jan 2026 have been fully considered but they are not persuasive.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Here, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Heimann with the system as taught by Oglesby et al for the advantage of combining prior art elements according to known methods (the posts of Oglesby et al with the system of Heimann) to yield predictable results (to energize the posts and provide a stronger attraction for the shuttle to seal directly to).
Applicant argues that Heimann’s use of permanent magnets teaches directly away from the combination. However, Heimann’s recognizing an advantage of the structure of the valve does not constitute a teaching away, as preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. Therefore, even if Heimann provides an advantage to using permanent magnets providing the structure of the valve as taught by Oglesby would provide the advantage of combining prior art elements according to known methods (the posts of Oglesby et al with the system of Heimann) to yield predictable results (to energize the posts and provide a stronger attraction for the shuttle to seal directly to).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., sealing the pressure orifice by direct magnetic attraction of the shuttle to the energized post itself as the sealing mechanism or that the pressure post and pressure orifice inlet jointly act as the magnetic pole face that performs both actuation and sealing) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant further argues that the modification of the valve of Heimann to provide the teachings of Oglesby et al would require substantial redesign that would change the principle of operation of Heimann. However, the valve system of Heimann, as modified by Oglesby et al would continue to provide fluid flow control through the valve, thereby not altering the principle of operation of Heimann. Additionally, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Last, Applicant argues that the prior art fails to teach or disclose pressure posts formed from ferromagnetic material, and electromagnetic coils that supply magnetic charge to the pressure post and pressure orifice inlet, causing sealing. However, as discussed below, Oglesby et al teach a bistable valve (Page 6, lines 29-30) assembly where the first (8) and second pressure posts (9) are formed from magnetic material (Col 10, lines 24-26), where the first electromagnetic coil (37a), when energized, supplies magnetic charge to the first post and first pressure orifice inlet (page 12, line 28-page 13, line 6), said magnetic charge moving the magnetic shuttle to a first end of the interior cavity sealing the first pressure orifice (page 12, line 28-page 13, line 6) and where the second electromagnetic coil (37b), when energized, supplies magnetic charge to the second post and second pressure orifice inlet (Figure 2), said magnetic charge moving the magnetic shuttle to a second end of the interior cavity sealing the second pressure orifice (page 12, line 28-page 13, line 6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Heimann with the system as taught by Oglesby et al for the advantage of combining prior art elements according to known methods (the posts of Oglesby et al with the system of Heimann) to yield predictable results (to energize the posts and provide a stronger attraction for the shuttle to seal directly to).
Massie teaches an assembly (Figure 1) with a first (3) and second (4) pressure post (Figure 1) which are formed of a ferromagnetic material (Col 3, lines 62-63).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the application to modify the first and second pressure posts of Oglesby et al to be made from a ferromagnetic material since selection of a known material on the basis of its suitability for an intended use involves only routine skill in the art. The motivation for doing so would be to provide a commonly used material that is inexpensive and durable, and prone to withstand corrosion, as taught by Massie (abstract).
Therefore, these arguments are unpersuasive.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim(s) 1, 5-7, and 12-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heimann (US 3,809,123) in view of Oglesby et al (WO 00/23740; provided by Applicant on the IDS dated 27 Feb 2024) in further view of Massie (US 3754154).
Regarding Claim 1, Heimann discloses a bistable valve assembly (Figure 1). The assembly comprising:
an interior cavity (within 1 in Figure 1);
a first pressure post (2) having a first pressure orifice inlet (abstract) in fluidic communication with the interior cavity (Figure 1);
a second pressure post (3) having a second pressure orifice inlet (abstract) in fluidic communication with the interior cavity (Figure 1);
a third pressure orifice outlet (4; Col 2, lines 28-44) in fluid communication with the interior cavity (Figure 1) and positioned between said first and second pressure orifices (Figure 1 between 2 and 3);
a magnetic shuttle (8) movable within the interior cavity (Figure 1) having a first membrane (9) on a first end thereof (upwards in the orientation of Figure 1) and a second membrane (10) on a second end thereof (downwards in the orientation of Figure 1);
a first electromagnetic coil (16) disposed about the first pressure post (2; Col 2, lines 25-26); and
a second electromagnetic coil (17) disposed about the second pressure post (3; Col 2, lines 25-26);
wherein actuation of the first and second magnetic coils cause displacement of the magnetic shuttle (Col 2, lines 45-52),
but fails to expressly disclose where the first and second pressure posts are formed from ferromagnetic material,
wherein the first electromagnetic coil, when energized, supplies magnetic charge to the first post and first pressure orifice inlet, said magnetic charge moving the magnetic shuttle to a first end of the interior cavity sealing the first pressure orifice;
wherein the second electromagnetic coil, when energized, supplies magnetic charge to the second post and second pressure orifice inlet, said magnetic charge moving the magnetic shuttle to a second end of the interior cavity sealing the second pressure orifice.
Oglesby et al teach a bistable valve (Page 6, lines 29-30) assembly where the first (8) and second pressure posts (9) are formed from magnetic material (Col 10, lines 24-26),
where the first electromagnetic coil (37a), when energized, supplies magnetic charge to the first post and first pressure orifice inlet (page 12, line 28-page 13, line 6), said magnetic charge moving the magnetic shuttle to a first end of the interior cavity sealing the first pressure orifice (page 12, line 28-page 13, line 6) and
where the second electromagnetic coil (37b), when energized, supplies magnetic charge to the second post and second pressure orifice inlet (Figure 2), said magnetic charge moving the magnetic shuttle to a second end of the interior cavity sealing the second pressure orifice (page 12, line 28-page 13, line 6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Heimann with the system as taught by Oglesby et al for the advantage of combining prior art elements according to known methods (the posts of Oglesby et al with the system of Heimann) to yield predictable results (to energize the posts and provide a stronger attraction for the shuttle to seal directly to).
Massie teaches an assembly (Figure 1) with a first (3) and second (4) pressure post (Figure 1) which are formed of a ferromagnetic material (Col 3, lines 62-63).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the application to modify the first and second pressure posts of Oglesby et al to be made from a ferromagnetic material since selection of a known material on the basis of its suitability for an intended use involves only routine skill in the art. The motivation for doing so would be to provide a commonly used material that is inexpensive and durable, and prone to withstand corrosion, as taught by Massie (abstract).
Regarding Claim 5, Oglesby et al teach where one of the first (37a) and second electromagnetic coils (37b), when energized, supplies an attractive magnetic charge and the other of the first and second electromagnetic coils, when energized, supplies a repellant magnetic charge (page 12, line 28-page 13, line 6).
Regarding Claim 6, Oglesby et al teach where the first electromagnetic coil (37a), when energized, supplies an attractive magnetic charge and the second electromagnetic coil (37b), when energized, supplies a repellant magnetic charge, said attractive and repellant charges cooperating to move the magnetic shuttle to a first end of the interior cavity sealing the first pressure orifice (page 12, line 28-page 13, line 6).
Regarding Claim 7, Oglesby et al teach where the first electromagnetic coil (37a), when energized, supplies a repellant attractive magnetic charge and the second electromagnetic coil (37b), when energized, supplies an attractive magnetic charge, said attractive and repellant charges cooperating to move the magnetic shuttle to a second end of the interior cavity sealing the second pressure orifice (page 12, line 28-page 13, line 6).
Regarding Claim 12, Oglesby et al teach where one of the first (37a) and second electromagnetic coils (37b), when energized, supplies an attractive magnetic charge and the other of the first and second electromagnetic coils, when energized, supplies a repellant magnetic charge (page 12, line 28-page 13, line 6).
Regarding Claim 13, Oglesby et al teach where the first electromagnetic coil (37a), when energized, supplies an attractive magnetic charge and the second electromagnetic coil (37b), when energized, supplies a repellant magnetic charge, said attractive and repellant charges cooperating to move the magnetic shuttle to a first end of the interior cavity sealing the first pressure orifice (page 12, line 28-page 13, line 6).
Regarding Claim 14, Oglesby et al teach where the first electromagnetic coil (37a), when energized, supplies a repellant attractive magnetic charge and the second electromagnetic coil (37b), when energized, supplies an attractive magnetic charge, said attractive and repellant charges cooperating to move the magnetic shuttle to a second end of the interior cavity sealing the second pressure orifice (page 12, line 28-page 13, line 6).
Regarding Claim 15, Heimann discloses where the first post (2) and the second post (3) further comprising at least one stabilizing feature (the flange of the post extends to housing 1).
Regarding Claim 16, Heimann discloses where the interior valve cavity (within 1 in Figure 1) is located between the first and the second post (Figure 1).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heimann (US 3,809,123) in view of Oglesby et al (WO 00/23740; provided by Applicant on the IDS dated 27 Feb 2024) in further view of Massie (US 3754154) in further view of Fukui et al (US 2003/0120157).
Regarding Claim 8, Heimann, as modified by Oglesby et al and Massie, teach all essential elements but is moot to the magnetic shuttle further comprising: a first and second magnet, each magnet having a first magnetic pole and a second magnetic pole, the first magnetic poles facing each other and the second magnetic poles facing the first and second posts.
Fukui et al teach a valve assembly (Figure 1A) with a magnetic shuttle (4 generally), the magnetic shuttle further comprising: a first and second magnet (5A and 5B in Figure 3A), each magnet having a first magnetic pole (N) and a second magnetic pole (S), the first magnetic poles (N) facing each other and the second magnetic poles (S) facing the first and second posts (where the posts are disclosed in Oglesby et al).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Heimann as modified by Oglesby et al and Massie with the system as taught by Fukui et al for the advantage of combining prior art elements according to known methods (providing the magnets of Fukui et al with the system of Heimann) to yield predictable results (to interact with coils to move the valve shutter).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE GARDNER whose telephone number is (571)270-0144. The examiner can normally be reached Monday - Friday 8AM-4PM EST.
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 supervisors, KENNETH RINEHART (571-272-4881) or CRAIG SCHNEIDER (571-272-3607) can be reached by telephone. 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.
/NICOLE GARDNER/
Examiner, Art Unit 3753