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 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.
Response to Amendment
Amendments to the claims, filed on 11/20/2025, are accepted and do not introduce new matter.
Regarding Double Patenting rejections, Applicant stated their intent to file a Terminal Disclaimer once other rejections are withdrawn. Therefore, as of now, Double Patenting rejections are maintained.
Previous 112(b) rejections of claims 13 and 15 are overcome by amendment.
Claims 12-22 are pending; claims 1-11 were previously cancelled.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 12, 14, 17 19 and 20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4 and 10 of U.S. Patent No. 12,264,644 in view of Liskow (DE 10 2008 041 544 A1):
18/260,363
U.S. Patent 12,264,644
12. A gas injector for injecting a gaseous fuel, comprising: a magnetic actuator having an armature, an inner pole, and a coil; a closing element, which releases and closes a gas path at a valve seat, the armature being connected to the closing element; a sealed lubricant chamber which is filled with a lubricant and in which the armature is situated, the lubricant ensuring a lubrication of the armature; and a first flexible sealing element and a second flexible sealing element (obvious, see statement below) which seal the lubricant chamber from the gas path.
17. The gas injector as recited in claim 12, further comprising: at least two guide regions for guiding the closing element, which are both situated in the lubricant chamber.
19. The gas injector as recited in claim 12, wherein a brake device is situated in the lubricant chamber, which is configured to decelerate the closing element in a restoring operation of the gas injector from the open to the closed state.
1. A gas injector for injecting a gaseous fuel, comprising: a magnetic actuator including an armature, an inner pole, and a coil; a closing element including a valve needle, wherein the closing element opens and closes a gas path at a sealing seat, wherein the armature is connected to the closing element; a closed lubricant chamber filled with a lubricant and in which the armature is disposed, wherein the lubricant lubricates the armature; a flexible sealing element which seals the lubricant chamber with respect to the gas path; a restoring element which resets the closing element to a closed starting position; a first needle guide which is formed between a guide sleeve and the valve needle; and a braking device configured to slow the closing element during a resetting operation of the gas injector from an open state to a closed state is disposed in the lubricant chamber; wherein the first needle guide is disposed in the lubricant chamber radially inside the flexible sealing element; and wherein the restoring element is disposed in the lubricant chamber at least partly, inside the flexible sealing element.
4. The gas injector according to claim 1, further comprising a second needle guide which is formed in the lubricant chamber between the valve needle and the guide sleeve
14. The gas injector as recited in claim 12, wherein the first flexible sealing element is a first bellows, and the second flexible sealing element is a second bellows.
2. The gas injector according to claim 1, wherein the flexible sealing element is a metal bellows or a plastic bellows or a membrane or a rubber element.
12. A gas injector for injecting a gaseous fuel, comprising: a magnetic actuator having an armature, an inner pole, and a coil; a closing element, which releases and closes a gas path at a valve seat, the armature being connected to the closing element; a sealed lubricant chamber which is filled with a lubricant and in which the armature is situated, the lubricant ensuring a lubrication of the armature; and a first flexible sealing element and a second flexible sealing element (obvious, see statement below) which seal the lubricant chamber from the gas path.
19. The gas injector as recited in claim 12, wherein a brake device is situated in the lubricant chamber, which is configured to decelerate the closing element in a restoring operation of the gas injector from the open to the closed state.
20. A gas injector for injecting a gaseous fuel, comprising: a magnetic actuator having an armature, an inner pole, and a coil; a closing element, which releases and closes a gas path at a valve seat, the armature being connected to the closing element; a sealed lubricant chamber which is filled with a lubricant and in which the armature is situated, the lubricant ensuring a lubrication of the armature; and a first flexible sealing element and a second flexible sealing element (obvious, see statement below) which seal the lubricant chamber from the gas path; wherein a brake device is situated in the lubricant chamber, which is configured to decelerate the closing element in a restoring operation of the gas injector from the open to the closed state; wherein the brake device has a brake stud and an elastic brake element, the brake stud and the elastic brake element being able to be brought into an effective connection with the closing element and/or the armature during the restoring operation.
10. A gas injector for injecting a gaseous fuel, comprising: a magnetic actuator including an armature, an inner pole, and a coil; a closing element including a valve needle, wherein the closing element opens and closes a gas path at a sealing seat, wherein the armature is connected to the closing element; a closed lubricant chamber filled with a lubricant and in which the armature is disposed, wherein the lubricant lubricates the armature; a flexible sealing element which seals the lubricant chamber with respect to the gas path; a restoring element which resets the closing element to a closed starting position; a first needle guide which is formed between a guide sleeve and the valve needle; wherein the first needle guide is disposed in the lubricant chamber radially inside the flexible sealing element; wherein the restoring element is disposed in the lubricant chamber at least partly, inside the flexible sealing element; and a braking device configured to slow the closing element during a resetting operation of the gas injector from an open state to a closed state is disposed in the lubricant chamber, the braking device including a brake bolt (equivalent of a stud), a damping chamber which is filled with lubricant and is in fluid communication with the lubricant chamber, and an elastic brake element, wherein the brake bolt and the elastic brake element can be brought into operative connection with the closing element during the resetting operation of the gas injector and the brake bolt is configured to force lubricant out of the damping chamber into the lubricant chamber during the resetting operation of the gas injector to damp a resetting of the brake bolt into a closed state.
However, Patent 12,264,644 does not disclose the injector having a second flexible sealing element.
Liskow teaches a fuel injector with a first and second flexible sealing element (see two bellows 23 in Fig 1, provided by Examiner); wherein the two flexible sealing elements seal a lubricant chamber (13).
It would have been obvious to one ordinary skill in the art to modify Patent 12,264,644 with Liskow such that there are two flexible sealing elements that define the lubricant chamber in order to enclose both ends of the closing element (18) in the lubricant, which offers heat dissipation (as disclosed in par 0016 in the translation provided by Examiner). This would assure the closing element maintains a stable temperature.
Claim Rejections - 35 USC § 112
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 18 and 20-22 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 18 discloses: “wherein the preloaded spring is situated within the second flexible sealing element, and the lubricant chamber is located radially outside an interior volume of the second flexible sealing element while being sealed by the first and second flexible sealing elements” However, although Fig 3 shows the preloaded spring 40 being situated within the second flexible sealing element 52 and the lubricant chamber 4 located radially outside an interior volume of the second flexible sealing element, the lubricating chamber is not sealed by the second flexible sealing element 52 as required by claim 18. Instead Fig 3 shows the second flexible sealing element 52 sealing the preloaded spring 40 from the chamber 4. As such, it is unclear how the second flexible sealing element seals the lubrication chamber considering the sealing element is within the chamber itself. This renders the claim indefinite. Furthermore, this contradicts independent claim 12 which specifies that both the first and second sealing elements seal the lubricant chamber. Since the subject matter of claim 18 goes against the subject matter of independent claim 12, any modification to a reference that reads on claim 12 would render it inoperable. As such, Examiner cannot apply prior art at to claim 18 as it stands.
Claim 20 was intended by Applicant to be amended into independent form in order to be rendered allowable, as stated in Applicant’s remarks filed on 11/20/2025. However, the claim was not amended properly, as it still states that is dependent on claim 19; whereby claim 19 depends on independent claim 12. As such, claim 20 still depends on independent claim 12 and it is not correctly written in independent form. Therefore, the magnetic actuator, the closing element, the sealed lubricant chamber, the first flexible sealing element, the second flexible sealing element, and the brake device are introduced in independent claim 12 and in claim 20, which renders these limitations as double inclusion, which renders the claim indefinite. Applicant is advised to remove the language of “as recited in claim 19” form claim 20.
Claims 21-22 are indefinite for depending on claim 20.
Claim Rejections - 35 USC § 102
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 12-17 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liskow (DE 10 2008 041 544 A1). Note: all references in parenthesis hereafter are referencing the translation that was previously provided by Examiner.
Regarding claim 12, Liskow teaches a gas injector (injection seen in Fig 1) for injecting a gaseous fuel (Par 0009 discloses the device working with a gaseous medium), comprising:
a magnetic actuator (defined by 31, 33 and 34) having an armature (34), an inner pole (33), and a coil (31);
a closing element (defined by valve needle 18 and closing body 19), which releases and closes a gas path (path defined from chamber 12 to valve opening 29) at a valve seat (valve seat 20 opens or closes the gas path depending on the position of 19), the armature being connected to the closing element (Par 0014 discloses the armature 34 sitting on and being immovable with respect to the valve needle 18 and being, i.e. 34 and 18 are connected);
a sealed lubricant chamber (central valve chamber 13) which is filled with a lubricant (Par 0016 discloses the chamber 13 being filled with an oil for lubrication) and in which the armature is situated (as seen in Fig 1, the armature 34 is inside the chamber 13), the lubricant ensuring a lubrication of the armature (as disclosed in Par 0016); and
a first flexible sealing element (bellows 23 - bottom one) and a second flexible sealing element (bellows 23 – upper one) which seal the lubricant chamber from the gas path (as disclosed in Par 0015, both bellows 23 delimit the lubricant chamber 13 which isolates the lubricant from the gas path located outside of chamber 13, see Fig 1).
Regarding claim 13, Liskow teaches the gas injector as recited in claim 12, further comprising: a preloaded spring (compression spring 36, i.e. preloaded), which exerts a predefined external force on the second flexible sealing element (23) to apply a predefined pressure to the lubricant in the sealed lubricant chamber (the spring 36 applies a force to the armature 34 which is inside the lubricant; thus any movement of the armature would exert a force on both flexible sealing elements, including the second flexible sealing element 23).
Regarding claim 14, Liskow teaches the gas injector as recited in claim 12, wherein the first flexible sealing element is a first bellows, and the second flexible sealing element is a second bellows (both flexible sealing elements 23 are disclosed as bellows).
Regarding claim 15, Liskow teaches the gas injector as recited in claim 14, further comprising: a preloaded spring (36),wherein the second bellows is connected to the preloaded spring via a plate (the spring 36 is connected to the upper bellow 23 via plate 40 through pole 33 and housing 25; Examiner notes that the claim does not require that the second bellows, the spring and the plate are directly connected).
Regarding claim 16, Liskow teaches the gas injector as recited in claim 14, wherein the first bellows has the same mean diameter as the second bellows and the same number of bellows folds (as seen in Fig 1, both bellows 23 share the same structure, i.e. same diameters and same number of folds).
Regarding claim 17, Liskow teaches the gas injector as recited in claim 12, further comprising: at least two guide regions (shown below) for guiding the closing element, which are both situated in the lubricant chamber (as seen below, both regions are inside the lubricant chamber 13).
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Regarding claim 19, Liskow teaches the gas injector as recited in claim 12, wherein a brake device (defined by stepped bore 35, 37 and the surface area of the armature 34 that faces the surface area of the pole 33) is situated in the lubricant chamber (as seen in Fig 1, all of these features are located inside chamber 13), which is configured to decelerate the closing element in a restoring operation of the gas injector from the open to the closed state (as disclosed in Par 0016, the brake device acts as a hydraulic damper on the stop surfaces of armature 34 and pole 33; wherein damping in this context refers to deceleration if the armature as it moves to the closing state, wherein the armature is connected to the closing element 18, thus reading on claim language).
Allowable Subject Matter
Claims 20-22 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Regarding claim 20, the prior art does not teach an injector a gas injector, for injecting a gaseous fuel, comprising: a magnetic actuator having an armature, an inner pole, and a coil; a closing element, which releases and closes a gas path at a valve seat, the armature being connected to the closing element; a sealed lubricant chamber which is filled with a lubricant and in which the armature is situated, the lubricant ensuring a lubrication of the armature; and a first flexible sealing element and a second flexible sealing element which seal the lubricant chamber from the gas path, wherein a brake device is situated in the lubricant chamber, which is configured to decelerate the closing element in a restoring operation of the gas injector from the open to the closed state, wherein the brake device has a brake stud and an elastic brake element, the brake stud and the elastic brake element being able to be brought into an effective connection with the closing element and/or the armature during the restoring operation.
Although related art, Liskow teaches a brake device, the device does not have a brake stud and an elastic brake element that are able to be brought into connection with the with the closing element and/or the armature during the restoring operation. Adding these features to the brake device of Liskow would require significant change to the structure of its device, plus would be considered hindsight rationale since the prior art is silent with respect to this feature. Other related art, Filippi et al (U.S. 2017/0101966) also fails to teach these features, and in fact, fails to teach a brake device altogether.
Claims 21-22 are also objected to as being allowable since they depend on claim 20.
Response to Arguments
Applicant's arguments filed 11/20/2025 have been fully considered but they are not persuasive.
Regarding prior art rejection of independent claim 12, Applicant argues that Liskow does not provide continuous lubrication of the armature and other part of the invention. Applicant notes that Liskow “discloses a chamber 13 that contains a little-compressible medium, preferably a liquid (oil) for hydraulic damping and pressure balancing, but nowhere does Liskow disclose or suggest providing a continuous lubrication.” Examiner respectfully disagrees. Nowhere in the claims is stated that the device provides continuous lubrication to the armature and other parts. As such, this argument is non-commensurate with claim language. Furthermore, as acknowledged by Applicant, Liskow traches that the chamber 13 includes oil. As such, the oil in the chamber will inevitably lubricate the armature 34 and any other parts within the chamber. Thus, accomplishing the function in question. For these reasons, Examiner maintains the current rejection.
Applicant did not make any further arguments against Liskow.
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 JUAN C BARRERA whose telephone number is (571)272-6284. The examiner can normally be reached on M-F Generally 10am-4pm and 6-8pm.
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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/JUAN C BARRERA/
Examiner, Art Unit 3752
/ARTHUR O. HALL/Supervisory Patent Examiner, Art Unit 3752