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 .
DETAILED ACTION
This is responsive to the amendment filed 10/10/2025. Applicant amended claims 1 and 12, cancelled claims 5 – 7, 9 – 10, 21 – 24, 27 – 29, added claims 47 – 61; claims 1 – 2, 4, 12 – 13, 15 – 17 and 47 – 61 are pending in this application, claims 1 – 2, 4, 12 – 13, 15 – 17 and 47 – 48 are considered in this action.
Response to Arguments
Applicant's arguments filed 10/10/2025 have been fully considered but they are not persuasive.
Applicant asserts regarding the combination of European Patent Document to Oberbeck et al. (EP 3029324) and US Patent to Tai et al. (9,845,895), “the person of ordinary skill in the art would have had no reasonable expectation of success in making the modification proposed by the Patent Office, and would have had no motivation to make the combination, since the combination would not have worked for its intended purpose”. Applicant argues a person having ordinary skill in the art would not modify the valve disclosed by Oberbeck with the slits taught by Tai et al. because the secondary reference operates “at much higher pressures”. Applicant explains the primary reference operates at “vacuum end pressure (below 10 mbar)” while the secondary reference operates at “pressure drops of at least 3.8 psi or 262 mbar”. Examiner respectfully disagrees.
Applicant references Col. 6, lines 10 – 34 to support the assertion the secondary reference operates “at much higher pressures”. The referenced section of the secondary reference teaches the valve is capable of withstanding external pressure drop of 3.8 psi such as driving in a mountainous areas and taking off in an aircraft. Examiner maintains the external pressure drops in which the valve operates does not take away from the operation of the valve in the internal vacuum conditions created by the pump (Col. 5, Lines 25 – 57). Examiner further maintains the references describe check valves and are in the same filed of endeavor, and a person having ordinary skill in the art would be motivated to adapt the check valve taught by the secondary reference to avoid stiction or obstruction caused by microscopic particles that resist closure flow in the reverse direction.
Regarding claim 49 – 67, the claims are directed to another embodiment of a diaphragm valve comprising an umbrella. This embodiment requires a different field of search from the previously claimed embodiment and would have been restricted if it was initially presented. As such the claims are restricted based on initial presentation and are not considered in this action.
Based on the foregoing rejection of claims 1 – 2, 4, 12 – 13, 15 – 17 is maintained and THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
Information Disclosure Statement
The information disclosure statement filed 10/10/2025 is acknowledged by the examiner.
Election/Restrictions
Newly submitted claims 49 – 61 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
(a) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(b) the prior art applicable to one invention would not likely be applicable to another invention;
(c) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and or 35 U.S.C. 112(a).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 49 – 61 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
Claims 47 – 48 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Regarding claims 47 and 48, it is not clear how the flow can be stopped if “the slits are closely spaced relative to one another”. The slits spaced relative to one another would result in a space between them, it is not clear how this configuration can stop flow of fluid.
The field of invention is well developed and the level of ordinary skill in the art is high but applicant does not offer enough direction as to how a gap between the slits can stop flow of fluid.
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.
Claims 1, 4, 12, 15 – 17 and 47 – 48 are rejected under 35 U.S.C. 103 as being unpatentable over European Patent Document to Oberbeck et al. (EP 3029324) in view of US Patent to Tai et al. (9,845,895).
Regarding claim 1, Oberbeck et al. disclose an elastic diaphragm (16a, Fig. 3) configured to move between an open configuration and a closed configuration, wherein at least a portion of the elastic diaphragm comprises a magnetic material [para. 29], and wherein the elastic diaphragm is configured to transition from the closed configuration to the open configuration when a magnetic field applied to the elastic diaphragm is altered.
Examiner notes the inlet and outlet valves of a positive displacement pump are check valves.
Regarding claim 1, Oberbeck et al. do not disclose elastic diaphragm having one or more slits configured to open the valve.
However, Tai et al. teaching a check valve disclose an elastic valve member (204, Fig. 2C) with a slit (206, Fig. 2A) to open and close the valve.
Therefore, it would have been obvious to the person having ordinary skill in the art at a time prior to the effective filing date of the application to have modified the valve disclosed by Oberbeck et al. with slit in the valve member teaching of Tai et al. to have a valve that resists flow in the reverse direction. Examiner maintains a person having ordinary skill in the art will be familiar with the structural modifications required of the actuator to accommodate a cylindrical valve member.
Regarding claim 4, Oberbeck et al. disclose the diaphragm comprises a ferromagnetic material (magnetizable material) [para. 29].
Regarding claim 12, examiner is interpreting the pump chamber (14, Fig. 1) disclosed by Oberbeck et al. to be a vessel.
Oberbeck et al. do not disclose elastic diaphragm having one or more slits configured to open the valve.
However, Tai et al. teaching a check valve disclose an elastic valve member (204, Fig. 2C) with a slit (206, Fig. 2A) to open and close the valve.
Therefore, it would have been obvious to the person having ordinary skill in the art at a time prior to the effective filing date of the application to have modified the valve disclosed by Oberbeck et al. with slit in the valve member teaching of Tai et al. to have a valve that resists flow in the reverse direction. Examiner maintains a person having ordinary skill in the art will be familiar with the structural modifications required of the actuator to accommodate a cylindrical valve member.
Regarding claim 15, Oberbeck et al. disclose the diaphragm comprises a ferromagnetic material (magnetizable material) [para. 29].
Regarding claim 17, Oberbeck et al. disclose an electromagnet [para. 25] to move the elastic diaphragm.
Regarding claims 47 and 48, in the combination, the valve disclosed by Oberbeck et al. and modified by the teaching of Tai et al. will necessarily have the slits in contact with each other to close the flow through the valve.
Claim 16 is under 35 U.S.C. 103 as being unpatentable over European Patent Document to Oberbeck et al. (EP 3029324) in view of US Patent to Tai et al. (9,845,895) and in further view of US Patent to Nath et al. (10,400,915).
Regarding claim 16, Oberbeck et al. disclose a magnetic actuator (30, 32 Fig. 2) to actuate the valve.
Oberbeck et al. do not disclose the actuator is configured to selectively move the magnet towards and away from the diaphragm.
However, it is well known in the art to use a magnet towards and away from a valve member comprising magnetic material to actuate the valve as shown by Nath et al.
Nath et al. teach an actuator (1910, Fig. 19B) that moves towards and away from a valve member (1904, Fig. 19B) comprising magnetic material (1902, Fig. 19B) to operate the valve.
Therefore, it would have been obvious to the person having ordinary skill in the art at a time prior to the effective filing date of the application to have modified the valve disclosed by Oberbeck et al. with the moveable actuator taught by Nath et al. as a simple combination of prior art elements according to known methods to yield predictable results.
In the combination of the prior art elements, one of ordinary skill in the art would have reasonably expected the elements to maintain their respective properties or functions.
Claims 2 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over European Patent Document to Oberbeck et al. (EP 3029324) in view of US Patent to Tai et al. (9,845,895) and in further view of US Patent Application Publication to Yusuf et al. (2012/0323318).
Regarding claim 2 and 13, Oberbeck et al. do not disclose magnetic material comprises magnetic nanoparticles, and wherein the magnetic nanoparticles are uniformly dispersed in the elastic diaphragm.
However, Yusuf et al. teaching a simple and cost-effective displacement mechanism teach a diaphragm loaded with magnetic nano-particles [para. 1] uniformly dispersed in the elastic diaphragm [para. 74].
Therefore, it would have been obvious to the person having ordinary skill in the art at a time prior to the effective filing date of the application to have modified valve disclosed by Oberbeck et al. with the uniformly dispersed magnetic nano particles in the elastic diaphragm taught by Yusuf et al. as a means of obtaining a simple and cost-effective displacement mechanism that is adapted to respond to even weak magnetic fields.
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 UMASHANKAR VENKATESAN whose telephone number is (571)270-5602. The examiner can normally be reached Monday - Friday 9:30 AM - 6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner' s supervisors Craig Schneider can be reached at (571) 272-3607 or Ken Rinehart can be reached at (571) 272-4881. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/UMASHANKAR VENKATESAN/
Primary Examiner, Art Unit 3753