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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/04/2026 has been entered.
Response to Arguments
Applicant's arguments filed 05/04/2026 have been fully considered.
Regarding the prior art rejection(s), Applicant persuasively argued that the amendment overcame said rejection(s). The Examiner is in agreement, therefore said rejection(s) have been withdrawn. However, upon further consideration, the claims are rejected in further view of previously of record (PTO-892 dated 10/07/2025) US 20230138406 A1 “Steinke” to address Applicant’s arguments pertaining to the level of ordinary skill in the art in the re/arrangement of the spherical compensating element to be part of the rotor portion of a shear/rotary valve (see especially spherical surface 320C shown as part of rotor portion in fig. 3) and which is factual evidence that placing a compensating spherical element with the rotor is not counter to established design consideration, and in further view of newly cited JP 2012159460 A “Kanno” to further address Applicant’s arguments pertaining to the level of ordinary skill in the art in making a rotor element comprising constituent portions instead explicitly integral (page 11 third full paragraph of translation “the rotor is integrally formed as in the prior art, or a plurality of constituent members are integrally connected”). See present rejections for further details.
Information Disclosure Statement
The information disclosure statement(s)
(IDS) submitted on 08/14/2026 is/are in compliance
with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is/are being considered by the Examiner.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1, 3-4, 11-17, and 22-23 is/are is/are rejected under 35 U.S.C. 103 as being unpatentable over Applicant previously cited Applicant previously cited Ogle et al (US 4444066 A; hereafter “Ogle”) in view of Applicant previously cited Fitzner et al (US 6186474 B1; hereafter “Fitzner”) with previously of record Steinke (US 20230138406 A1; hereafter “Steinke”) and in further view of newly cited Kanno* (JP 2012159460 A; hereafter “Kanno”).
*machine translation provided by Examiner with foreign document and utilized for English citations
PNG
media_image1.png
497
404
media_image1.png
Greyscale
PNG
media_image2.png
253
247
media_image2.png
Greyscale
Regarding independent claim 1,
Ogle teaches a rotor (figs. 4 & 7, comprising rotor 74 with rotor holder member 70) for a rotary shear valve (fig. 4, valve 18) (Title “High Pressure Sample Injector Valve”; col. 3 line 50 through col. 4 line 10 “arrangement allows for a small degree of self-alignment of the holder member 70 with the rotor member 74 and the stationary or stator member 88”; col. 4, ll. 19-36 “upper surface 78 of the rotor 74 in FIG. 4 is in face-to-face contact with the mating surface 86 of a stationary or stator member 88 which has a plurality of ports or vertical channels 90”), the rotor (figs. 4 & 7, comprising rotor 74 with rotor holder member 70) comprising
a rotor sealing surface (fig. 4, surface 78), and
a compensating element (figs. 4 & 7, spherical face 65),
wherein the compensating element (figs. 4 & 7, spherical face 65) is permanently and integrally connected to a rotor receptacle (figs. 4 & 7, spindle 64), the rotor receptacle (figs. 4 & 7, spindle 64) being configured to receive the rotor (figs. 4 & 7, comprising rotor 74 with rotor holder member 70),
wherein the rotor (figs. 4 & 7, comprising rotor 74 with rotor holder member 70) is secured together (via pins 76); and
wherein the rotor sealing surface (fig. 4, surface 78) comprises at least one connecting element configured to provide a fluid connection between ports of a stator (fig. 4 & 7, stator 88) of the rotary shear valve (see fig. 6 showing rotor comprising grooves 80, 82, and 84; see fig. 5 showing channels of stator) (col. 4, ll. 42-57 “When the rotor member 74 and the stator member 88 are aligned and assembled as shown in FIG. 4, the various ports 90a-90f are designed to align with the extremities of the pattern of passageways or grooves 80, 82, and 84 of the rotor 74”).
Ogle teaches (reverse to claim) that the compensating element is part of the rotor receptacle, and therefore Ogle does not teach: wherein the compensating element is permanently connected to at least one other portion of the rotor and wherein the rotor is integrally formed.
However:
It has been held that rearranging parts of an invention involves only routine skill in the art, In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950), In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975), and see MPEP § 2144.04(VI)(C); and it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art, see MPEP § 2144.04(VI)(A), In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955), In re Einstein, 8 USPQ 67, and In re McNeil, 28 App. D.C. 461. Relatedly, it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art, see MPEP § 2144(V)(C), Nerwin v. Erlichman, 168 USPQ 177, 179 (BPAI. 1969), and In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961); and it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art, Howard v. Detroit Stove Works, 150 U.S. 164 (1893); see also In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965), and MPEP § 2144.04 (V)(B). In the present case, it is the Examiner’s position that only ordinary skill in the art is required to rearrange Ogle’s compensation element (65) to be reversely integral with Ogle’s rotor portion instead of Ogle’s rotor receptacle portion, thereby providing a predictable and alternative rearrangement having substantially similar results.
PNG
media_image3.png
237
244
media_image3.png
Greyscale
PNG
media_image4.png
245
233
media_image4.png
Greyscale
Furthermore, and as supporting factual evidence for the aforementioned assertion, Fitzner teaches reversal/rearrangement of a compensating element (figs. 6 & 8, compensating element 3) (Title “Injection Valve With A Compensating Surface”; col. 6, ll. 24-27; col. 6, ll. 44-49; col. 6, ll. 50-57 “The essential premise of the invention is to compensate for a maladjustment of the actuator and/or of the controlling element by the arrangement of at least one curved surface between the actuator and the controlling element. The curved surface may, of course, also be formed directly on the end of the actuator 1, for example on the pressure plate 2, or on the end of the controlling element 5”). The Examiner notes the direct formation as reasonably permanently integral, or at least at once envisaged as such by an ordinary artisan.
PNG
media_image5.png
685
346
media_image5.png
Greyscale
Moreover, and as further factual evidence supporting a compensating element being a portion of the rotor, Steinke teaches a rotor (fig. 3, rotor 210 with spacer 370 with spherical surface 320C) (Title “ROTARY VALVE WITH COMPENSATION ELEMENT TO COMPENSATE FOR AXIAL MISALIGNMENT”; Abstract; Examiner notes as not explicitly stating for the embodiment of fig. 3 as being for a shear valve, though a brief equivalency in background [0004] is suggestive thereof: “Valves are frequently used in liquid chromatography to either enable or interrupt flow paths, e.g. of the mobile phase. Typically, rotary valves (shear valves) are used, in which a rotor can be moved in rotation relative to a stator in order to switch corresponding flow paths”) comprising a compensating element (see spherical surface 320C in fig. 3), wherein the compensating element is connected to at least one other portion of the rotor (fig. 3, rotor 210 with spacer 370 with spherical surface 320C) (Examiner notes that in this embodiment there is no discussion of removability and therefore an ordinary artisan would at once envisaged as otherwise permanently & integrally connected), wherein the rotor is in surface contact with the stator (fig. 3, stator 220) which has fluid ports (presumably and at once envisaged as fluidly connected to the rotor, though not shown in the embodiment of fig. 3; see above background citation).
In view of the above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to commonsensically try to reverse/rearrange Ogle’s compensating element—as factually supported by Fitzner as being reasonably expected to be a predictable and successful solution and as further factually supported by Steinke which explicitly shows a spherical compensating surface as part of the valve rotor portion—to instead be integral with Ogle’s rotor. With further respect to Steinke, the Examiner notes that complementarily it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Ogle’s explicit shear valve utility and rotor-stator port connections with Steinke’s rotor thereby providing the expected and conventional advantage of enabling fluidic connections controllable by rotation between Steinke’s rotor and stator as well as the conventionally typical utility of utilization as a shear valve such as frequently used in chromatography. The Examiner commonsensically notes that Ogle’s rotor portion is smaller than Ogle’s spindle portion and that Ogle’s rotor portion is already being exposed to wear and tear against the stator, and that either/both the aforementioned re/arrangement provides benefits such as reducing costs of replacing the spindle portion and/or simplifying commercial sourcing/manufacturing of the spindle portion (i.e., being without the complexity of the compensating element being integral thereto).
Therefore the combination suggests wherein the compensating element (spherical face 65; rearranged as taught by Fitzner) is permanently and integrally connected to at least one other portion (Ogle: rotor holder member 70) of the rotor (Ogle: figs. 4 & 7, comprising rotor 74 with rotor holder member 70), and wherein the rotor receptacle (Ogle: figs. 4 & 7, spindle 64) is a separate component from the compensating element (spherical face 65; rearranged as taught by Fitzner).
The combination still does not explicitly teach wherein the entire rotor portion is integral, the Examiner noting that Ogle teaches wherein the rotor (figs. 4 & 7, comprising rotor 74 with rotor holder member 70) is secured together (via pins 76) rather than integral.
However:
It has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art, Howard v. Detroit Stove Works, 150 U.S. 164 (1893); see also In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965), and MPEP § 2144.04 (V)(B). In the present case, it is the Examiner’s position that making a rotor integral only requires ordinary skill in the art and is a conventional alternative to forming a rotor from multiple constituent members.
As factual evidence of the aforementioned assertion, Kanno teaches wherein a rotor may be either integral or a plurality of constituent members integrally connected (page 11 third full paragraph “the rotor is integrally formed as in the prior art, or a plurality of constituent members are integrally connected”).
The Examiner additionally notes that in Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006): “Indeed, we have repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves.” In the present case, making a part previously secured together from constituent members to instead be integral is a common-sense enhancement that is desirable for making the element stronger/durable, and easier/cheaper-labor to maintain/replace. See MPEP § 2144(II).
In view of the above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make Ogle’s (or similarly Steinke’s) rotor explicitly integral—as factually supported by Kanno’s integrally forming—thereby providing the known alternative with expected advantages inclusive of less risk of contamination or leaks where the connections otherwise would be, increased durability and reliability, simpler manufacturing process, easier replacement/maintenance, and/or commercial advantages in only needing a customer to generally identify a wearable portion requiring replacement and selling that whole portion to the customer.
Regarding independent claim 11,
Ogle teaches a rotor assembly for a rotary shear valve (fig. 4, valve 18) (Title “High Pressure Sample Injector Valve”; col. 3 line 50 through col. 4 line 10 “arrangement allows for a small degree of self-alignment of the holder member 70 with the rotor member 74 and the stationary or stator member 88”; col. 4, ll. 19-36 “upper surface 78 of the rotor 74 in FIG. 4 is in face-to-face contact with the mating surface 86 of a stationary or stator member 88 which has a plurality of ports or vertical channels 90”), the rotor assembly comprising:
a rotor (figs. 4 & 7, comprising rotor 74 with rotor holder member 70) comprising a rotor sealing surface (fig. 4, surface 78);
a compensating element (figs. 4 & 7, spherical face 65); and
a rotor receptacle (figs. 4 & 7, spindle 64) configured to receive the rotor (figs. 4 & 7, comprising rotor 74 with rotor holder member 70),
wherein the compensating element (figs. 4 & 7, spherical face 65) is permanently and integrally connected to a rotor receptacle (figs. 4 & 7, spindle 64),
wherein the rotor (figs. 4 & 7, comprising rotor 74 with rotor holder member 70) is connected to the rotor receptacle (figs. 4 & 7, spindle 64) in a rotationally fixed manner (via pins 66).
wherein the rotor (figs. 4 & 7, comprising rotor 74 with rotor holder member 70) is secured together (via pins 76); and
wherein the rotor sealing surface (fig. 4, surface 78) comprises at least one connecting element configured to provide a fluid connection between ports of a stator (fig. 4 & 7, stator 88) of the rotary shear valve (see fig. 6 showing rotor comprising grooves 80, 82, and 84; see fig. 5 showing channels of stator) (col. 4, ll. 42-57 “When the rotor member 74 and the stator member 88 are aligned and assembled as shown in FIG. 4, the various ports 90a-90f are designed to align with the extremities of the pattern of passageways or grooves 80, 82, and 84 of the rotor 74”).
Ogle teaches (reverse to claim) that the compensating element is part of the rotor receptacle, and therefore Ogle does not teach: wherein the compensating element is permanently connected to at least one other portion of the rotor and wherein the rotor is integrally formed.
However:
It has been held that rearranging parts of an invention involves only routine skill in the art, In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950), In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975), and see MPEP § 2144.04(VI)(C); and it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art, see MPEP § 2144.04(VI)(A), In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955), In re Einstein, 8 USPQ 67, and In re McNeil, 28 App. D.C. 461. Relatedly, it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art, see MPEP § 2144(V)(C), Nerwin v. Erlichman, 168 USPQ 177, 179 (BPAI. 1969), and In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961); and it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art, Howard v. Detroit Stove Works, 150 U.S. 164 (1893); see also In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965), and MPEP § 2144.04 (V)(B). In the present case, it is the Examiner’s position that only ordinary skill in the art is required to rearrange Ogle’s compensation element (65) to be reversely integral with Ogle’s rotor portion instead of Ogle’s rotor receptacle portion, thereby providing a predictable and alternative rearrangement having substantially similar results.
Furthermore, and as supporting factual evidence for the aforementioned assertion, Fitzner teaches reversal/rearrangement of a compensating element (figs. 6 & 8, compensating element 3) (Title “Injection Valve With A Compensating Surface”; col. 6, ll. 24-27; col. 6, ll. 44-49; col. 6, ll. 50-57 “The essential premise of the invention is to compensate for a maladjustment of the actuator and/or of the controlling element by the arrangement of at least one curved surface between the actuator and the controlling element. The curved surface may, of course, also be formed directly on the end of the actuator 1, for example on the pressure plate 2, or on the end of the controlling element 5”). The Examiner notes the direct formation as reasonably permanently integral, or at least at once envisaged as such by an ordinary artisan.
Moreover, and as further factual evidence supporting a compensating element being a portion of the rotor, Steinke teaches a rotor (fig. 3, rotor 210 with spacer 370 with spherical surface 320C) (Title “ROTARY VALVE WITH COMPENSATION ELEMENT TO COMPENSATE FOR AXIAL MISALIGNMENT”; Abstract; Examiner notes as not explicitly stating for the embodiment of fig. 3 as being for a shear valve, though a brief equivalency in background [0004] is suggestive thereof: “Valves are frequently used in liquid chromatography to either enable or interrupt flow paths, e.g. of the mobile phase. Typically, rotary valves (shear valves) are used, in which a rotor can be moved in rotation relative to a stator in order to switch corresponding flow paths”) comprising a compensating element (see spherical surface 320C in fig. 3), wherein the compensating element is connected to at least one other portion of the rotor (fig. 3, rotor 210 with spacer 370 with spherical surface 320C) (Examiner notes that in this embodiment there is no discussion of removability and therefore an ordinary artisan would at once envisaged as otherwise permanently & integrally connected), wherein the rotor is in surface contact with the stator (fig. 3, stator 220) which has fluid ports (presumably and at once envisaged as fluidly connected to the rotor, though not shown in the embodiment of fig. 3; see above background citation).
In view of the above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to commonsensically try to reverse/rearrange Ogle’s compensating element—as factually supported by Fitzner as being reasonably expected to be a predictable and successful solution and as further factually supported by Steinke which explicitly shows a spherical compensating surface as part of the valve rotor portion—to instead be integral with Ogle’s rotor. With further respect to Steinke, the Examiner notes that complementarily it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Ogle’s explicit shear valve utility and rotor-stator port connections with Steinke’s rotor thereby providing the expected and conventional advantage of enabling fluidic connections controllable by rotation between Steinke’s rotor and stator as well as the conventionally typical utility of utilization as a shear valve such as frequently used in chromatography. The Examiner commonsensically notes that Ogle’s rotor portion is smaller than Ogle’s spindle portion and that Ogle’s rotor portion is already being exposed to wear and tear against the stator, and that either/both the aforementioned re/arrangement provides benefits such as reducing costs of replacing the spindle portion and/or simplifying commercial sourcing/manufacturing of the spindle portion (i.e., being without the complexity of the compensating element being integral thereto).
Therefore the combination suggests wherein the compensating element (spherical face 65; rearranged as taught by Fitzner) is permanently and integrally connected to at least one other portion (Ogle: rotor holder member 70) of the rotor (Ogle: figs. 4 & 7, comprising rotor 74 with rotor holder member 70), and wherein the rotor receptacle (Ogle: figs. 4 & 7, spindle 64) is a separate component from the compensating element (spherical face 65; rearranged as taught by Fitzner).
The combination still does not explicitly teach wherein the entire rotor portion is integral, the Examiner noting that Ogle teaches wherein the rotor (figs. 4 & 7, comprising rotor 74 with rotor holder member 70) is secured together (via pins 76) rather than integral.
However:
It has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art, Howard v. Detroit Stove Works, 150 U.S. 164 (1893); see also In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965), and MPEP § 2144.04 (V)(B). In the present case, it is the Examiner’s position that making a rotor integral only requires ordinary skill in the art and is a conventional alternative to forming a rotor from multiple constituent members.
As factual evidence of the aforementioned assertion, Kanno teaches wherein a rotor may be either integral or a plurality of constituent members integrally connected (page 11 third full paragraph “the rotor is integrally formed as in the prior art, or a plurality of constituent members are integrally connected”).
The Examiner additionally notes that in Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006): “Indeed, we have repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves.” In the present case, making a part previously secured together from constituent members to instead be integral is a common-sense enhancement that is desirable for making the element stronger/durable, and easier/cheaper-labor to maintain/replace. See MPEP § 2144(II).
In view of the above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make Ogle’s (or similarly Steinke’s) rotor explicitly integral—as factually supported by Kanno’s integrally forming—thereby providing the known alternative with expected advantages inclusive of less risk of contamination or leaks where the connections otherwise would be, increased durability and reliability, simpler manufacturing process, easier replacement/maintenance, and/or commercial advantages in only needing a customer to generally identify a wearable portion requiring replacement and selling that whole portion to the customer.
Regarding independent claim 17,
Ogle teaches a rotary shear valve (fig. 4, valve 18) (Title “High Pressure Sample Injector Valve”; col. 3 line 50 through col. 4 line 10 “arrangement allows for a small degree of self-alignment of the holder member 70 with the rotor member 74 and the stationary or stator member 88”; col. 4, ll. 19-36 “upper surface 78 of the rotor 74 in FIG. 4 is in face-to-face contact with the mating surface 86 of a stationary or stator member 88 which has a plurality of ports or vertical channels 90”) comprising:
a rotor (figs. 4 & 7, comprising rotor 74 with rotor holder member 70) comprising a rotor sealing surface (fig. 4, surface 78);
a compensating element (figs. 4 & 7, spherical face 65);
a rotor receptacle (figs. 4 & 7, spindle 64) configured to receive the rotor (figs. 4 & 7, comprising rotor 74 with rotor holder member 70);
a stator (fig. 4 & 7, stator 88); and
a drive unit (not fully shown in fig. 4; see fig. 10, rotary actuator mechanism 150) (col. 2, ll. 50-51 “FIG. 10 is a top view of the actuator mechanism to operate the valve”),
wherein the compensating element (figs. 4 & 7, spherical face 65) is permanently and integrally connected to a rotor receptacle (figs. 4 & 7, spindle 64), the rotor receptacle (figs. 4 & 7, spindle 64) being configured to receive the rotor (figs. 4 & 7, comprising rotor 74 with rotor holder member 70),
wherein the rotor (figs. 4 & 7, comprising rotor 74 with rotor holder member 70) is secured together (via pins 76); and
wherein the rotor sealing surface (fig. 4, surface 78) comprises at least one connecting element configured to provide a fluid connection between ports of the stator (fig. 4 & 7, stator 88) of the rotary shear valve (see fig. 6 showing rotor comprising grooves 80, 82, and 84; see fig. 5 showing channels of stator) (col. 4, ll. 42-57 “When the rotor member 74 and the stator member 88 are aligned and assembled as shown in FIG. 4, the various ports 90a-90f are designed to align with the extremities of the pattern of passageways or grooves 80, 82, and 84 of the rotor 74”).
Ogle teaches (reverse to claim) that the compensating element is part of the rotor receptacle, and therefore Ogle does not teach: wherein the compensating element is permanently connected to at least one other portion of the rotor and wherein the rotor is integrally formed.
However:
It has been held that rearranging parts of an invention involves only routine skill in the art, In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950), In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975), and see MPEP § 2144.04(VI)(C); and it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art, see MPEP § 2144.04(VI)(A), In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955), In re Einstein, 8 USPQ 67, and In re McNeil, 28 App. D.C. 461. Relatedly, it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art, see MPEP § 2144(V)(C), Nerwin v. Erlichman, 168 USPQ 177, 179 (BPAI. 1969), and In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961); and it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art, Howard v. Detroit Stove Works, 150 U.S. 164 (1893); see also In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965), and MPEP § 2144.04 (V)(B). In the present case, it is the Examiner’s position that only ordinary skill in the art is required to rearrange Ogle’s compensation element (65) to be reversely integral with Ogle’s rotor portion instead of Ogle’s rotor receptacle portion, thereby providing a predictable and alternative rearrangement having substantially similar results.
PNG
media_image3.png
237
244
media_image3.png
Greyscale
PNG
media_image4.png
245
233
media_image4.png
Greyscale
Furthermore, and as supporting factual evidence for the aforementioned assertion, Fitzner teaches reversal/rearrangement of a compensating element (figs. 6 & 8, compensating element 3) (Title “Injection Valve With A Compensating Surface”; col. 6, ll. 24-27; col. 6, ll. 44-49; col. 6, ll. 50-57 “The essential premise of the invention is to compensate for a maladjustment of the actuator and/or of the controlling element by the arrangement of at least one curved surface between the actuator and the controlling element. The curved surface may, of course, also be formed directly on the end of the actuator 1, for example on the pressure plate 2, or on the end of the controlling element 5”). The Examiner notes the direct formation as reasonably permanently integral, or at least at once envisaged as such by an ordinary artisan.
PNG
media_image5.png
685
346
media_image5.png
Greyscale
Moreover, and as further factual evidence supporting a compensating element being a portion of the rotor, Steinke teaches a rotor (fig. 3, rotor 210 with spacer 370 with spherical surface 320C) (Title “ROTARY VALVE WITH COMPENSATION ELEMENT TO COMPENSATE FOR AXIAL MISALIGNMENT”; Abstract; Examiner notes as not explicitly stating for the embodiment of fig. 3 as being for a shear valve, though a brief equivalency in background [0004] is suggestive thereof: “Valves are frequently used in liquid chromatography to either enable or interrupt flow paths, e.g. of the mobile phase. Typically, rotary valves (shear valves) are used, in which a rotor can be moved in rotation relative to a stator in order to switch corresponding flow paths”) comprising a compensating element (see spherical surface 320C in fig. 3), wherein the compensating element is connected to at least one other portion of the rotor (fig. 3, rotor 210 with spacer 370 with spherical surface 320C) (Examiner notes that in this embodiment there is no discussion of removability and therefore an ordinary artisan would at once envisaged as otherwise permanently & integrally connected), wherein the rotor is in surface contact with the stator (fig. 3, stator 220) which has fluid ports (presumably and at once envisaged as fluidly connected to the rotor, though not shown in the embodiment of fig. 3; see above background citation).
In view of the above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to commonsensically try to reverse/rearrange Ogle’s compensating element—as factually supported by Fitzner as being reasonably expected to be a predictable and successful solution and as further factually supported by Steinke which explicitly shows a spherical compensating surface as part of the valve rotor portion—to instead be integral with Ogle’s rotor. With further respect to Steinke, the Examiner notes that complementarily it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Ogle’s explicit shear valve utility and rotor-stator port connections with Steinke’s rotor thereby providing the expected and conventional advantage of enabling fluidic connections controllable by rotation between Steinke’s rotor and stator as well as the conventionally typical utility of utilization as a shear valve such as frequently used in chromatography. The Examiner commonsensically notes that Ogle’s rotor portion is smaller than Ogle’s spindle portion and that Ogle’s rotor portion is already being exposed to wear and tear against the stator, and that either/both the aforementioned re/arrangement provides benefits such as reducing costs of replacing the spindle portion and/or simplifying commercial sourcing/manufacturing of the spindle portion (i.e., being without the complexity of the compensating element being integral thereto).
Therefore the combination suggests wherein the compensating element (spherical face 65; rearranged as taught by Fitzner) is permanently and integrally connected to at least one other portion (Ogle: rotor holder member 70) of the rotor (Ogle: figs. 4 & 7, comprising rotor 74 with rotor holder member 70), and wherein the rotor receptacle (Ogle: figs. 4 & 7, spindle 64) is a separate component from the compensating element (spherical face 65; rearranged as taught by Fitzner).
The combination still does not explicitly teach wherein the entire rotor portion is integral, the Examiner noting that Ogle teaches wherein the rotor (figs. 4 & 7, comprising rotor 74 with rotor holder member 70) is secured together (via pins 76) rather than integral.
However:
It has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art, Howard v. Detroit Stove Works, 150 U.S. 164 (1893); see also In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965), and MPEP § 2144.04 (V)(B). In the present case, it is the Examiner’s position that making a rotor integral only requires ordinary skill in the art and is a conventional alternative to forming a rotor from multiple constituent members.
As factual evidence of the aforementioned assertion, Kanno teaches wherein a rotor may be either integral or a plurality of constituent members integrally connected (page 11 third full paragraph “the rotor is integrally formed as in the prior art, or a plurality of constituent members are integrally connected”).
The Examiner additionally notes that in Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006): “Indeed, we have repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves.” In the present case, making a part previously secured together from constituent members to instead be integral is a common-sense enhancement that is desirable for making the element stronger/durable, and easier/cheaper-labor to maintain/replace. See MPEP § 2144(II).
In view of the above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make Ogle’s (or similarly Steinke’s) rotor explicitly integral—as factually supported by Kanno’s integrally forming—thereby providing the known alternative with expected advantages inclusive of less risk of contamination or leaks where the connections otherwise would be, increased durability and reliability, simpler manufacturing process, easier replacement/maintenance, and/or commercial advantages in only needing a customer to generally identify a wearable portion requiring replacement and selling that whole portion to the customer.
Regarding claim 3, which depends on claim 1,
Ogle reasonably teaches wherein the compensating element (figs. 4 & 7, spherical face 65) comprises the form of a spherical cap (spherical face as forming the spherical cap),
wherein the spherical cap comprises a sphere radius (radius of spherical; spherical being at once envisaged as sphere with radius, additional obviousness analysis for spherical vs sphere provided) that describes a curvature (curvature of spherical face 65 forming cap) of the compensating element (figs. 4 & 7, spherical face 65).
With further respect to spherical versus sphere and the radius for the curvature, the Examiner notes that: Legal precedent has condoned the use of particular examples of what may be considered common sense or ordinary routine practice including changes in shape, see MPEP 2141(I) & 2144.04(IV)(B), and In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966); and it has been held that a mere change in size is generally recognized as being within the level of ordinary skill in the art, see MPEP § 2144.04(IV)(A), In re Rose, 105 USPQ 237 (CCP A 1955), In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976), and Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
In the present case, either one of ordinary skill in the art at the time the invention was effectively filed would at once envisaged that the spherical face reasonably suggests a sphere with a radius describing the curvature, or nevertheless, or in the alternative, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to shape Ogle’s spherical shape (even) more as said sphere shape, the Examiner noting that further perfecting the sphere shape symmetry would be more ideal to providing predictable compensation about said symmetry and/or simplifying manufacturing.
Regarding claim 4, which depends on claim 3,
Ogle reasonably teaches/suggests (see analysis of preceding claim) wherein the sphere radius amounts at least to a distance between the rotor sealing surface (fig. 4, surface 78) and the most distal point of the compensating element (figs. 4 & 7, spherical face 65).
The Examiner acknowledges that it does not matter that the feature shown (in this case the relative distances) is unexplained in the specification. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. See MPEP § 2125 and In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979). Furthermore, the Examiner notes that: Legal precedent has condoned the use of particular examples of what may be considered common sense or ordinary routine practice including changes in shape, see MPEP 2141(I) & 2144.04(IV)(B), and In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966); and it has been held that a mere change in size is generally recognized as being within the level of ordinary skill in the art, see MPEP § 2144.04(IV)(A), In re Rose, 105 USPQ 237 (CCP A 1955), In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976), and Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In the present case, either one of ordinary skill in the art at the time the invention was effectively filed would at once envisaged (at least from the shown drawings) that the sphere radius amounts at least to a distance between the rotor sealing surface and the most distal point of the compensating element, or nevertheless, or in the alternative it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to change the size of the rotor including for reducing costs, and/or to increase the radius size to increase the stability in the interaction with the compensating element.
Regarding claim 12, which depends on claim 11,
Ogle as previously modified suggests (see analysis of independent claim) wherein the rotor receptacle (figs. 4 & 7, spindle 64) comprises a contacting portion (portion of spindle 64 contacting face 65 and pins 66 which interact with aperture 68, especially in view of previous modification over Fitzner), configured to contact and interact with the compensating element (figs. 4 & 7, spherical face 65) of the rotor (figs. 4 & 7, comprising rotor 74 with rotor holder member 70).
Regarding claim 13, which depends on claim 11,
Ogle as previously modified suggests (see analysis of independent claim) wherein the rotor assembly is configured to receive a force at the rotor receptacle (figs. 4 & 7, spindle 64) and direct the force to the rotor sealing surface (fig. 4, surface 78) via the contacting portion (portion of spindle 64 contacting face 65 and pins 66 which interact with aperture 68, especially in view of previous modification over Fitzner) and the compensating element (figs. 4 & 7, spherical face 65).
Regarding claim 14, which depends on claim 11,
Ogle teaches wherein the rotor assembly is configured to enable the rotor (figs. 4 & 7, comprising rotor 74 with rotor holder member 70) to tilt with respect to the rotor receptacle (figs. 4 & 7, spindle 64) (col. 3 line 50 through col. 4 line 10 “arrangement allows for a small degree of self-alignment of the holder member 70 with the rotor member 74 and the stationary or stator member 88”).
Regarding claim 15 and claim 16, where claim 15 depends on claim 14 and where claim 16 depends on claim 15,
Ogle reasonably teaches/suggests (claim 15 limitation) wherein the rotor (figs. 4 & 7, comprising rotor 74 with rotor holder member 70) is enabled to tilt by a polar angle at least in the range of 0° to 1° with respect to the rotor receptacle (figs. 4 & 7, spindle 64), and (claim 16 limitation) wherein the rotor (figs. 4 & 7, comprising rotor 74 with rotor holder member 70) is enabled to tilt by a polar angle at least in the range of 0° to 2° with respect to the rotor receptacle (figs. 4 & 7, spindle 64) (col. 3 line 50 through col. 4 line 10 “arrangement allows for a small degree of self-alignment of the holder member 70 with the rotor member 74 and the stationary or stator member 88”; see curvature of spherical face 65; additional obviousness analysis follows).
The Examiner acknowledges that it does not matter that the feature shown (in this case the relative distances) is unexplained in the specification. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. See MPEP § 2125 and In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979). Furthermore, the Examiner notes that: Legal precedent has condoned the use of particular examples of what may be considered common sense or ordinary routine practice including changes in shape, see MPEP 2141(I) & 2144.04(IV)(B), and In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966); it has been held that a mere change in size is generally recognized as being within the level of ordinary skill in the art, see MPEP § 2144.04(IV)(A), In re Rose, 105 USPQ 237 (CCP A 1955), In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976), and Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984); it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, see MPEP § 2144.05 and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); and where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, see MPEP 2144.05(I), In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In the present case, either one of ordinary skill in the art at the time the invention was effectively filed would at once envisaged (at least from the shown drawings and stated angle being of a small degree) that the curvature of the spherical face is designed to enable the rotor to tilt by a polar angle at least in the range of 0° to 2° with respect to the rotor receptacle (Examiner further emphasizes that these angles are comprised by small degree), or nevertheless, or in the alternative 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 size and shape of the features of the arrangement to optimize the angle range thereby better enabling the range of self-alignment for the commonsensical proper functioning of Ogle’s rotor valve.
Regarding claim 22, which depends on claim 17,
Ogle as previously modified suggests (see analysis of independent claim) wherein the rotor (figs. 4 & 7, comprising rotor 74 with rotor holder member 70) and the rotor receptacle (figs. 4 & 7, spindle 64) are comprised by a rotor assembly (assembly comprising rotor 74 with rotor holder member 70 and spindle 64),
wherein the rotor (figs. 4 & 7, comprising rotor 74 with rotor holder member 70) comprises a rotor sealing surface (fig. 4, surface 78), and
wherein the rotor (figs. 4 & 7, comprising rotor 74 with rotor holder member 70) is connected to the rotor receptacle (figs. 4 & 7, spindle 64) in a rotationally fixed manner (via pins 66).
Regarding claim 23, which depends on claim 17,
Ogle teaches wherein the valve (fig. 4, valve 18) is configured to assume different configurations (e.g., bypass or injection configurations),
wherein for each different configuration the relative position of stator (fig. 4 & 7, stator 88) and rotor (rotor (figs. 4 & 7, comprising rotor 74 with rotor holder member 70) differs (col. 4, ll. 19-36; col. 6, line e11 through col. 12 line 5).
Claim(s) 8-10 and 18 is/are is/are rejected under 35 U.S.C. 103 as being unpatentable over Applicant previously cited Ogle in view of Applicant previously cited Fitzner with previously of record Steinke, newly cited Kanno, and in further view of previously cited Ortmann et al (US 20230296571 A1; hereafter “Ortmann”).
Regarding claim 8, which depends on claim 1,
Ogle reasonably teaches/suggests wherein the rotor (figs. 4 & 7, comprising rotor 74 with rotor holder member 70; see analysis of independent claim) is configured for pressures of at least up to 100 bar (col. 3, ll. 7-41 “at high pressure (2000-5000 psig) through the valve 18”; col. 6 line 58 through col. 7 line 5 “at very high pressure of as much as 5000 psig”; at once so envisaged as being applicable to the rotor, additional obviousness analysis follows).
Furthermore:
The Examiner previously took Official Notice that ultra-high pressure/performance liquid chromatography (UHPLC) was conventional in the art to one of ordinary skill in the art before/by the effective filing date of the claimed invention. As the Applicant had not adequately traversed this assertion, this is considered admitted prior art in accordance with MPEP § 2144.03(C).
The Examiner respectfully notes that it had been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05. In the present case, it is the Examiner’s position that only ordinary skill in the art is required to optimize a high pressure liquid chromatography (HPLC) valve into a UHPLC valve.
It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice, see MPEP § 2144.07 and In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). In the present case it is the Examiner’s position that only ordinary skill in the art is required to select known materials for suitability in use of UHPLC.
Furthermore, and as supporting factual evidence of the aforementioned assertions, Ortmann teaches a VALVE WITH AXIAL ANGLE COMPENSATION (Title) which designed for HPLC exemplary including up to 2000 bar (Abstract “has an elastic region to compensate for an axial angle between the first valve element and the second valve element, such that the first effective surface and the second effective surface may be oriented parallel to each other. This may favorably influence a fluidic leak tightness and/or longevity of the valve”; [0003] “In high-performance liquid chromatography (HPLC), a liquid must be pumped at typically very tightly controlled flow rates (e.g., in the nanoliter to milliliter per minute range) and at a high pressure (typically 20-100 MPa, 200-1000 bar and beyond, up to presently about 200 MPa, 2000 bar)”; [0104] “exemplary implementation of an adaptive fitting 800. Fitting 800 as shown is intended to fluidly connect a tubular capillary 810 (e.g., made of glass or metal) with a (e.g., disk-shaped) planar structure 820 and to be designed as a high pressure connection for pressures from 200 bar or greater and, for example between 1000 and 2000 bar”)
In view of the above, either one of ordinary skill in the art at the time the invention was effectively filed would at once envisaged that Ogle reasonably suggests wherein Ogle’s HPLC valve rotor is configured for pressures up to 100 bar, or nevertheless, or in the alternative, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to so optimize through the choice of known materials and configurations for the purpose of reaching higher pressures or even ultra-high pressures—as factually supported by Ortmann’s high pressure valve and teaching of conventionality thereof—thus having the known advantages of faster analysis time, lower operational costs, higher resolutions, better peak separation, reduced eluent consumption, and/or enhanced sensitivity.
Regarding claim 9 and claim 10, where claim 9 depends on claim 8 and where claim 10 depends on claim 9,
Ogle teaches wherein the rotor (figs. 4 & 7, comprising rotor 74 with rotor holder member 70; see analysis of independent claim) is configured for high pressures (col. 3, ll. 7-41 “at high pressure”; col. 6 line 58 through col. 7 line 5 “at very high pressure”).
Ogle is silent to teaching configuration/use at high pressure of at least up to 500 bar (claim 9) and at least up to 1500 bar (claim 10)
However:
The Examiner previously took Official Notice that ultra-high pressure/performance liquid chromatography (UHPLC) was conventional in the art to one of ordinary skill in the art before/by the effective filing date of the claimed invention. As the Applicant had not adequately traversed this assertion, this is considered admitted prior art in accordance with MPEP § 2144.03(C).
The Examiner respectfully notes that it had been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05. In the present case, it is the Examiner’s position that only ordinary skill in the art is required to optimize a high pressure liquid chromatography (HPLC) valve into a UHPLC valve.
It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice, see MPEP § 2144.07 and In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). In the present case it is the Examiner’s position that only ordinary skill in the art is required to select known materials for suitability in use of UHPLC.
Furthermore, and as supporting factual evidence of the aforementioned assertions, Ortmann teaches a VALVE WITH AXIAL ANGLE COMPENSATION (Title) which designed for HPLC exemplary including up to 2000 bar (Abstract “has an elastic region to compensate for an axial angle between the first valve element and the second valve element, such that the first effective surface and the second effective surface may be oriented parallel to each other. This may favorably influence a fluidic leak tightness and/or longevity of the valve”; [0003] “In high-performance liquid chromatography (HPLC), a liquid must be pumped at typically very tightly controlled flow rates (e.g., in the nanoliter to milliliter per minute range) and at a high pressure (typically 20-100 MPa, 200-1000 bar and beyond, up to presently about 200 MPa, 2000 bar)”; [0104] “exemplary implementation of an adaptive fitting 800. Fitting 800 as shown is intended to fluidly connect a tubular capillary 810 (e.g., made of glass or metal) with a (e.g., disk-shaped) planar structure 820 and to be designed as a high pressure connection for pressures from 200 bar or greater and, for example between 1000 and 2000 bar”).
In view of the above, either one of ordinary skill in the art at the time the invention was effectively filed would at once envisaged that Ogle reasonably suggests wherein Ogle’s HPLC valve rotor is configured for pressures up to 100 bar, or nevertheless, or in the alternative, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to so optimize through the choice of known materials and configurations for the purpose of reaching higher pressures or even ultra-high pressures—as factually supported by Ortmann’s high pressure valve and teaching of conventionality thereof—thus having the know advantage of faster analysis time, lower operational costs, higher resolutions, better peak separation, reduced eluent consumption, and/or enhanced sensitivity.
Regarding claim 18, which depends on claim 17,
Ogle reasonably teaches/suggests wherein the valve (fig. 4, valve 18) is configured for an operating pressure of at least up to 100 bar (col. 3, ll. 7-41 “at high pressure (2000-5000 psig) through the valve 18”; col. 6 line 58 through col. 7 line 5 “at very high pressure of as much as 5000 psig”; at once so envisaged as being applicable to the rotor, additional obviousness analysis follows).
Furthermore:
The Examiner previously took Official Notice that ultra-high pressure/performance liquid chromatography (UHPLC) was conventional in the art to one of ordinary skill in the art before/by the effective filing date of the claimed invention. As the Applicant had not adequately traversed this assertion, this is considered admitted prior art in accordance with MPEP § 2144.03(C).
The Examiner respectfully notes that it had been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05. In the present case, it is the Examiner’s position that only ordinary skill in the art is required to optimize a high pressure liquid chromatography (HPLC) valve into a UHPLC valve.
It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice, see MPEP § 2144.07 and In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). In the present case it is the Examiner’s position that only ordinary skill in the art is required to select known materials for suitability in use of UHPLC.
Furthermore, and as supporting factual evidence of the aforementioned assertions, Ortmann teaches a VALVE WITH AXIAL ANGLE COMPENSATION (Title) which designed for HPLC exemplary including up to 2000 bar (Abstract “has an elastic region to compensate for an axial angle between the first valve element and the second valve element, such that the first effective surface and the second effective surface may be oriented parallel to each other. This may favorably influence a fluidic leak tightness and/or longevity of the valve”; [0003] “In high-performance liquid chromatography (HPLC), a liquid must be pumped at typically very tightly controlled flow rates (e.g., in the nanoliter to milliliter per minute range) and at a high pressure (typically 20-100 MPa, 200-1000 bar and beyond, up to presently about 200 MPa, 2000 bar)”; [0104] “exemplary implementation of an adaptive fitting 800. Fitting 800 as shown is intended to fluidly connect a tubular capillary 810 (e.g., made of glass or metal) with a (e.g., disk-shaped) planar structure 820 and to be designed as a high pressure connection for pressures from 200 bar or greater and, for example between 1000 and 2000 bar”).
In view of the above, either one of ordinary skill in the art at the time the invention was effectively filed would at once envisaged that Ogle reasonably suggests wherein Ogle’s HPLC valve is configured for pressures up to 100 bar, or nevertheless, or in the alternative, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to so optimize through the choice of known materials and configurations for the purpose of reaching higher pressures or even ultra-high pressures—as factually supported by Ortmann’s high pressure valve and teaching of conventionality thereof—thus having the know advantage of faster analysis time, lower operational costs, higher resolutions, better peak separation, reduced eluent consumption, and/or enhanced sensitivity.
Claim(s) 5-6 is/are is/are rejected under 35 U.S.C. 103 as being unpatentable over Applicant previously cited Ogle in view of Applicant previously cited Fitzner with previously of record Steinke, newly cited Kanno, and in further view of previously cited Serri (NPL Surface texture).
Regarding claim 5 and claim 6, where claim 5 depends on claim 1 and where claim 6 depends on claim 5,
Ogle teaches where the compensating element comprises an element surface roughness compatible with enabling the valve arrangement to be able to self-align while in contact with the rotor portion under high pressure (col. 3 line 50 through col. 4 line 10 “contacts the flat lower surface 71 of the holder member 70 to provide a point of contact between the spindle and the holder member. This particular arrangement allows for a small degree of self-alignment of the holder member 70 with the rotor member 74 and the stationary or stator member 88”).
Ogle is silent to wherein the compensating element comprises an element surface roughness of at most 1 μm Ra (claim 5) and at most 0.6 μm Ra (claim 6).
However:
Legal precedent has condoned the use of particular examples of what may be considered common sense or ordinary routine practice including changes in shape, see MPEP § 2141(I) & 2144.04(IV)(B), and In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, see MPEP § 2144.05, and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the present case, it is the Examiner’s position that only ordinary skill in the art is required to further refine Ogle’s spherical shape into a(n) (even) more perfect shape, the Examiner noting that a further perfected sphere shape would be more ideal for being able to smoothly rotate into self-alignment including by reducing friction and/or damage therefrom.
PNG
media_image6.png
326
228
media_image6.png
Greyscale
PNG
media_image7.png
302
277
media_image7.png
Greyscale
Furthermore, and as supporting factual evidence of the ordinary skill in the art, Serri generically teaches an element surface roughness to at most 0.6 μm Ra (First paragraph “that the texture of a surface against which a seal rubs has a significant effect on friction, wear and seal life. Texture in this context refers both to surface roughness (or surface irregularities) and to the pattern of these irregularities”; Section Recommended surface finishes “ideal surface roughness lies somewhere between 0.16 and 0.40 μm (Ra)”; section Finishes from machining processes “Both the roughness and pattern of the surface finish produced can vary widely with different machining processes. The following table gives typical values likely to be achieved with different processes”).
In view of the above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to shape the surface of Ogle’s spherical compensation element to a more perfect sphere with a surface roughness of at most 0.6 μm Ra and therefore more ideal for being able to smoothly rotate into self-alignment including by reducing friction and/or damage therefrom, the Examiner emphasizing that processes to so optimize are well-known in the art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure. Applicant is invited to review PTO form 892 accompanying this Office Action listing Prior Art relevant to the instant invention cited by the Examiner. The following are noted as particularly pertinent to making rotor elements integral:
US 20150190810 A1 [0058] “preferred embodiment, the rotor is a unitary element”
US 20080178953 A1 Abstract “rotor is made up of a unitary ceramic component”, [0006] “cast into a one piece unitary rotor can offer improved performance at a more economical cost”
Examiner interviews are available via telephone 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.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to DAVID L SINGER whose telephone number is 303-297-4317. The Examiner can normally be reached Monday - Friday 8:00 am - 6:00pm CT, EXCEPT alternating Friday.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, John Breene can be reached on 571-272-4107. 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.
/DAVID L SINGER/Primary Examiner, Art Unit 2855 16AUG2026
Prosecution Insights