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
The amendments to the claims, specification, and drawings filed 02/17/2026 have been considered and entered.
Response to Arguments
Applicant's arguments filed 02/17/2026 have been fully considered.
Regarding the objection(s) to claim(s) 21 & 22, Applicant argued that the amendment overcame said objection(s); the Examiner is in agreement, therefore said objection(s) has/have been withdrawn and/or are considered moot in view of the amendments.
Regarding the objection(s) to the Drawings pertaining to reproducibility, Applicant argued that the amendment overcame said objection(s); the Examiner is in agreement, therefore said objection(s) has/have been withdrawn.
Regarding the objection(s) to the Drawings pertaining to improper (missing) application of reference characters, Applicant argued that the amendment overcame said objection(s); the Examiner is in agreement, therefore said objection(s) has/have been withdrawn.
Regarding the objection(s) to the Drawings pertaining to Prior Art label for fig. 1, Applicant provide the correction and therefore the Examiner withdraws said objection(s).
Regarding the objection(s) to the Drawings pertaining to solid black shadings for fig. 6, Applicant arguments pertaining to photographs and Applicant’s amendments have been considered and therefore the Examiner withdraws said objection(s).
Regarding the objection(s) to the Title, Applicant provided the Examiner suggested correction and therefore the Examiner withdraws said objection(s).
Regarding the objection(s) to the Abstract, Applicant provided correction and therefore the Examiner withdraws said objection(s).
Regarding the 102 anticipatory & 103 obviousness prior art rejection(s), Applicant argued that primary reference Ogle does not teach wherein the rotor comprises a compensating element. However, this argument is merely an assertion and lacks the necessary supporting evidence. MPEP § 2145(I) states:
Attorney argument is not evidence unless it is an admission, in which case, an examiner may use the admission in making a rejection. See MPEP § 2129 and § 2144.03 for a discussion of admissions as prior art.
The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”). See MPEP § 716.01(c) for examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration.
In the present case, Ogle teaches a rotor (figs. 4 & 7, rotor 74 with rotor holder member 70 with spindle 64; Examiner emphasizes this is the portion that rotates/spins and is thus the “rotor” portion of the rotary shear valve) for a rotary shear valve (fig. 4, valve 18), the rotor (figs. 4 & 7, rotor 74 with rotor holder member 70 with spindle 64) comprising a rotor sealing surface (fig. 4, surface 78) (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”), and a compensating element (figs. 4 & 7, spherical face 65) (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”; Examiner emphasizes that allowing for self-alignment is understood as compensating). Therefore, Applicant’ assertion that Ogle does not teach a rotor (rotating portion of valve) which comprises a compensating element (portion which allows for self-alignment) is unsupported, and not persuasive. See also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence").
Furthermore, while the aforementioned Applicant’s arguments pertaining to the alledged inoperability of the compensatory element of Ogle’s rotor has been considered, the Examiner’s assessment of the prior art is based upon MPEP § 2121(I) and MPEP § 716.07:
2121(I)
When the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable. Once such a reference is found, the burden is on applicant to provide facts rebutting the presumption of operability. In re Sasse, 629 F.2d 675, 207 USPQ 107 (CCPA 1980). See also MPEP § 716.07.”
716.07 (omissions of paragraphs for brevity)
Affidavits or declarations attacking the operability of a patent cited as a reference must rebut the presumption of operability by a preponderance of the evidence. In re Sasse, 629 F.2d 675, 207 USPQ 107 (CCPA 1980)…
Where the affidavit or declaration presented asserts inoperability in features of the reference which are not relied upon, the reference is still effective as to other features which are operative. In re Shepherd, 172 F.2d 560, 80 USPQ 495 (CCPA 1949.
Where the affidavit or declaration presented asserts that the reference relied upon is inoperative, the claims represented by applicant must distinguish from the alleged inoperative reference disclosure. In re Crosby, 157 F.2d 198, 71 USPQ 73 (CCPA 1946). See also In re Epstein, 32 F.3d 1559, 31 USPQ2d 1817 (Fed. Cir. 1994)…
In the present case, the Examiner considers Ogle’s self-alignment portion of Ogle’s rotor is as operable for compensating. As Applicant has not sufficiently provided facts rebutting the presumption of operability, the Examiner continues to rely upon Ogle’s rotor (rotating portion of valve) comprising a compensating element (spherical face; portion which allows for self-alignment).
Further regarding the 102 anticipatory & 103 obviousness prior art rejection(s), Applicant argued that primary reference Ogle does not teach wherein the compensating element is permanently connected to at least one other portion of the rotor, because permanent connection should be interpreted as a connection that cannot be broken without destruction. MPEP § 2111 requires that during patent examination, the pending claims must be given their broadest reasonable interpretation consistent with the specification, and an Examiner must construe claim terms in the broadest reasonable manner during prosecution as is reasonably allowed in an effort to establish a clear record of what applicant intends to claim. The Examiner verified the meaning of “permanently connected” in the specification to see if a special definition precluded the plain meaning. While no such special definition was found, the Examiner found exemplary explanation:
[0021] The compensating element may be permanently connected to at least one other portion of the rotor. For example, the compensating element may be glued to, injection moulded to, welded to or integrally formed with another portion of the rotor. The compensating element may be injection moulded to at least one other portion of the rotor. In some embodiments, the rotor may be integrally formed. That is, in particular the rotor sealing surface and the compensating element may be integrally formed.
The Examiner emphasizes that MPEP § 2111 states that “the specification must provide a clear and intentional use of a special definition for the claim term to be treated as having a special definition”. Therefore, where Applicant’s definitions are optional or non-limiting the definitions are not considered special definitions and claim terms referencing such definitions will instead be considered under the broadest reasonable interpretation in view of the specification. Therefore, the Examiner provides that the broadest reasonable interpretation does not require breaking a connection by destructive means, but instead more broadly includes wherein the connection cannot be removed without the use of tools or equipment as is generally commonly understood—see Conclusion pertaining to newly cited prior art definitions for this common understanding of the phrase. Therefore, the Examiner is unpersuaded by Applicant’s overly narrow claim interpretation.
Yet even further regarding the 102 anticipatory & 103 obviousness prior art rejection(s), Applicant argued that the Examiner’s broad reading of the claim term/phrase “permanently connected” is not through integral forming of the compensating element with another portion of the rotor or through welding, gluing, or injection molding. MPEP § 2111.01(II) IT IS IMPROPER TO IMPORT CLAIM LIMITATIONS FROM THE SPECIFICATION states in part (bold for emphasis):
Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). See also Liebel-Flarsheim Co. v. Medrad Inc., 358 F.3d 898, 906, 69 USPQ2d 1801, 1807 (Fed. Cir. 2004) (discussing recent cases wherein the court expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment); E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369, 67 USPQ2d 1947, 1950 (Fed. Cir. 2003) (“Interpretation of descriptive statements in a patent’s written description is a difficult task, as an inherent tension exists as to whether a statement is a clear lexicographic definition or a description of a preferred embodiment. The problem is to interpret claims ‘in view of the specification’ without unnecessarily importing limitations from the specification into the claims.”); Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1371, 65 USPQ2d 1865, 1869-70 (Fed. Cir. 2003).
As put forth within MPEP § 2111.01(I) THE WORDS OF A CLAIM MUST BE GIVEN THEIR “PLAIN MEANING” UNLESS SUCH MEANING IS INCONSISTENT WITH THE SPECIFICATION, the presumption that a term is given its ordinary and customary meaning may be rebutted by the applicant by clearly setting forth a different definition of the term in the specification. Therefore, the Examiner’s examination of the claim is only in view of the specification, and does not import Applicant’s disclosed embodiments to construe the claims as being so limited by said embodiments. Therefore, the Examiner is unpersuaded by Applicant’s argued importation of the disclosure into the claims.
Also regarding the 102 anticipatory & 103 obviousness prior art rejection(s), Applicant argued that Ogle teaches that the rotor, stator, bearings, and valve head are made of different materials. MPEP § 2123(II) states that “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).” In the present case, Applicant’s citations of Ogle repeatedly comprise the phrase “preferably made of”, therefore the Examiner is unpersuaded by Applicant’s arguments that these possible and preferable materials teach away from any rearrangement or combination of parts. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005); Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998).
Furthermore, 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 choosing the material for the different portions of the rotor portion (rotating portion) of Ogle’s valve is within ordinary skill in the art.
Additionally, while Applicant has argued that possible preferred materials for the rotor, stator, bearings, and valve head would prevent an ordinary artisan from rearrangement/combination of different portions of the rotor (rotating portion), the Examiner respectfully notes that the Examiner is not arguing for switching out portions of the rotor with a stator nor switching out portions of the rotor with the head. The Examiner therefore finds Applicant’s arguments pertaining thereto as unpersuasive.
Regarding the 103 obviousness prior art rejection(s) of secondary reference Fitzner, Applicant argued that Fitzner does not teach a rotor and therefore would not consider Fitzner’s teachings as relevant. MPEP § 2141.01(a)(I) states (bold added for emphasis):
In order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103 , the reference must be analogous art to the claimed invention. In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004). The examiner must determine what is “analogous prior art” for the purpose of analyzing the obviousness of the subject matter at issue. “Under the correct analysis, any need or problem known in the field of endeavor at the time of the invention and addressed by the patent [or application at issue] can provide a reason for combining the elements in the manner claimed. ” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420, 82 USPQ2d 1385, 1397 (2007). This does not require that the reference be from the same field of endeavor as the claimed invention, in light of the Supreme Court's instruction that "[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one." Id. at 417, 82 USPQ2d 1396. Rather, a reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
In order for a reference to be "reasonably pertinent" to the problem, it must "logically [] have commended itself to an inventor's attention in considering his problem. " In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (quoting In re Clay, 966 F.2d 656,658, 23 USPQ2 1058, 1061 (Fed. Cir. 1992)). A recent decision from the U.S. Court of Appeals for the Federal Circuit, In re Klein, 647 F.3d 1343, 98 USPQ2d 1991 (Fed. Cir. 2011), is instructive as to the "reasonably pertinent" prong for determining whether a reference is analogous art. In determining whether a reference is reasonably pertinent, an examiner should consider the problem faced by the inventor, as reflected - either explicitly or implicitly - in the specification. In order to support a determination that a reference is reasonably pertinent, it may be appropriate to include a statement of the examiner's understanding of the problem. The question of whether a reference is reasonably pertinent often turns on how the problem to be solved is perceived. If the problem to be solved is viewed in a narrow or constrained way, and such a view is not consistent with the specification, the scope of available prior art may be inappropriately limited. It may be necessary for the examiner to explain why an inventor seeking to solve the identified problem would have looked to the reference in an attempt to find a solution to the problem, i.e., factual reasons why the prior art is pertinent to the identified problem.
In accordance with the above rule, the Examiner states explicitly for the Applicant that:
Ogle & Fitzner is/are analogous because said reference(s) is/are reasonably pertinent to the problem faced by the inventor; The Examiner’s understanding of the problem is compensation for tilting in a valve; An inventor seeking to solve the above stated problem would have looked to primary reference Ogle for the reason that Ogle is in the same field of endeavor as the present invention and teaches a rotary valve with a compensating surface; An inventor seeking to solve the above stated problem would not have stopped at looking at only one valve with a compensation surface (Ogle: Title “High Pressure Sample Injector Valve”), and would have also considered Fitzner’s injection valve with a compensating surface (Title “Injection Valve With A Compensating Surface”). In particular, Fitzner teaches reversal/rearrangement of a compensating element (figs. 6 & 8, compensating element 3) (Title; 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 reasonably concludes that the cited prior art is/are pertinent to the understood problem and is/are therefore analogous and pertinent.
Furthermore, “A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421, 82 USPQ2d at 1397. “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420, 82 USPQ2d at 1397. Office personnel may also take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418, 82 USPQ2d at 1396. See also In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of one of ordinary skill in the art) and In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969). In the present case, it is the Examiner’s that an ordinary artisan would find rearrangement of a compensating element to the opposite face (e.g., as shown in Fitzner’s figs. 6 & 8) as merely a routine activity.
For all of the above reasons, and for the reasons as put forth in the rejection below, the prior art rejections are retained.
Claim Rejections - 35 USC § 102/103
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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) 1-4 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as anticipated by Applicant previously cited Ogle et al (US 4444066 A; hereafter “Ogle”) or, in the alternative, under 35 U.S.C. 103 as obvious over Applicant previously cited Ogle in view of Applicant previously cited Fitzner et al (US 6186474 B1; hereafter “Fitzner”).
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Regarding independent claim 1,
Ogle reasonably teaches a rotor (figs. 4 & 7, rotor 74 with rotor holder member 70 with spindle 64) 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, rotor 74 with rotor holder member 70 with spindle 64) 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 connected to at least one other portion of the rotor (figs. 4 & 7, rotor 74 with rotor holder member 70 with spindle 64). The Examiner notes that the term "permanently connected" is open to broad interpretation (e.g., requiring tools and/or remaining connected for the duration of useful life); for an ordinary artisan, an element is connected to another element as long as it is in contact with it and is not separated. The skilled person will by no means conclude from this that it is constructed as a single piece, especially since two different elements (rotor and compensating element) are described.
Nevertheless, and for compact prosecution, the Examiner addresses the interpretation wherein the rotor is more narrowly interpreted with the compensated element permanently integral therewith:
Ogle does not teach where the rotor is integral with the compensating element.
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 reGazda, 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 reDulberg, 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.
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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”).
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—to instead be integral with Ogle’s rotor. 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).
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.
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) 11-17 and 21-23 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.
Regarding independent claim 11,
Ogle teaches a rotor assembly for a rotary shear valve (fig. 4, valve 18), 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)
wherein the compensating element (figs. 4 & 7, spherical face 65) is permanently connected to at least one other portion of the rotor (figs. 4 & 7, rotor 74 with rotor holder member 70 with spindle 64); 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) comprising a compensating element (figs. 4 & 7, spherical face 65),
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).
The Examiner notes that the term "permanently connected" is open to broad interpretation (e.g., requiring tools and/or remaining connected for the duration of useful life); for an ordinary artisan, an element is connected to another element as long as it is in contact with it and is not separated. The skilled person will by no means conclude from this that it is constructed as a single piece, especially since two different elements (rotor and compensating element) are described.
Ogle does not teach wherein the rotor (narrower interpretation: figs. 4 & 7, rotor 74 with rotor holder member 70) comprises the compensating element, and wherein the rotor receptacle (figs. 4 & 7 spindle 64) is a separate component from the compensating element.
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 reGazda, 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 reDulberg, 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.
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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”).
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—to instead be integral with Ogle’s rotor. 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, Ogle as modified suggests wherein the rotor (narrower interpretation: figs. 4 & 7, rotor 74 with rotor holder member 70) comprises the compensating element (spherical face 65), and wherein the rotor receptacle (figs. 4 & 7 spindle 64) is a separate component from the compensating element (spherical face 65).
Regarding claim 12, which depends on claim 11,
Ogle as modified by Fitzner 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 modified by Fitzner 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 independent claim 17,
Ogle teaches a rotary shear valve (fig. 4, valve 18) comprising:
a rotor (figs. 4 & 7, comprising rotor 74 with rotor holder member 70);
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 connected to at least one other portion of the rotor (figs. 4 & 7, rotor 74 with rotor holder member 70 with spindle 64). The Examiner notes that the term "permanently connected" is open to broad interpretation (e.g., requiring tools and/or remaining connected for the duration of useful life); for an ordinary artisan, an element is connected to another element as long as it is in contact with it and is not separated. The skilled person will by no means conclude from this that it is constructed as a single piece, especially since two different elements (rotor and compensating element) are described.
Ogle does not teach wherein the rotor (narrower interpretation: figs. 4 & 7, rotor 74 with rotor holder member 70) comprises the compensating element, and wherein the rotor receptacle (figs. 4 & 7 spindle 64) is a separate component from the compensating element.
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 reGazda, 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 reDulberg, 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.
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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”).
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—to instead be integral with Ogle’s rotor. 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, Ogle as modified suggests wherein the rotor (narrower interpretation: figs. 4 & 7, rotor 74 with rotor holder member 70) comprises the compensating element (spherical face 65), and wherein the rotor receptacle (figs. 4 & 7 spindle 64) is a separate component from the compensating element (spherical face 65).
Regarding claim 21, which depends on claim 17,
Ogle as modified by Fitzner suggests (see analysis of independent claim) wherein the rotor (figs. 4 & 7, comprising rotor 74 with rotor holder member 70) comprises a rotor sealing surface (fig. 4, surface 78).
Regarding claim 22, which depends on claim 17,
Ogle as modified by Fitzner 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 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 know advantage 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 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 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 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.
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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 Examiner notes in particular exemplary definitions of “permanently” with regards to connection/attachment/installation from NPL Law Insider:
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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 DAVID L SINGER whose telephone number is (303) 297-4317. The Examiner can normally be reached on 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 02MAR2026