Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
This is responsive to the amendment filed 10/10/2025. Applicant amended claims 1 – 6 added claims 7 – 8; claims 1 – 8 are pending in this application.
Response to Arguments
Applicant's arguments filed 10/10/2025 have been fully considered but they are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
US Patent Application Publication to French discloses a pneumatic diaphragm valve actuator used in an oil and gas application [para. 4]. European Patent Document to Dyhr (EP 0199669) teaches a closed loop hydraulic system for operating a valve by actuating an elastic material in an off-shore drilling application. Examiner further maintains hydraulic systems used in valve actuation are inherently closed loop. In fluid control applications, it is well known in the art to use hydraulic and pneumatic systems interchangeably as disclosed by the applicant [para. 44].
The primary reference discloses a control valve with a diaphragm actuator and the secondary reference teaches a hydraulic system – with a cylinder and a piston – to actuate an elastic material. Both references are used in a oil and gas application and it is well-known to use pneumatic and hydraulic actuation interchangeably, as such examiner maintains it would have been obvious to the person having ordinary skill in the art to modify the primary reference with the teaching of the secondary reference to make obvious the claimed invention.
Based on the foregoing the rejection of claims 1 – 6 is maintained and THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
Drawings
The replacement drawings in response to a drawing objection were received on 10/10/2025. These drawings are accepted and the drawing objection of the previous action is withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 – 5, and 8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the claim positively claims a “control valve” with a linear actuator. It is not clear how the “emissions control apparatus is installed on the control valve without substantial modification to the control valve” applies to a claimed control valve with a linear actuator.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1 - 4 and 8, as far as it is definite, are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication to French (2016/0334029) in view of European Patent to Dyhr (EP 0199669).
Regarding claim 1 – 4, and 8, as far as it is definite, French discloses a control valve (Fig. 1) a control valve including a bonnet configured to regulate pressurized fluid flow. Further, French discloses a PLC (40, Fig. 1) delivering a control signal (43, Fig 1) to the pressurized fluid used to displace the actuator. French inherently discloses electric power (to operate the PLC) used in the actuator.
French does not disclose the pressurized fluid is supplied by a piston operated machine. Examiner notes it is well known in the art to use hydraulic and pneumatic pressurized fluid interchangeably for operating a valve.
However, Dyhr also teaching a valve used in the oil and gas application teaches a linear actuator (16, Fig. 13) with a piston mechanically coupled to the linear actuator, the linear actuator configured to directly displace the piston that is displaced by a pressurized fluid supplied by a cylinder (14, Fig. 13) defining an interior bore for a piston and configured to displace the piston linearly within the fluid power cylinder. The displacement of the piston within the fluid power cylinder (14, Fig. 13) changes a pressure within the cylinder to generate a desired output pressure; wherein the supply line is configured to deliver the desired output pressure, the supply line (50, Fig. 13), form a closed-loop system such that the pressurized fluid is not vented to the atmosphere during operation.
Examiner notes the specification does not define “substantial modification”; examiner is interpreting any modification needed to incorporate the teaching of the secondary reference will meet this limitation.
Therefore, it would have been obvious to the person having ordinary skill in the art at a time prior to the effective filing date of the application to have modified valve disclosed by French with the pressurized fluid actuator taught by Dyhr as a combination of prior art elements according to known methods to yield predictable results. The valve disclosed by French and modified by the teaching of Dyhr deliver the desired output pressure to the bonnet of the control valve to actuate the control valve and vary the pressurized fluid flow.
In the combination of the prior art elements, one of ordinary skill in the art would have reasonably expected the elements to maintain their respective properties or functions.
Claims 5 - 7 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication to French (2016/0334029) in view of European Patent to Dyhr (EP 0199669) as applied to claims 1 - 4 and 8 above, and further in view of US Patent to Fink (11,028,932).
Regarding claims 5 – 7, French does not explicitly disclose the power supply comprising a battery.
However, having battery backup for a critical valve is well known in the art as taught by Fink. Fink teaches a battery backup (Col. 12, Lines 50 – 65) for safe operation.
Therefore, it would have been obvious to the person having ordinary skill in the art at a time prior to the effective filing date of the application to have modified valve disclosed by French with the battery back-up taught by Fink as means of ensuring safe operation when there is a power failure.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to UMASHANKAR VENKATESAN whose telephone number is (571)270-5602. The examiner can normally be reached Monday - Friday 9:30 AM - 6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner' s supervisors Craig Schneider can be reached at (571) 272-3607 or Ken Rinehart can be reached at (571) 272-4881. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/UMASHANKAR VENKATESAN/
Primary Examiner, Art Unit 3753