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 .
Response to Amendment
This office action is in response to applicant’s reply filed 1/27/26. Amended Claims 1-3, 5, 7-10, 12, and 14 are pending.
As a first note, applicant’s interview summary description is inaccurate. In applicant’s arguments (begin excerpt/):
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Examiner did not agree to applicant’s argued “the proposed amendment overcomes the pending rejections”; examiner stated the prior art reference of Hosoya appeared to be overcome by the proposed amendments but did not agree to anything further, as indicated in the interview summary mailed 1/20/26.
Regarding the previous drawing objections, the drawings submitted 1/27/26 carry text labels and box 58 now matches between Fig. 1 and Fig. 2. Figs. 4-6 now agree with the specification. Examiner notes applicant did not supply marked up copies of the replacement drawings. Examiner notes applicant’s text labels do not agree with the specification descriptions for elements designated by the same reference characters. Examiner notes applicant’s claimed invention continues to not be depicted. Applicant’s argues (begin excerpt/):
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Applicant argues that “electrically operated shuttle valve 58” is shown. This is not persuasive as applicant has depicted a box designated 58, the contents of which are unclear. MPEP 608.02 IX states “37 CFR 1.84(n) indicates that graphic drawing symbols and other labeled representations may be used for conventional elements where appropriate, subject to approval by the Office.” The described valve is non-conventional. As an example, the NPL accompanying this office action is from a valve manufacturer of shuttle valves and shows example types of shuttle valves, where the shuttle valves accept flow from two different sources and divert the highest pressure to a single outlet port. The “electrically operated shuttle valve 58” as disclosed continues to not be shown.
Regarding the previous claim objections, these have been overcome the claim amendments.
Regarding the previous 112 rejections, applicant argues (begin excerpt/):
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Applicant’s arguments have been fully considered but are not persuasive. Applicant’s argued “three way solenoid valve” is not commensurate with the originally disclosed “electrically operated shuttle valve”. Additionally, “all of which are well understood in the art” is not persuasive. MPEP 716.01(c) II states “Arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).” Applicant’s arguments concerning the structure and functioning of electrically operated shuttle valve 58 are not persuasive and 112 issues remain.
Regarding the previous prior art of Hosoya, applicant’s amendments to Claims 1 and 8 overcome Hosoya as anticipatory.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the claimed invention of Claims 1-3, 5, 7-10, 12, and 14 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
In addition to Replacement Sheets containing the corrected drawing figure(s), applicant is required to submit a marked-up copy of each Replacement Sheet including annotations indicating the changes made to the previous version. The marked-up copy must be clearly labeled as “Annotated Sheets” and must be presented in the amendment or remarks section that explains the change(s) to the drawings. See 37 CFR 1.121(d)(1). Failure to timely submit the proposed drawing and marked-up copy will result in the abandonment of the application.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Examiner notes:
Applicant has stated the preamble of the claims to be limiting to the structure of the claimed subject matter (see reply filed 12/18/24, p. 8); the claims have been interpreted as such (MPEP 2111.02 I).
“high-pressure” in Claims 1 and 8 is being interpreted as referring to pressure above reservoir pressure rather than a particular value.
“hydraulic high-pressure source” was considered for interpretation under 112(f) but was considered sufficiently definite of a class of structures to one of ordinary skill in the art.
“valve assembly” was considered for interpretation under 112(f) but was considered to recite sufficient structure (“valve”) to refer to a broad class of structures.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3, 5, 7-10, 12, and 14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites in part “wherein a hydraulic leakage flow occurring between the first and second orbitrol connections can be compensated with regard to a hydraulic operation of the steering cylinder via a valve assembly, wherein the valve assembly comprises an electrically operated proportional valve connected to the high-pressure source or the hydraulic reservoir and selectively connected on an outlet side to either of the opposing working chambers of the steering cylinder via an electrically operated valve; and a controller configured to estimate the scope of a leak-induced hydraulic loss or excess as a function of an ascertained pressure difference between the two orbitrol connections and as a function of the magnitude or change over time of a steering variable representing a steering operation of the steering handle or an actuation of the steering cylinder, wherein the controller actuates the valve assembly based on the estimate”; the same language appears in Claim 8. MPEP 2163.02 states:
The courts have described the essential question to be addressed in a description requirement issue in a variety of ways. An objective standard for determining compliance with the written description requirement is, "does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed." In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989).
In applicant’s originally filed specification at [0034] for example (begin excerpt/):
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The element “electrically operated shuttle valve 58” at [0034] and throughout the specification is not understood. Since shuttle valves are a class of valves in the art that are used to accept two different flows then divert the higher pressure flow to an outlet port, the presence of “electrically operated” is not understood. If the valve is electrically operated, then the valve would not appear to be a shuttle valve. Since this appears to be the supporting disclosure for part of the claimed “electrically operated valve” (Claims 1 and 8), it is not clear that applicant was in possession of the invention as claimed in view of the disclosure of the invention as filed (MPEP 2163.04).
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 1-3, 5, 7-10, 12, and 14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites in part “wherein the valve assembly comprises an electrically operated proportional valve connected to the high-pressure source or the hydraulic reservoir and selectively connected on an outlet side to either of the opposing working chambers of the steering cylinder via an electrically operated valve”. This is indefinite. The claim is unclear how the “electrically operated proportional valve” connected to a “the hydraulic reservoir” is “selectively connected on an outlet side to either of the opposing working chambers of the steering cylinder via an electrically operated valve” when the “hydraulic reservoir” is not disclosed as being pressurized. Fluid would be thought to flow to the reservoir not from the reservoir, which is the reverse relation to the claimed “outlet”. Claim 5 has a similar issue.
Claim 2 recites in part “via an electrically operated valve”. This is indefinite. Claim 2 depends from Claim 1. Claim 1 has already established “an electrically operated valve”. Claim 2 is indefinite whether this should be amended to refer to the same valve introduced in Claim 1 or if this is a second electrically operated valve.
Claim 3 recites in part “wherein the controller is configured to actuate the electrically operated proportional valve and the electrically operated valve”. This is indefinite. “the electrically operated valve” could refer to either a valve introduced in Claim 1 or Claim 2, both with the same name.
Claim 5 recites in part “via an electrically operated valve”. This is indefinite. Claim 1 has already established “an electrically operated valve”. Claim 5 is indefinite whether this should be amended to refer to the same valve introduced in Claim 1 or if this is a second electrically operated valve.
Claim 8 recites in part “wherein the valve assembly comprises an electrically operated proportional valve connected to the high-pressure source or the hydraulic reservoir and selectively connected on an outlet side to either of the opposing working chambers of the steering cylinder via an electrically operated valve”. This is indefinite. The claim is unclear how the “electrically operated proportional valve” connected to a “the hydraulic reservoir” is “selectively connected on an outlet side to either of the opposing working chambers of the steering cylinder via an electrically operated valve” when the “hydraulic reservoir” is not disclosed as being pressurized. Claim 12 has a similar issue.
Claim 9 recites in part “via an electrically operated valve”. This is indefinite. Claim 8 has already established “an electrically operated valve”. Claim 9 is indefinite whether this should be amended to refer to the same valve introduced in Claim 8 or if this is a second electrically operated valve.
Claim 10 recites in part “wherein the controller is configured to actuate the electrically operated proportional valve and the electrically operated valve”. This is indefinite. “the electrically operated valve” could refer to either a valve introduced in Claim 8 or Claim 9, both with the same name.
Claim 12 recites in part “via an electrically operated valve”. This is indefinite. Claim 8 has already established “an electrically operated valve”. Claim 12 is indefinite whether this should be amended to refer to the same valve introduced in Claim 8 or if this is a second electrically operated valve.
Those claims not specifically mentioned above are rejected as being rendered indefinite by virtue of their dependence on an indefinite claim.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 MICHAEL QUANDT whose telephone number is (571)272-1247. The examiner can normally be reached Tuesday-Thursday 9-3pm (part-time).
Examiner interviews are available via telephone, in-person, 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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, NATHANIEL WIEHE can be reached at (571)272-8648. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MICHAEL QUANDT
Primary Examiner
Art Unit 3745
/MICHAEL QUANDT/Primary Examiner, Art Unit 3745
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