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 .
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, 5-10 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 “a processor configured to” followed by “open the third valve in a case where the measured pressure is greater than the third determined threshold” which is not supported by the specification and as such is considered new matter. While the specification provides support for the configuration of this condition there is no recitation of the safety valve (14) being controlled by the processor as only the switching valves (12a, 13a) which are equivalent to the claimed first and second valve are described as such (see paragraph 36) and a such there is no support for the processor controlling the third valve. While the pressure is measured by the control device there is no indication that the processor or control device actual provides the control to the safety valve (see paragraph 42, figure 3) which can also be seen in Figure 1, as no control signal is drawn to valve 14 as compared to valves 13a and 12a.
Claim 7 recites further operating conditions for the safety valve based on the processor which are not supported by the specification and thus considered new matter in the same way as in claim 1 above.
Claim 8 recites further operating conditions for the safety valve based on the processor which are not supported by the specification and thus considered new matter in the same way as in claim 1 above.
Claims 5-6, 9-10 are rejected as being dependent upon a rejected claim.
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, 4-10 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 open the first valve and the second valve in a case where the measured pressure is less than a first predetermined threshold, close the first valve and open the second valve in a case where the measured pressure is equal to or greater than the first predetermine threshold and equal to or less than a second predetermined threshold, open the first valve and close the second valve in a case where the measured pressure is greater than the second predetermined threshold and less than a third predetermined threshold” which is considered indefinite. The limitations as claimed assume that the valves are already under these conditions and as such it is unclear how the system is able to operate because it provides three separate operating conditions that assume the valves are in previous states. For the first case, both valves would have to be closed prior, for the second case the first valve would have to be open prior and the second valve would have to be closed prior, and for the third case the firs valve would have to be open prior and the second valve would have to be close prior; however, there is no other configurations described and as such it is unclear how the process is configured to control the valves overall because one having ordinary skill in the art would recognize that in these configurations there would be transition as measured between the different thresholds so it is unclear how the different cases interact resulting in the metes and the bounds of the claims being considered indefinite. For the processor to have worked, the valves would have to have been in some position prior to the individual cases, and it is unclear if they would be or what the configuration for the invention would be that would allow the operation, otherwise, for example if the system is already operating in the case when it is less than a predetermined threshold and both valves are open, when a measurement of greater than the predetermined threshold is determined, it cannot open the second valve as the second valve is opened already, which is what is seen in Figure 6. The claims assume static starting conditions for the processor for each case that would allow the valves to be operated as such without first defining where the valves would be prior to operation or without stating that under these conditions the valves are configured to be in specific conditions resulting in the claims being indefinite.
Claim 4 recites “close the valve in a case where the measured pressure is equal to or greater than a first predetermined threshold and equal to or less than a second predetermined threshold, open the valve in a case where the measured pressure is less than the first predetermined threshold after the processor has closed the valve, close the valve in a case where the measured pressure is greater than the second predetermined threshold after the processor has opened the valve” which is considered indefinite as it is unclear what the metes and bounds of the claims. The claims provide three conditions, but without specifying starting conditions or conditions on how all the cases relate to each other which renders the claims indefinite as it is unclear how the processor would operate in conditions where the valve is between the first and second threshold after the processor has opened the valve for example.
Claim 5 recites a case of closing the first valve based on the measured pressure being equal to the predetermined threshold, which is considered indefinite as the claims have already recited “close the first valve and open the second valve in a case where the measured pressure is… equal to or less than a second predetermined threshold” so it is unclear how this differs or relates to that step prior, or if it is even further limiting the claims.
Claim 6 recites a case of closing the first valve then the measured pressure is equal to the first predetermined threshold which is considered indefinite as the claims have already recited “close the first valve… in a case where the measured pressure is equal to or greater than the first predetermined threshold” so it is unclear how this differs or relates to that step prior, or if it is even further limiting the claims.
Claim 8 recites a case where the first valve is closed where the measured pressure is equal to the second predetermined threshold and where the measured pressure is equal to the first predetermined threshold which is considered indefinite as claim 1 has already required “close the first valve… where the measured pressure is equal to or greater than the first predetermined threshold and equal to or less than a second predetermined threshold” so it is unclear how this differs or relates to that step prior, or if it is even further limiting the claims.
In all of the rejections above, the claims are considered indefinite for making it unclear how the different valve operations relate to teach other as well as starting conditions of the system as it is unclear in the conditions as claimed if the valves would already be open or closed in certain circumstances or how the system would operate if the conditions were already spent that would result in no change in a valve conditions, which the specification also does not make clear.
Claims 7, 9-10 are rejected as being dependent upon a rejected claim.
Allowable Subject Matter
While the claims do appear to read over the prior art, specifically for the valves being opened and closed under conditions different than the closest prior art, that of which was provided in the previous rejection, the indefiniteness above renders this unclear and it unclear if the definite and supported limitations of the claims would ultimately read over the prior art, and as such although no rejection is made in view of the prior art, a determination of allowability cannot be made until those rejections are resolved.
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 BRIAN M KING whose telephone number is (571)272-2816. The examiner can normally be reached Monday - Friday, 0800-1700.
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/BRIAN M KING/Primary Examiner, Art Unit 3763