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 (i.e., changing from AIA to pre-AIA ) 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 Amendment filed on 27 Jan 2026 has been entered. Claims 1-7 and 9-10 remain pending in the application. Applicant’s amendments to the claims overcome each and every objection and 112(b) rejection previously set forth in the Non-Final Office Action mailed 27 Oct 2025.
Response to Arguments
Applicant's arguments filed 27 Jan 2026 have been fully considered but they are not persuasive.
Applicant argues that Youngdo, as modified by Ferguson et al, fail to teach “where the second check valve is disposed between the solenoid valve and the metering valve on the discharging flow passage” as required by Claim 1.
In response to applicant's argument that Youngdo, as modified by Ferguson et al fails to teach or disclose the technical advantages of positioning the check valve to protect the solenoid valve from high pressure and operate the system more stably by preventing pressure drop, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant's argument that Ferguson et al is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Ferguson et al is reasonably pertinent to controlling fluid flow through a check valve and solenoid valve within a fluid flow system.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., protecting a solenoid valve from pressure imbalance causing mechanical resistance, vibration, noise and long term damage; or the specific functional effects achievable by a pressure balancing configuration of the valves) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., achieving pressure balance across solenoid valve nodes) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Next, Applicant argues that there would be no motivation to modify Youngdo with the teachings of Ferguson et al since Ferguson et al would not solve Youngdo’s vibration problem. However, 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 system of Youngdo with the check valve location as taught by Ferguson et al for the advantage of preventing or reducing unwanted pressure fluctuations or water hammer within the system, as taught by Ferguson et al (Col 6, lines 5-12). A water hammer, as taught by Ferguson et al, is merely a pressure surge of fluid within a pipeline. It is noted that the features upon which applicant relies (i.e., preventing vibration) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Last, Applicant argues that where the claimed structure is supported by the specification, the specification need not describe all functional consequences that flows naturally or arise inherently from the disclosure. However, this is moot since it appears that the Applicant is arguing unexpected benefits, not expected benefits. In the Arguments dated 27 Jan 2026, Applicant argues “Rather, the claimed configuration yields unexpected technical benefits that are neither taught nor suggested by the combination of Youngdo and Ferguson.” (page 11, lines 12-13).
Therefore, these arguments are unpersuasive.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-7 and 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable as obvious over Youngdo Ind Co Ltd (hereinafter “Youngdo”; KR20180066305A provided by Applicant on the IDS dated 29 August 2024 with references taken from Examiner provided English Machine Translation) in view of Ferguson et al (US 11096550).
Regarding Claim 1, as best understood, Youngdo discloses a valve assembly for controlling charging and discharging of a fuel (Figure 1; abstract). The valve assembly comprising:
a transfer flow passage (Figure 1) composed of:
a charging/discharging flow passage (30 generally) through which the fuel is transferred during charging/discharging of the fuel (via HP);
a charging flow passage (32 generally; ¶ 26) branched from the charging/discharging flow passage (Figure 1) and connected to a storage tank (100), wherein the fuel is transferred through the charging flow passage during charging of the fuel (via the filling device of Figure 1); and
a discharging flow passage (36 generally; ¶ 26) branched from the charging/discharging flow passage (Figure 1) and connected to the storage tank (100), wherein the fuel is transferred through the discharging flow passage during discharging of the fuel (to HP via 70);
a first check valve (the filling device on line 32 in Figure 1) configured to prevent backflow of the fuel transferred along the charging flow passage (Figure 1);
a solenoid valve (14) configured to open or close the discharging flow passage to regulate flow of the fuel (Figure 1);
a second check valve (70) configured to prevent backflow of the fuel transferred along the discharging flow passage (Figure 1 to 12); and
a metering valve (EFV in Figure 1) configured to control a flow rate of the fuel transferred along the discharging flow passage (Figure 1),
but fails to expressly disclose where the second check valve is disposed between the solenoid valve and the metering valve on the discharging flow passage.
Ferguson et al teach a valve assembly for controlling the discharge of fluid, the assembly comprising a check valve (21) and a solenoid valve (4) where the check valve is disposed upstream of the solenoid valve (Figure 1B; Col 6, lines 5-12) on the discharging flow passage (60 in Figure 1B).
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 system of Youngdo with the check valve location as taught by Ferguson et al for the advantage of preventing or reducing unwanted pressure fluctuations or water hammer within the system, as taught by Ferguson et al (Col 6, lines 5-12).
Additionally, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the application to modify the location of the check valve so that the check valve is disposed between the solenoid valve and the metering valve on the discharging flow passage since rearranging parts of an invention involves only routine skill in the art. The motivation for doing so would be to provide an optimal arrangement of the valves based on user defined criteria, including access for user inspection or maintenance.
Regarding Claim 2, Youngdo disclose a manual valve (12) configured to open or close the charging/discharging flow passage (30) to control flow of the fuel during charging/discharging of the fuel (Figure 1).
Regarding Claim 3, Youngdo disclose a bypass flow passage (to 40) branched from the charging/discharging flow passage (via 32 in Figure 1) and connected to the storage tank (100), wherein a discharge valve (40) is installed in the bypass flow passage and is configured to collect the fuel charged to the storage tank (Figure 1).
Regarding Claim 4, Youngdo disclose a temperature-sensitive safety device (PRD 42) configured to operate according to a surrounding temperature around the valve assembly (Figure 1) and to discharge the fuel charged into the storage tank to an outside (from 100).
Regarding Claim 5, Youngdo disclose a filter (56) configured to remove a foreign substance contained in the fuel transferred along the charging/discharging flow passage (in 30 in Figure 1).
Regarding Claim 6, Youngdo disclose a filter (within 36 in Figure 1) configured to remove a foreign substance contained in the fuel transferred along the discharging flow passage (in 36 in Figure 1).
Regarding Claim 7, Youngdo disclose a temperature sensor (50) for measuring a temperature of the fuel charged in the storage tank (within 100).
Regarding Claim 9, the modification of Youngdo in view of Ferguson et al teach where the second check valve is connected to a far end of the solenoid valve from the charging/discharging flow passage since the modification teaches the second check valve located between the metering valve and the solenoid valve on the discharging flow passage, as discussed above.
Regarding Claim 10, the modification of Youngdo in view of Ferguson et al teach all essential elements of the current invention as discussed above but fails to expressly teach where the second check valve is directly connected to the solenoid valve upstream on the discharging flow passage.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the application to modify the location of the check valve so that the second check valve is directly connected to the solenoid valve upstream on the discharging flow passage since rearranging parts of an invention involves only routine skill in the art. The motivation for doing so would be to provide an optimal arrangement of the valves based on user defined criteria, including access for user inspection or maintenance.
Conclusion
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 NICOLE GARDNER whose telephone number is (571)270-0144. The examiner can normally be reached Monday - Friday 8AM-4PM EST.
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/NICOLE GARDNER/
Examiner, Art Unit 3753
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