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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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 1-6 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.
A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See MPEP 2173.05(p) II.
Claim 1 recites that “if the three-way valve discharges gas to the main exhaust line, the gate valve is closed to form a closed flow path between the gate valve and the three-way valve, and in a state where the second gas has been introduced into the closed flow path from the gas introduction pipe, internal leakage in the three-way valve is detectable using change in pressure detected by the pressure gauge” in lines 15-19. This is a process limitation as it does not associate function to structure. Instead, the recitation simply states what happens. The Office only gives such a limitation patentable weight insofar as the structure’s ability to perform such a process. Claims 2-6 depend on claim 1.
Claim 2 recites that “after the second gas is introduced from the gas introduction pipe, the pressure in the closed flow path is maintainable by closing the second gate valve, and internal leakage in the three-way valve is detectable using the change in the pressure in the closed flow path detected by the pressure gauge” in lines 3-6. This is a process limitation as it does not associate function to structure. Instead, the recitation simply states what happens. The Office only gives such a limitation patentable weight insofar as the structure’s ability to perform such a process.
Claim 3 recites that “the second gas is continuously introduced from the gas introduction pipe in a state where internal leakage in the three-way valve is detectable” in lines 1-3. This is a process limitation as it does not associate function to structure. Instead, the recitation simply states what happens. The Office only gives such a limitation patentable weight insofar as the structure’s ability to perform such a process.
Claim 4 recites that “the second gas is introduced from the gas introduction pipe only for a predetermined time to achieve a state where internal leakage in the three-way valve is detectable” in lines 1-3. This is a process limitation as it does not associate function to structure. Instead, the recitation simply states what happens. The Office only gives such a limitation patentable weight insofar as the structure’s ability to perform such a process.
The term “normally” in claim 6 is a relative term which renders the claim indefinite. The term “normally” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is impossible to ascertain what about the valve is structurally distinct about being “normally-open.”
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Stating that the valve is “normally-open” does not further limit its structure and thus the claim. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
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.
Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Onodera (US 6,564,784 B1).
Regarding claims 1 and 6, Onodera discloses an apparatus comprising: a main exhaust line 16; a bypass line 15; an upstream exhaust line 12; and a three-way valve 20c capable of switching a flow of the exhaust gas from the upstream exhaust line to the main exhaust line or the bypass line (column 17, lines 18-29), wherein the bypass line includes: a gate valve 15c; a gas introduction pipe (the pipe of the bypass line itself); and a pressure gauge 31d configured to detect pressure between the three-way valve and the gate valve (column 14, lines 14-15). Because of the USC 112 rejections as above and the lack of positively reciting sources of materials (exhaust gas, second gas), the process limitations are not given patentable weight.
Regarding claim 2, Onodera discloses a second gate valve 17a (see Figure 4). Because of the USC 112 rejections as above and the lack of positively reciting sources of materials (exhaust gas, second gas), the process limitations are not given patentable weight.
Regarding claim 3, because of the USC 112 rejections as above and the lack of positively reciting sources of materials (exhaust gas, second gas), the process limitations are not given patentable weight.
Regarding claim 4, because of the USC 112 rejections as above and the lack of positively reciting sources of materials (exhaust gas, second gas), the process limitations are not given patentable weight.
Regarding claim 5, Onodera discloses a diaphragm mechanism 12b (see Figure 4).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IMRAN AKRAM whose telephone number is (571)270-3241. The examiner can normally be reached M-F 9a-5p.
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, Basia Ridley can be reached at 571-272-1453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IMRAN AKRAM/Primary Examiner, Art Unit 1725
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