DETAILED ACTION
Non Final
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/Arguments
Claims 1-4 and 6-13 are pending. Claims 4 and 7 remain withdrawn. Claims 1, 7, 8 are currently amended. Claim 5, 14 and 15 are canceled. It appears that no new matter has been entered. The remarks have clarified that the “’070” document abbreviation is linked to the patent listed in the background of the invention. Applicant still has not amended the specification to correct the abbreviation deficiency.
The amendments to the claims and replacement figures have overcome the drawing objections. The amendments to the claims along with the remarks have overcome the 35 USC 112 first and second paragraph rejections. It is noted that the 35 USC 112 sixth paragraph is provided to set the interpretation of any means plus function nonce style language for prosecution on the merits.
Applicants remarks are not found persuasive. The remark that Buckner does not use a linear actuator is not persuasive, as the primary reference does teach such an actuator, so the response merely argues 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).
On page 21, applicant remarks that the office is essentially road-mapping the claims out of the prior art. But this is not the case. The majority of the limitations are met in the primary reference, and the secondary teaching references are relied upon for the deficiencies of the primary reference. In other words, applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Additionally, Applicant argues by implication that the office has combined non analogous art. In response to applicant's argument that Buckner is non-analogous art to Dhekale, 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, both the primary and secondary references deal with rotational valves for fluid control, and until the most recent amendment, Dhekale anticipated the initial claim (anticipation is the epitome of obviousness) and considering that the problem to be solved is embodied in the claim which is met by the combination of the references, the remarks cannot be considered persuasive.
With regard to the second paragraph page 22, the argument is that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., digging up and opening the valve) 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 addition, the Applicant argues features in the secondary teaching reference that are already present in the primary reference, which amounts to arguing against the references individually. As previously mentioned, 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).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the office provided that one of ordinary skill in the art at the time of filing of the invention to provide for Dhekale as taught in Buckner, the control valve positioned below ground, with the linear actuator is positioned above ground as taught in Buckner, all for purposes of for example, protection of above ground surface conditions (which provides the factual underpinning rationale for the combination.)
Again on page 23, the remarks are not commensurate in scope with the claims, and applicants remarks appear to argue a teaching away, but contrary to Applicants argument, the prior art’s mere disclosure of more than one alternative (in this case to accomplish the actuation of the valve) does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed. See In re Fulton, 391 F.3d 1195, 73 USPQ2d 1141 (Fed. Cir. 2004); MPEP 2143.01 I.
Regarding the fourth argument, Applicant alleges that the combination would make Dhenkale inoperable for its intended purpose, but fails to disclose how such an in-operation would occur. The burying of the valve of Dhekale would not make it perse inoperable. Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
For at least these reasons, along with the amendments to the claims, this action must be made Final.
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, 6, 8-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dhekale (US 12031639) (see exemplary reference Rimboym (US 8366070)) and in further view of Buckner (US 20110283786);
In the alternative; Claim(s) 1, 6, 8-12 and also Claims 2, 3 and 13, and is/are rejected under 35 U.S.C. 103 as being unpatentable over Dhekale in view of Buckner, and further in view of Ledeen (US 4540025) and/or in view of Meadows (US 10473233);
Dhekale discloses in claim 1: (see at least partially annotated figure 1 below)
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A system for modulating an underground fluid line, the system comprising: a control valve (105 and see abstract and figures 1 or 2) and having a fluid pathway (ball valve of the actuator 100 which includes an inlet/outlet as is typical, see Col 4 ln 1-6) connecting an inlet to an outlet, a rotatable ball valve (id) positioned within the fluid pathway and having an opening therethrough to align with the fluid pathway, and a valve stem connected to the rotatable ball valve, extending to an exterior of the control valve, and configured to rotate the rotatable ball valve within the control valve to thereby affect alignment of the opening with the fluid pathway ; a crank arm actuator mechanism (at 110 has a leverage connected to rotating shaft that converts the linear motion of the shaft to rotational motion of the valve stem) connected by a first end (at 112) to the valve stem (112) of the control valve; and an interchangeable linear non-pneumatic actuator module (102/104/108 as the case may be interchanged for the desired control per Col 5 ln 47-60 where the hydraulic motor/actuator can be double acting or spring to close) positioned above ground and having a piston (114) configured to move along a line (central axis of 108 is…) normal to an axis (central axis of 112) of the valve stem, the piston being functionally connected to a second end (at 1002) of the crank arm actuator mechanism via a shaft such that linear (and reciprocal) movement of the piston causes rotational movement of the first end of the crank arm actuator mechanism (i.e. to turn the quarter turn ball valve) and the connected valve stem; wherein the interchangeable linear non-pneumatic actuator module operates to cause the piston to move (via fluid pressure) along the line normal to the axis of the valve stem (as shown) and thereby alter the alignment of the opening of the rotatable ball with the fluid pathway (i.e. to open/close the valve, the valve moves open to close via 90.deg quarter turn valve, Col 4 ln 1-6); Dhekale does not disclose: the control valve positioned below ground, the linear actuator is positioned above ground; Buckner teaches: the control valve positioned below ground, with the linear actuator is positioned above ground (figure 5, for purposes of for example, protection of above ground surface conditions);
Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing of the invention to provide for Dhekale as taught in Buckner, the control valve positioned below ground, with the linear actuator is positioned above ground as taught in Buckner, all for purposes of for example, protection of above ground surface conditions.
If it could be persuasively argued at some future unforeseen date that Dhekale does not explicitly disclose: a ball valve in a fluid pathway with an opening through the ball valve to align the fluid pathway with the opening and with a valve stem extending to the exterior of the control valve; an interchangeable electric, electro-hydraulic or hydraulic actuator
Ledeen discloses: a ball valve (10) in a fluid pathway (via 18) with an opening (opening of 38) through the ball valve to align the fluid pathway with the opening (for fluid control) and with a valve stem (32) extending to the exterior of the control valve (for example to operationally rotational control of the valve.)
Meadows teaches: using interchangeably an electric, electro-hydraulic or hydraulic actuator for moving the piston rod 20 figure 3 (and see Col 11 ln 30-40, all for the purpose of providing an appropriate actuator for automatic operation.)
Accordingly, it would have been further obvious to one of ordinary skill in the art at the time of filing of the invention to provide as taught in Ledeen (as well as admittedly taught in Rimboym) for that of Dhekale a ball valve in a fluid pathway as taught in Ledeen with an opening through the ball valve so as to align (or misalign) the fluid pathway with the opening as taught in Ledeen, for fluid control therethrough, as well as to extend a valve stem as taught in Ledeen out and to the exterior of the control valve, all for example to operationally rotational control of the valve;
Accordingly, it would have been further obvious to one of ordinary skill in the art at the time of filing of the invention to provide as taught in Meadows for that of Dhekale, using interchangeably an electric, electro-hydraulic or hydraulic actuator for moving the piston rod as taught in Measows, all for the purpose of providing an appropriate actuator for automatic operation;
Dhekale discloses (or as modified for the reasons discussed above) in claim 2: The system of claim 1, wherein the linear actuator module is one of either an electric driven actuator or (the use of alternative language indicates alternative grouping under MPEP 2131) an electro-hydraulic driven actuator (105 is an electro-hydraulic actuator system.) Dhekale does not disclose: an electric driven actuator; but Meadows teaches: using interchangeably an electric, electro-hydraulic or hydraulic actuator for moving the piston rod 20 figure 3 (and see Col 11 ln 30-40, all for the purpose of providing an appropriate actuator for automatic operation.)
Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing of the invention to provide as taught in Meadows for that of Dhekale, using interchangeably an electric, electro-hydraulic or hydraulic actuator for moving the piston rod as taught in Measows, all for the purpose of providing an appropriate actuator for automatic operation.
Dhekale discloses (as modified for the reasons discussed above) in claim 3: The system of claim 2, wherein the linear actuator module is interchangeable between the electric driven actuator and the electro-hydraulic driven actuator (as modified for the reasons discussed above.)
Dhekale discloses (as modified for the reasons discussed above) in claim 6: The system of claim 1, wherein the linear actuator comprises an electro-hydraulic linear actuator (as discussed 105 is such.)
Dhekale discloses (as modified for the reasons discussed above) in claim 8: The system of claim 1, wherein the first end of the crank arm actuator mechanism comprises a four-position stem key (110 is four quadrant keyed to the stem) for adjusting (the term “for adjusting” considered a statement of intended use adding no meaningful limitation to the body of the claimed apparatus) to allow attachment to the valve stem of the control valve (the position of the arm can be connected at 90.deg. quadrant rotational positions.)
Dhekale discloses (as modified for the reasons discussed above) in claim 9. The system of claim 2, wherein the linear actuator module is double-acting with power to both close and open the control valve (figure 1 both hydraulic and spring loaded return.)
Dhekale discloses (as modified for the reasons discussed above) in claim 10: The system of claim 2, wherein the linear actuator module is single-acting (figure 2) with power to open the control valve.
Dhekale discloses (as modified for the reasons discussed above) in claim 11: The system of claim 10, further comprising a stored energy device (spring figure 1) coupled to the valve stem to close the control valve.
Dhekale discloses (as modified for the reasons discussed above) in claim 12: The system of claim 2, wherein the linear actuator module is single-acting (figure 2) with power to close the control valve.
Dhekale discloses (as modified for the reasons discussed above) in claim 13: The system of claim 12, further comprising a stored energy device (spring figure 1) coupled to the valve stem to [close]; but Dhekale does not disclose: a stored energy device to open the control valve; but considering one of ordinary skill in the art would consider: arranging the actuator to bias open the valve in case of loss of power based on interchangeability and redundancy of parts;
Accordingly, it would have been obvious to one of ordinary skill in the art at the time of filing of the invention to arrange the spring to bias the valve of Dhekale open with the hydraulic actuator to close the valve, all for the purpose of providing a failsafe open arrangement in case of loss of power, and especially considering that placement or rearrangement of parts has been held to involve only routine skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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 MATTHEW W JELLETT, whose telephone number is 571-270-7497. The examiner can normally be reached on Monday-Friday (9:30AM-6:00PM EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisors can be reached by phone. Ken Rinehart can be reached at (571)-272-4881, or Craig Schneider can be reached at (571) 272-3607. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Matthew W Jellett/Primary Examiner, Art Unit 3753