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 .
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 “cylinder” recited in claim 12, line 21, and “circular cylinder” recited in claim 12, line 23, 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.
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.
This application includes one or more claim limitations that use the word “means” or “step” which are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) uses the word “means” coupled with functional language without reciting sufficient structure to perform the recited function.
Such claim limitation(s) is/are:
“means for guiding” in claim 20, line 2.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Allowable Subject Matter
Claim(s) 19 and 20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claims 19 and 20, the closest prior art does not disclose or render obvious, as best understood, the plug valve, wherein the cylindrical plug comprises a deep structure of which a peripheral surface thereof has at least one slot forming a displacement circuit and a surface structure of which peripheral surface thereof forms the peripheral surface of the cylindrical plug and covers the peripheral surface of the deep structure; the surface structure comprising at least two orifices through the surface structure that are designed to be positioned simultaneously opposite respective communication orifices of the valve body, in combination with the limitations of the base claim.
Claim Objections
Claims 12 and 19are objected to because of the following informalities:
In claim 12, line 6, the recitation “at least two orifices” should read –said at least two orifices--.
In claim 12, lines 10-11, the recitation “the through-orifices” should read –the at least two through-orifices--.
In claim 19, lines 19-20, the recitation “and in that the tope of the at least one relief of the inner surface of at least a part of the intermediate element” should read -- and .
Appropriate correction is required.
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 12-21 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.
Claims 12, 16 and 17, all recite the limitation “a cylinder”; however, the claims are unclear as to if these recitations refer to the same element or different elements of the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 12 recites the broad recitation “two opposing surfaces” in lines 9-10, and the claim also recites “an inner surface and an outer surface” in line 10 which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purpose of examination, it is assumed that the recitation “between two opposing surfaces, specifically an inner surface and an outer surface” in claim 12, lines 9-10, should read –between
Claim 12 recites the limitation “an orifice” both in lines 15 and 17. The claim is unclear as to if these limitations refer to the same element or different elements of the invention.
Claim 12 recites the limitation “the cylindrical cylinder” in line 24. There is insufficient antecedent basis for this limitation in the claim.
Claims 13 and 14 both recite the limitation “a cylindrical peripheral surface of the cylindrical plug”; however, the claims are unclear as to if these recitations refer to the same element or different elements of the invention.
Claim 19 recites the phrases “of which” and “thereof” throughout the claim; however, the claim is unclear as to what elements of the claim these phrases or terms refer. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only. Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. There may be plural indentations to further segregate sub-combinations or related steps. See 37 CFR 1.75 and MPEP 608.01(i)-(p). Note the format of the claims in the patent(s) cited. The claims should be restructured so as to clearly convey the elements of the claimed invention.
Claims 15, 18, 20 and 21 are rejected because they depend on a rejected claim.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 12-16 and 18, as best understood, are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by DE3638518 (“Jensen”).
Regarding claim 12, Jensen discloses a plug valve comprising:
- a valve body (mainly defined by 10 and 32) comprising an internal volume (interior space of housing 10 & 32) associated with at least two communication orifices (respective orifices extending through flange 28 and flange 31) in communication with respective conduits (respective conduits connected by threaded engagement with female threading 29 and male threading 33),
- a cylindrical plug (11) of circular section, the cylindrical plug comprising at least one circuit (fluid channel 19; see figs. 1 and 2) passing between at least two orifices (orifices at opposing end of channel 19; see fig. 1) in a peripheral surface (exterior surface of cylindrical plug 11) of the cylindrical plug, at least two orifices of the cylindrical plug being arranged on the peripheral surface to enable said at least two orifices to be positioned simultaneously opposite respective communication orifices of the valve body (see fig. 1),
- an intermediate element (“gland” comprised of two gland halves 12) comprising at least two through-orifices (orifices 21 extending through respective gland halves 12 on opposed sides of cylindrical plug 11, relative to the orientation of fig. 1) between two opposing surfaces, specifically an inner surface (surface of gland 12 adjacent cylindrical plug 11) and an outer surface (exterior surface of gland 12), the through-orifices being arranged opposite respective communication orifices of the valve body (see fig. 1), the outer surface of the intermediate element being designed to be positioned opposite the internal volume of the valve body (see fig. 1), the inner surface bearing at least one relief (35) surrounding a through-orifice (21) being designed so that a top of the at least one relief forms about an orifice at least one continuous contact surface bearing against the peripheral surface of the cylindrical plug (circular beads 35 circumscribe orifices 21),
- a gasket (23) positioned in compression on an orifice (21) between the intermediate element (12) and the valve body (mainly defined by 10 and 32; see assembly of fig. 1),
and in that the top of the at least one relief of the inner surface of at least a part of the intermediate element defines a contact surface (contact surface between circular bead(s) 35 and cylindrical plug 11) corresponding to at least all points of a virtual intersection between a cylinder parallel to an axis of the through-orifice surrounded by the at least one relief (cylinder formed by connecting respective radially outer, or radially inner, cylindrical beads 35 of gland halves 12) and a circular cylinder (circular cylinder formed by connecting respective radially outer, or radially inner, cylindrical beads 35 of gland halves 12) of which an axis (horizontal axis, relative to the orientation of fig. 1) of said circular cylinder coincides with an axis (longitudinal axis of channel 19; see fig. 1) of the cylindrical plug and a radius (radius of cylinder formed by connecting respective radially outer, or radially inner, cylindrical beads 35 of gland halves 12) of the cylindrical cylinder is less than or equal to a radius (radius defined by distance from center of channel 19 to a radially outer surface of cylindrical plug, relative to the orientation of fig. 2) of the cylindrical plug.
Regarding claim 13, Jensen discloses the intermediate element (“gland” comprised of two gland halves 12) is structurally made of one or more parts (two halves 12) cooperating with one another and designed to form an arrangement that surrounds a cylindrical peripheral surface (exterior surface of cylindrical plug 11) of the cylindrical plug (11).
Regarding claim 14, Jensen discloses the intermediate element (“gland” comprised of two gland halves 12) is made of two parts (two gland halves 12) arranged so that each of the two parts of the intermediate element covers a respective half (gland halves 12 are identical halves of the whole gland) of a cylindrical peripheral surface (exterior surface of cylindrical plug 11) of the cylindrical plug (11).
Regarding claim 15, Jensen discloses a section profile (see fig. 1) of the outer surface (exterior surface of gland 12) of the intermediate element (“gland” comprised of two gland halves 12) matches a section profile (see fig. 1) of the internal volume of the valve body (mainly defined by 10 and 32), enabling the intermediate element to be positioned by translation in the valve body.
Regarding claim 16, Jensen discloses the intermediate element (“gland” comprised of two gland halves 12) comprises at least one part structurally designed to comprise a main body having a shape defined as a cylindrical tube portion (tube portion defined by surfaces 20 of gland halves 12) and a concavity (recess(es) 20 form concavity/concavities matching a the cylindrical outer surface of cylindrical plug 11) matching a peripheral portion of a cylinder of circular section, so that the at least one relief (35) on the inner surface has a continuous thickness on the inner surface (surface defined by concavity 20) of the intermediate element.
Regarding claim 18, Jensen discloses the outer surface (exterior surface of gland 12) of the intermediate element (“gland” comprised of two gland halves 12) comprises at least one seat (annular groove(s) 22) designed to position at least a part of the gasket (23).
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.
Claim 21, as best understood, is rejected under 35 U.S.C. 103 as being unpatentable over Jensen, as applied to claim 12 above, in view of US4395018 ("Moen").
Regarding claim 21, Jensen discloses the invention as claimed except for the material of manufacture of the at least one intermediate element and the peripheral surface of the cylindrical plug.
However, Moen teaches an intermediate element ("sleeve" 24) and a peripheral surface of a plug ("stem" 20) are made of the same or different plastic materials (see claim 16).
It would have been obvious to one having ordinary skill in the art at the time of filing of the invention to modify the invention of Jensen by forming the at least one intermediate element and the peripheral surface of the cylindrical plug of a same or different plastic materials, as taught by Moen, to have a plug valve of low weight, and since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claims 12 and 17, as best understood, are rejected under 35 U.S.C. 103 as being unpatentable over US3346002 (“Thompson”) in view of US3346002 (“Thompson”).
Regarding claims 12 and 17, Thompson discloses a plug valve comprising:
- a valve body (mainly defined by 2 and 48) comprising an internal volume (interior volume defined by inlet 20 and outlet 22) associated with at least two communication orifices (threaded inlet and outlet 20 and 22) in communication with respective conduits (via threaded connection to threaded inlet 20 and threaded outlet 22),
- a cylindrical plug (10) of circular section, the cylindrical plug comprising at least one circuit (passage 70) passing between at least two orifices (upstream and downstream orifices defining inlet and outlet of passage 70) in a peripheral surface (exterior surface of cylindrical plug 10) of the cylindrical plug, at least two orifices of the cylindrical plug being arranged on the peripheral surface to enable said at least two orifices to be positioned simultaneously opposite respective communication orifices of the valve body (see assembly of fig. 1),
- an intermediate element (sleeve 60) comprising at least two through-orifices (66 and 68) between two opposing surfaces (surface adjacent cylindrical plug 10 and surface on which gasket 81 is disposed), specifically an inner surface and an outer surface (radially outer surface of sleeve 60), the through-orifices being arranged opposite respective communication orifices of the valve body (see fig. 1), the outer surface of the intermediate element being designed to be positioned opposite the internal volume of the valve body (see fig. 1),
- a gasket (81) positioned in compression on an orifice (opening defined by interior of valve body 2 & 48, against which seal 81 abuts) between the intermediate element and the valve body,
and a circular cylinder (circular cylinder defined by passage 70) of which an axis of said circular cylinder coincides with an axis (longitudinal axis of passage 70) of the cylindrical plug and a radius (radius of cylindrical channel 70) of the cylindrical cylinder is less than or equal to a radius (radius of sealing section 26 of cylindrical plug 10) of the cylindrical plug; and
the intermediate element comprises at least one part (60) structurally designed to comprise a substantially flat main body (main body 60 is of cylindrical form having flat top and bottom surfaces, relative to the orientation of figs. 1 and 4) of which the inner surface (radially inner surface) comprises a portion of a cylinder (member 60 defines cylindrical opening 64) oriented along an axis (vertical longitudinal axis of opening 64, relative to the orientation of fig. 1) perpendicular to a plane (plane parallel to planar top or bottom surface(s) of sleeve 60, relative to the orientation of fig. 1, or plane(s) parallel to surface(s) 83) of the main body and of which an end (radially inner end contacting an upstream and/or downstream periphery of channel 70) forms the at least one continuous contact surface (interior of sleeve 60 forms continuous contact surface with sealing section 26 of cylindrical plug 10) having a concavity (64) intended to bear against the peripheral surface (exterior surface of cylindrical plug 11) of the cylindrical plug (11).
Thompson does not disclose the inner surface bearing at least one relief surrounding a through-orifice being designed so that a top of the at least one relief forms about an orifice at least one continuous contact surface bearing against the peripheral surface of the cylindrical plug, and the top of the at least one relief of the inner surface of at least a part of the intermediate element defines a contact surface corresponding to at least all points of a virtual intersection between a cylinder parallel to an axis of the through-orifice surrounded by the at least one relief.
Jensen teaches an intermediate element (“gland” comprised of two gland halves 12) comprising an inner surface (surface of gland 12 adjacent cylindrical plug 11) bearing at least one relief (circular beads 35) surrounding a through-orifice (21) being designed so that a top of the at least one relief forms about an orifice at least one continuous contact surface bearing against a peripheral surface (exterior surface of cylindrical plug 11) of the cylindrical plug (circular beads 35 circumscribe orifices 21), and the top of the at least one relief of the inner surface of at least a part of the intermediate element defines a contact surface (contact surface between circular bead(s) 35 and cylindrical plug 11) corresponding to at least all points of a virtual intersection between a cylinder parallel to an axis of the through-orifice surrounded by the at least one relief (cylinder formed by connecting respective radially outer, or radially inner, cylindrical beads 35 of gland halves 12).
It would have been obvious to one having ordinary skill in the art at the time of filing of the invention to modify the invention of Thompson by configuring the intermediate element to have at least one relief surrounding a through-orifice being designed so that a top of the at least one relief forms about an orifice at least one continuous contact surface bearing against the peripheral surface of the cylindrical plug, and the top of the at least one relief of the inner surface of at least a part of the intermediate element defines a contact surface corresponding to at least all points of a virtual intersection between a cylinder parallel to an axis of the through-orifice surrounded by the at least one relief, as taught by Jensen, to reduce friction between contact parts.
Response to Arguments
Applicant’s arguments filed December 4, 2025, have been fully considered.
With regards to the prior 35 U.S.C. 112(b) rejection of claims 12-18, while Applicant’s current amendments have overcome some of the indefiniteness issues in the claims, Applicant’s amendments raise new questions of indefiniteness in the claims, see Office action above.
With regards to Applicant’s arguments concerning the prior art rejection of claim(s) 12-18 and 21 over Smith, including combinations thereof, Applicant’s amendment has overcome the rejection of record. However, the amended claims have necessitated new ground(s) of rejection rendering Applicant's arguments regarding Smith moot.
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 Hailey K. Do whose direct telephone number is (571)270-3458 and direct fax number is (571)270-4458. The examiner can normally be reached on Monday-Thursday (8:00AM-5:00PM ET) and Friday (8:00AM-12:00PM ET).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisors, Kenneth Rinehart at 571-272-4881, or Craig M. Schneider 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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/HAILEY K. DO/Primary Examiner, Art Unit 3753