DETAILED ACTION
This office action is in response to the amendments to the claims filed on 20 February 2026. Claims 1 – 4 are pending and currently being examined.
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 Objections
The previously made claim objections are hereby withdrawn in view of suitable amendments to the claims submitted with applicant’s response.
Claim Rejections - 35 USC § 112
The previously made 112 rejections are hereby withdrawn in view of suitable amendments to the claims submitted with applicant’s response.
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.
Claim(s) 1, 2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nagel (German Patent DE 3210240 A, Machine Translation provided – citations are to paragraphs in the Translation).
In Re Claim 1, Nagel discloses a diaphragm piston pump (1; title) comprising a leakage control (21, 22, 23), wherein a control unit (22, 23) is provided in the region of the diaphragm (9, 10), which can be activated by the pressure of the diaphragm (9, 10) during the suction stroke (this is when the diaphragm 9, 10 expands and contacts 22), wherein the control unit (22, 23) is hydraulically connected to a combined leakage and replenishing valve (26, 27), via which the sealing liquid (12 which is also in chamber 4a in addition to 13) can be discharged into the piston chamber (4a) of the diaphragm piston pump (1)(paragraph [0022]), wherein system pressure (in chamber 4a: “vacuum” in paragraph [0022] or “overpressure” in paragraph [0021]) is applied to a supplementary replenishing valve (27) when a leakage valve (26) is open, and system pressure is not applied to the supplementary replenishing valve (27) when the leakage valve (26) is closed (this functional limitation is met when the apparatus operates as disclosed), wherein the leakage valve (26) can be activated hydraulically (via liquid in a channel that connects chamber 4a with the depicted ball of 26 under overpressure conditions; even if the valve 26 can be actuated mechanically by tappet 23, it can also be actuated hydraulically when there is overpressure in chamber 12 / 4a as stated in paragraph [0021]) (paragraphs [0016], [0020] - [0022]; Figure 1).
In Re Claim 2, Nagel discloses that the control unit (22, 23) is arranged between the piston (4) of the diaphragm piston pump and the secondary hose diaphragm (10), wherein a control disc (22) which can be acted upon by the secondary hose diaphragm (10) is guided by a control rod (23) so as to be displaceable in the longitudinal direction against a restoring force (of the spring load in paragraph [0020]), wherein the control rod (23) comprises an activating piston (the shape of 22 reads on a piston; see paragraph [0021]: “the outer hose 10 lies on control plate 22 .. .. which opens leakage valve 26”) for the hydraulic connection with the leakage valve (26).
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nagel (German Patent DE 3210240 A, Machine Translation provided – citations are to paragraphs in the Translation) in view of Chiba (PG Pub US 20150122353 A1).
In Re Claims 3 and 4, Nagel discloses all the limitations of Claims 1 and 2 respectively, and Nagel further discloses that leakage valve (26) comprises a control ball on the pressurization of which the leakage valve (26) opens, so that the applied pressure in a hydraulic connection (above 4a and below the ball of valve 26) acts on an replenishing valve (27) in order to open said valve against a restoring force (spring associated with 27) when a pressure lower than the opening pressure of the replenishing valve (27) is applied (this functional limitation is met when the apparatus operates as disclosed), but the leakage valve (26) is a ball valve - so it does not disclose a control piston.
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However, Figures 1 and 2 of Chiba discloses that the valve (100) comprises a control piston (30), on the pressurization of which the valve opens (open position in Figure 2), so that the applied pressure in the hydraulic connection (12) acts via a connecting channel (see shaded area in the annotated figure above)(paragraphs [0048] – [0059]; Figures 1 and 2).
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It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed the invention to substitute valve (26) of Nagel with the valve (100) of Chiba (as illustrated by the annotated figures above), because it is only a matter of substituting one type of check valve with another type of check valve, so the results of the substitution are predictable (MPEP 2141, Section III, Rationale B).
Claim 1 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Yokomichi (European Patent EP 1058006 B1) in view of Nagel (German Patent DE 3210240 A, Machine Translation provided – citations are to paragraphs in the Translation)
In Re Claim 1, Yokomichi discloses a diaphragm piston pump comprising a leakage control (B25, B24, 2), wherein a control unit (2) is provided in the region of the diaphragm (“C”), which can be activated by the pressure of the diaphragm (“C”) during the suction stroke, wherein the control unit (22) is hydraulically connected to a replenishing valve (B25), via which the sealing liquid (oil) can be discharged into the piston chamber (B1) of the diaphragm piston pump, wherein the replenishing valve (B25) can be activated hydraulically (when passage B24 is opened by the plate 22 of the control unit 2) (paragraphs [0019] – [0021], [0027] – [0028]; Figures 1 – 3).
Yokomichi does not disclose a combined leakage and replenishing valve.
However, Nagel discloses combined leakage valve (26) and replenishing valve (27), via which the sealing liquid (12 which is also in chamber 4a in addition to 13) can be discharged into the piston chamber (4a) of the diaphragm piston pump (1)(paragraphs [0021]-[0022]), wherein system pressure (in chamber 4a: “overpressure” in paragraph [0021]) is applied to a supplementary replenishing valve (27) when a leakage valve (26) is open, and system pressure is not applied to the supplementary replenishing valve (27) when the leakage valve (26) is closed (this functional limitation is met when the apparatus operates as disclosed in paragraph [0021]), wherein the leakage valve (26) can be activated hydraulically (under overpressure as stated in paragraph [0021], via liquid in a channel that connects chamber 4a with the depicted ball of 26) (paragraphs [0016], [0020] - [0022]; Figure 1).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed the invention to add a leakage valve (26) as taught by Nagel adjacent to the replenishing valve (B25) of Yokomichi, such that system pressure is applied/not applied to the replenishing valve of Yokomichi when the leakage valve is open/closed as taught by Nagel for the purpose of allowing sealed fluid to return to the reservoir under overpressure conditions, i.e. providing pressure relief under overpressure conditions (paragraph [0021] of Nagel).
Response to Arguments
Applicant has argued on Page 5 of Applicant’s Response that: “As recited in claim 1 as amended, the leakage valve can be activated hydraulically. In contrast to Applicant's diaphragm piston pump as set forth in claim 1 as amended, where the leakage valve can be activated hydraulically, in NsgelDE'240, the leakage valve 26 is activated by the tappet 23 of the control plate (see paragraph [0020] of NsgelDE'240) and not, as the Examiner states, via liquid in a channel that connects chamber 4a with the depicted ball of 26. It is respectfully submitted that NsgelDE'240 shows a mechanical activation, not a hydraulic activation, which can be clearly seen by the presence of the tappet 23 and the much smaller diameter of this tappet than the diameter of chamber 4a. No hydraulic activation could thus be achieved”.
Examiner’s Response: Paragraph [0021] discloses that valve 26 opens because of overpressure, before the tappet is actuated by contact between the hose 10 and control plate 22. The overpressure condition causes the liquid below the ball 26 to push the ball up so that the same pushing liquid can enter the storage tank 24 via line 31. In the depicted figure there is clearly a gap between the tappet 23 and the ball 26. The liquid surrounding the tappet 23 clearly makes contact with the ball of valve 26, which opens the valve under overpressure, therefore the valve is activated hydraulically. For the sake of argument, even if the valve (26) is mechanically activated by the tappet (23), paragraph [0021] clearly states that it can also be actuated hydraulically (due to overpressure) which reads on the current claim language “wherein the leakage valve can be activated”. The word “can” does not always require a hydraulic activation. Finally, valve (26) is a ball valve, which by definition is activated by liquid pressure acting on the ball, and is thus activated hydraulically. Any attempts at introducing a permanent mechanical link between the tappet 23 and the ball 26 would destroy the functionality of the valve (26).
Conclusion
The rejections in the previous office action are being maintained because applicant’s arguments are not persuasive. The additional rejection of Claim 1 presented in this office action based on Yokomichi is an alternate/parallel rejection to the one presented in the previous office action. Accordingly, THIS ACTION IS MADE FINAL. 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DNYANESH G KASTURE whose telephone number is (571)270-3928. The examiner can normally be reached Mon-Thu, 7:30 AM to 6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Essama Omgba can be reached at 469-295-9278. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.G.K/Examiner, Art Unit 3746
/ESSAMA OMGBA/Supervisory Patent Examiner, Art Unit 3746
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