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) because they fail to illustrate the features of the present invention with sufficient clarity, as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). The drawings appear to be a grayscale rendering of color drawings, and do not provide sufficient sharpness or clarity to distinguish separate components of the present invention. While color photographs or color drawings, on rare occasions, may be necessary as the only practical medium by which to disclose the subject matter sought to be patented in a utility patent application, color drawings must be of sufficient quality that all details in the drawings are reproducible in black and white in the printed patent. In the present case, the drawings do not allow for distinguishing specific detail therein.
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
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.
Specification
The disclosure is objected to because of the following informalities:
Claim 1 recites the limitation “at least one drive means” in line 8, which invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, interpretation; however, the specification fails to provide corresponding structure for the “at least one drive means”; and
Claim 17 recites the limitation “at least one adjustment means” in line 2, which invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, interpretation; however, the specification fails to provide corresponding structure for the “at least one adjustment means”.
Appropriate correction is required.
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” and are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Such claim limitation(s) is/are:
“at least one movement transmission means” in claim 1, line 6, the corresponding structure for which can be found in the specification paragraphs [0022] and [0023];
“at least one drive means” in claim 1, line 8, the corresponding structure for which is not described in the specification;
“at least one guide means” in claim 1, line 12, the corresponding structure for which can be found in the specification paragraphs [0013] and [0021];
“adjustment means” in claim 17, line 2, the corresponding structure for which is not described in the specification; and
“at least one valve guide means” in claim 20, line 6, the corresponding structure for which can be found in the specification paragraphs [0013] and [0021].
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.
Claim Objections
Claims 1-20 are objected to because of the following informalities:
In claim 1, line 3, the recitation “wherein it includes” should read –wherein [[it]]the guillotine valve includes--;
In claims 2-19, all recitations of “The valve” should read –The guillotine valve--;
In claim 2, line 2, the recitation “the interior” should read –[[the]]an interior--;
In claim 3, line 2, the recitation “the interior” should read –[[the]]an interior--;
In claim 12, line 2, the recitation “wherein it also comprises” should read –further comprising--;
In claim 14, line 2, the recitation “wherein it also comprises” should read –further comprising--;
In claim 17, line 2, the recitation “wherein it also comprises” should read –further comprising--;
In claim 18, line 2, the recitation “wherein it also comprises” should read –further comprising--;
In claim 20, line 2, the recitation “it includes” should read –[[it]]the procedure includes--; and
In claim 20, line 4, the recitation “the valve” should read –the guillotine valve--.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 recites the limitation “at least one drive means” in line 8, and claim 17 recites the limitation “at least one adjustment means”, and are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the claim purports to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim.
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 1-20 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.
Claim 1 recites the limitation “the fluid” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, it is assumed that the recitation “the fluid” in claim 1, lines 1-2, should read –[[the]]a fluid--.
Regarding claim 1, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 1 recites the limitation “the flow rate” in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, it is assumed that the recitation “the flow rate” in claim 1, line 2, should read –[[the]]a flow rate--.
Claim 1 recites the limitation “the inlet or outlet” in line 4. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, it is assumed that the recitation “the inlet or outlet” in claim 1, line 4, should read –[[the]]an inlet or outlet--.
Claim 1 recites the limitation “the flow” in line 5. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, it is assumed that the recitation “the flow” in claim 1, line 5, should read –[[the]]a flow--.
Claim 1 recites the limitation “the at least one fluid” in line 5; however, the claim is unclear as to if this recitation refers to the “fluid” recited in claim 1, line 2, or different fluid(s) therefrom.
Claim 7 recites the limitation “the at least one guide means corresponds to at least one idler” in line 2; however, the claim is unclear as to what relationship between the at least one guide means and the at least one idler. For the purpose of examination, it is assumed that the recitation “the at least one guide means corresponds to at least one idler” in claim 7, line 2, should read --the at least one guide means comprises at least one idler--.
Similarly, claim 8 recites the limitation “the at least one guide means corresponds to at least two idlers” in line 2, and is rejected for the same reason as claim 7, above. For the purpose of examination, it is assumed that the recitation “the at least one guide means corresponds to at least two idlers” in claim 8, line 2, should read --the at least one guide means comprises at least two idlers--.
Regarding claim 11, the phrase "preferably", in line 3, renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 17 recites the limitation “the movement transmission means” in lines 2-3; however, the claim is unclear as to if this recitation refers to one, some or all of the “at least one movement transmission means” recited in parent claim 1, line 6, or a different movement transmission means altogether. For the purpose of examination, it is assumed that the recitation “the movement transmission means” in claim 17, lines 2-3, should read –the at least one movement transmission means--.
Claim 20 recites the limitation “the duct or installation space” in line 3 and the limitation “the duct” in line 7. There is insufficient antecedent basis for this limitation/these limitations in the claim.
Claim 20 recites the limitation “the valve body” in line 7; however, the claim is unclear as to if this recitation refers to one, some, or all of the “at least one valve body” recited in claim 20, line 3, or a different valve body altogether.
Claims 2-6, 9, 10 and 12-19 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 1-3, 10, 14, 15 and 17-20, as best understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR20220145541 (“Gil”).
Regarding claim 1, Gil discloses (see figs. 1, 10 and 11) a guillotine valve to operate in open tanks (embankment 1), completely submerged in the fluid, such as pulps, tailings and mineral concentrates, which allows controlling the flow rate of fluids in atmospheric systems, wherein it includes:
- at least one cage (50; see figs. 10 and 11) attached to the inlet or outlet (2) of at least one tank (embankment 1);
- at least one gate (“door member” 20) which controls the flow of the at least one fluid;
- at least one movement transmission means (23) which allows the at least one gate to be moved between at least one open position and at least one closed position;
- at least one drive means (mainly defined by 41, 42 and 44) which allows the at least one movement transmission means to be operated;
- at least one anti-vibration head (mainly defined by 44 and 45) which joins the at least one gate with the at least one movement transmission means allowing the axial movement of the at least one gate; and
- at least one guide means (31) arranged in the same direction as the at least one movement transmission means (see assembly of fig. 10) which allows a tight fit between said at least one guide means and the at least one cage (see assembly of fig. 10).
With regards to the recitation “to operate in open tanks, completely submerged in the fluid, such as pulps, tailings and mineral concentrates, which allows controlling the flow rate of fluids in atmospheric systems”, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Since the prior art comprises the structure required by the claim to perform the intended use, it is capable of performing the intended use and meets the claim.
Additionally, with regards recitations directed to the fluid being handled (e.g., “pulps, tailings and mineral concentrates”), “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Young, 75 F.2d * > 996 < , 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)).
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Regarding claim 2, Gil discloses the at least one cage (50) is fixedly attached to the interior of the at least one tank (embankment 1; see fig. 1).
Regarding claim 3, Gil discloses the at least one cage (50) is removably attached to the interior of the at least one tank (embankment 1; see fig. 1).
Regarding claim 10, Gil discloses the at least one cage (50) comprises at least one lattice inside (see fig. 11).
Regarding claim 14, Gil discloses at least one transverse guide (32 and 33) arranged transversely between the at least one guide means (31).
Regarding claim 15, Gil discloses the at least one transverse guide (32 and 33) crosses the at least one movement transmission means (mainly defined by 41, 42 and 44).
Regarding claim 17, Gil discloses at least one adjustment means (43) arranged above the movement transmission means (mainly defined by 41, 42 and 44) which allows minor displacements to be made in the at least one guide means (31).
Regarding claim 18, Gil discloses at least one upper base (10) to which the upper ends of the at least one guide means (31) and the at least one movement transmission means (mainly defined by 41, 42 and 44) are attached (see assembly of figs. 1 and 10).
Regarding claim 19, Gil discloses the at least one upper base (10) is arranged on at least one support means (wall of embankment 1; see fig. 1) arranged side by side in the duct (2; see fig. 1) of the at least one tank (1).
Regarding claim 20, Gil discloses a procedure for assembling and disassembling a guillotine valve (see figs. 1, 10 and 11), wherein it includes the stages of:
- moving at least one valve body (“door member” 20) above the duct or installation space (duct 2 or interior of embankment 1; see fig. 1) in at least one tank (embankment 1);
- lowering or raising the valve above the at least one tank, depending on whether it is an assembly or disassembly operation (although not explicitly stated, the device of Gil must inherently be lowered into the embankment 1 when installed or raised out of embankment 1 when removed); and
- contacting or separating at least one valve guide means (32) with at least one hole (“OA” and/or “CA”; see fig. 8) arranged in at least one valve cage (mainly defined by 10, 30 and 50), as the valve body descends or ascends through the duct.
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 4, as best understood, is rejected under 35 U.S.C. 103 as being unpatentable over Gil, as applied to claims 1 and 3 above, in view of KR200355906 (“Lee”).
Regarding claim 4, Gil discloses the at least one cage (50) having fastening by means of fastening apertures (see fastening apertures in perspective of fig. 11) to the internal surface of the at least one tank (embankment 1).
However, Gil does not disclose the at least one cage being bolted against the internal surface.
Lee teaches (see fig. 5) a valve having at least one cage (at least partially defined by 170 and 162) bolted (via bolts 164) against an internal surface of a tank (water reservoir, 1).
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 Gil by configuring the at least one cage to be bolted to the internal surface of the at least one tank, as taught by Lee, to have a removable means of securing the at least one cage.
Claims 5, 6 and 11, as best understood, are rejected under 35 U.S.C. 103 as being unpatentable over Gil, as applied to claim 1 above, in view of US2011/0220828 (“Kennedy”).
Regarding claims 5 and 6, Gil discloses the invention as claimed except for the at least one cage being made of steel, or the at least one cage being coated with a polymer.
Kennedy teaches a guillotine valve, wherein structural components are made from stainless steel, or are coated with a polymer (see specification paragraph [0028]).
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 Gil by forming the structural components of the guillotine valve, including the at least one cage, from stainless steel, or coating with a polymer, as taught by Kennedy, to have a guillotine valve which is resistant to corrosion.
Regarding claim 11, Gil discloses the invention as claim except for the at least one movement transmission means having a polygonal cross section shape, preferably a square shape.
Kennedy teaches a non-rising movement transmission means (at least partially defined by 138; see fig. 3, and specification paragraph [0031]) having a polygonal cross section shape (cross-sectional shape of end of member 138 distal from gate 116 is polygonal), preferably a square shape.
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 Gil by configuring the at least one movement transmission means has a polygonal cross section shape, as taught by Kennedy, to have a movement transmission means, which cannot be accidentally actuated.
Regarding claim 16, Gil discloses the invention as claimed except for the at least one transverse guide being made of steel.
Kennedy teaches a guillotine valve, wherein structural components are made from stainless steel (see specification paragraph [0028]).
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 Gil by forming the structural components of the guillotine valve, including the at least one transverse guide, from stainless steel, as taught by Kennedy, to have a guillotine valve which is resistant to corrosion.
Claim 13, as best understood, is rejected under 35 U.S.C. 103 as being unpatentable over Gil, as applied to claim 1 above, in view of DE20100434 (“Weco”).
Regarding claim 13, Gil discloses the invention as claimed except for the at least one gate, the at least one guide means, the at least one movement transmission means and/or the at least one anti-vibration head being covered partly or entirely of rubber.
Weco teaches a gate (“slide plate” 3) covered at least partly of rubber (rubber coating 30) along a sealing surface, to improve sealing between seating parts (see underlined sections in English translation pages 2 and 4).
It would have been obvious to one having ordinary skill in the art at the time of filing of the invention to modify the at least one gate of Gil by coating the at least one gate with rubber, to improve sealing between seating parts, as taught by Weco.
Allowable Subject Matter
Claims 7, 8 and 12 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 claim 7, the closest prior art does not disclose or render obvious, as best understood, the guillotine valve, wherein the at least one guide means corresponds to at least one idler, wherein the at least one idler comprises a conical shape having a smaller diameter at its lower end, increasing progressively to its upper end, in combination with the limitations of the base claim.
Regarding claim 8, the closest prior art does not disclose or render obvious, as best understood, the guillotine valve, wherein the at least one guide means corresponds to at least two idlers, wherein the at least two idlers comprises a conical shape having a smaller diameter at its lower end, increasing progressively to its upper end, in combination with the limitations of the base claim.
Regarding claim 12, the closest prior art does not disclose or render obvious, as best understood, the guillotine valve, wherein it also comprises at least one housing attached to at least one guide means and that fits into the at least one cage to receive the at least one gate, in combination with the limitations of the base claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. CN11321764 discloses a slide valve disposed within a tank or cylindrical housing. FR2805329, EP3712475, CN203383197 and DE202010016331 discloses a slide valve having a support frame.
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