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 .
Prior art of Record
The prior art made of record in this office action shall be referred to as follows;
U.S. 2022/0356949 Harada et al. (‘Harada hereafter), App 17/868095; Filed 07/22/2022
U.S. 2003/0122318 Yanagiguchi et al (‘Yanagiguchi hereafter), App 10/296285; Filed 05/22/2001
The above references will be referred to hereafter by the names or numbers indicated above.
Claim status:
Claims 1 - 20 are currently being examined.
Claims 9 - 20 have been withdrawn.
No Claims have been canceled.
No Claims are allowed or objected to for allowable subject matter.
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 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 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 2003/0122318 Yanagiguchi et al (‘Yanagiguchi hereafter).
Regarding Claim[s] 1, ‘Yanagiguchi discloses all the claim limitations including: An adapter ring adapted for attachment to an existing vehicle steering system (“to an existing vehicle steering system” is an intended use limitation, see below) component (‘Yanagiguchi, Para 0001, “The present invention relates to a seal ring, particularly a seal ring which has stable friction torque from the beginning over a long period of time. The seal ring of the present invention can be suitably used particularly as a seal ring for a valve device of a power steering of standard-sized or large-sized vehicles. In addition, since the seal ring has abrasion resistance and stable friction against the opposite material from the beginning over a long period of time, the seal ring of the present invention can be suitably used as a seal ring for automatic transmission or shock absorber.” Is capable of being used for an existing vehicle steering system),
the existing vehicle steering system component having an outer profile (‘Yanagiguchi, Para 0034, teaches: “Every valve device of a power steering of an automobile has a common mechanism of seal ring-mounting member and sliding part regardless of type of automobiles as long as the power steering is a rack-and-pinion type.” Examiner understands “outer profile” to be the outer shape of the power steering rack and pinion system. Therefore ‘Yanagiguchi’s power steering rack and pinion system would inherently have an outer profile. ),
the adapter ring (‘Yanagiguchi, Fig 7, #1 (seal ring), and is capable of being an adapter ring) comprising:
a sidewall (‘Yanagiguchi, Fig 7 (below)) defining an annular shape of the adapter ring (‘Yanagiguchi, Figs 1 - 7, Para 0033, “In the seal ring durability test of the present invention, a seal ring having a shape as mentioned above (outer diameter: 36.4 mm, width: 1.5 mm, height: 1.88 mm) is employed, which is now commonly used in Japan. In addition to this, a seal ring having an outer diameter of 36.2 mm, a width of 1.25 mm and a height of 1.83 mm and a seal ring having an outer diameter of 38.4 mm, a width of 1.45 mm and a height of 2.00 mm may also be used. Even if the latter seal rings are used, approximately the same test results can be obtained regardless of the shape.”)
the sidewall including an inner surface that is adapted to substantially complement the outer profile of the existing vehicle steering system component and an outer surface (‘Yanagiguchi, Fig 7 (below)),
the outer surface defining an effective circumference of the adapter ring (‘Yanagiguchi, Fig 7 (below)); and
an expansion slot located in the sidewall (‘Yanagiguchi, Fig 7 (below)),
the expansion slot adapted to permit the effective circumference of the adapter ring to be increased when pressure is applied outwardly to the sidewall (‘Yanagiguchi, Fig 7 (below) shows a configuration that when pressure is applied to the inside of the ring, the circumference will expand and enlarge the gap shown below).
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. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458,459 (CCCPA 1963).
Claim(s) 1 - 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 2022/0356949 Harada et al. (‘Harada hereafter).
Regarding Claim[s] 1, ‘Harada discloses all the claim limitations including: An adapter ring adapted for attachment to an existing vehicle steering system (“to an existing vehicle steering system” is an intended use limitation, see below) component,
the existing vehicle steering system component having an outer profile (‘Harada, Para 0030, “A valve device 10 of the present embodiment shown in FIG. 1 is mounted in a vehicle having an engine and constitutes a part of an EGR system that returns a part of exhaust gas of the engine to an intake passage of the engine.” Is capable of being used for an existing vehicle steering system, and is also an intended use limitation (see below). The component would inherently have an outer profile, since a physical shape has dimensions),
the adapter ring (‘Harada, #18 (seal ring/ adapter ring) comprising:
a sidewall defining an annular shape of the adapter ring (‘Harada, Figs 5 &10, #183 (side surface/ side wall), Fig 5 shows side view and Fig 10 shows cross sectional view, plan view not shown. Plan view not shown, however the orthographic projection would show #183 an annular shape),
the sidewall including an inner surface that is adapted to substantially complement the outer profile of the existing vehicle steering system component and an outer surface (‘Harada, Fig 5, shows inner surface and is 90 degree from #183),
the outer surface defining an effective circumference of the adapter ring (‘Harada, Figs 5 &10, #183 (side surface/ side wall), Fig 5 shows side view and Fig 10 shows cross sectional view, plan view not shown. Plan view not shown, however the orthographic projection would show #183 an annular shape, and projected plan view would show the outer surface circumference); and
an expansion slot located in the sidewall (‘Harada, Figs 5 - 7, #181 (joint/ expansion slot)),
the expansion slot adapted to permit the effective circumference of the adapter ring to be increased when pressure is applied outwardly to the sidewall (‘Harada, Para 0026, “According to this, even when the seal ring expands due to the pressure of the fluid in the fluid passage, the pressure of the fluid is released through a gap between the one-end first contact portion and the other-end second contact portion before the inner diameter of the seal ring reaches the outer diameter of the outer circumferential end portion. Therefore, the pressure of the fluid acting on the seal ring to expand the seal ring is suppressed, which reduces the possibility that the seal ring falls off from the outer circumferential groove of the valve element.”).
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. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458,459 (CCCPA 1963).
Regarding Claim[s] 2 - 5, ‘Harada discloses all the claim limitations including: wherein the expansion slot comprises a horizontal slit, a first vertical slit, and a second vertical slit, each of the first and second vertical slits being connected to a respective end of the horizontal slit; wherein the horizontal slit is approximately parallel to the effective circumference of the adapter ring; wherein each of the first vertical slit and the second vertical slit is approximately perpendicular to the effective circumference of the adapter ring; wherein each of the first vertical slit and the second vertical slit is approximately perpendicular to the horizontal slit (‘Harada, Figs 2, 5 – 10, show expansion slot, horizontal slit, first vertical slit, second vertical slit, and connected to horizonal slit, and parallel to circumference and first and second vertical slits are perpendicular to ring, first and second vertical slits are perpendicular to horizontal slit).
Regarding Claim[s] 6, ‘Harada discloses all the claim limitations including: wherein the outer surface of the sidewall contains a first portion having a diameter, a second portion having a diameter, and a having a diameter therein, the groove being located between the first portion and the second portion, the diameter of the groove being smaller than each of the diameters of the first and second portions (‘Harada, Figs 2, 5 – 10, first and second portions of side wall show a diameter, #182 (side groove/ groove) is located between first and second portions and has a diameter smaller than the first and second portions).
Regarding Claim[s] 7, ‘Harada discloses all the claim limitations including: wherein the outer surface of the sidewall has a profile that is the same as the outer profile of the existing vehicle steering system component (‘Harada, is capable of having the sidewall profile as having a profile of the existing vehicle steering system).
Regarding Claim[s] 8, ‘Harada discloses all the claim limitations including: wherein the outer surface of the sidewall has a profile that is different from the outer profile of the existing vehicle steering system component (‘Harada, is capable of having the sidewall profile as having a different profile of the existing vehicle steering system).
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U.S. 2003/0122318 Figure 7
Response to Arguments
Applicant's arguments filed 01/02/2026 have been fully considered but they are not persuasive.
In response to applicant's argument Pgs 3 – 4 that ‘Harada and ‘Yanagiguchi do not teach the intended use limitations of “adapter ring adapted for attachment to an existing vehicle steering component,” and is 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. If the prior art structure is capable of performing the intended use, then it meets the claim.
Applicant further argues:
“However, in no way does Yanagiguchi disclose a ring that is capable of functioning as an adapter ring that can attach to an existing vehicle steering system component, and instead merely discloses a PTFE/graphite seal ring for cushioning
internal sliding devices (for example in "hydraulic power steering, automatic transmission, engine piston ring, shock absorber, [] and a hydraulic cylinder"). Yanagiguchi, paragraph [0099]. Again, claim 1 requires an adapter ring adapted for attachment to an existing vehicle steering component, wherein the adapter ring includes an inner surface that is adapted to substantially complement the outer profile of the existing vehicle steering system component.”
Applicant is arguing the material of PTFE/graphite seal ring cannot work for a steering system without stating a reason. Applicant’s Spec 06/20/2024 Para 0033 recites:
“In this embodiment, the adapter ring 100 may be made from a metallic, plastic,
polymeric, rubber, nylon, and/or any other suitable material or combination of materials.”
Applicant does not claim any specific material but mentions in the spec that it allows a plastic material, ‘Yanagiguchi does teach Para 0002 “Polytetrafluoroethylene (PTFE) powder (granular resin powder) has excellent properties such as non-tackiness, sliding property and heat resistance, but also has a
defect that the strength of molded articles prepared therefrom is insufficient. In order to overcome the disadvantage, it has been actively attempted to incorporate an organic filler such as polyimide resin powder or an inorganic filler such as carbon fiber, bronze powder or graphite powder, and those fillers are variously combined to prepare different PTFE compositions depending on the purpose of use.”
‘Yanagiguchi further teaches Para 0001, that the seal ring is used in a vehicle for a valve device of a power steering system. Since the power steering system is part of a steering system ‘Yanagiguchi shows that the part is made for a similar environment and would meet similar structural needs as that of the applicant invention.
Appliant’s claim limitations are not sufficiently written to show the structural limitations that is required of the Applicant’s invention.
Applicant argues Pg 4:
“Both Yanagiguchi and Harada are concerned only with internal sealing purposes, and completely fail to teach or suggest an adapter ring adapted for attachment to an existing vehicle steering component where the existing vehicle steering system component has an outer profile and the adapter ring has a sidewall that has an inner surface adapted to substantially complement the outer profile of the existing vehicle steering system component.”
‘Yanagiguchi, teaches: Fig 7 (below) shows a configuration that when pressure is applied to the inside of the ring, the circumference will expand and enlarge the gap shown below. and
‘Harada, teaches: Para 0026, “According to this, even when the seal ring expands due to the pressure of the fluid in the fluid passage, the pressure of the fluid is released through a gap between the one-end first contact portion and the other-end second contact portion before the inner diameter of the seal ring reaches the outer diameter of the outer circumferential end portion. Therefore, the pressure of the fluid acting on the seal ring to expand the seal ring is suppressed, which reduces the possibility that the seal ring falls off from the outer circumferential groove of the valve element.”.
Again without specific structural limitations in the claims, Examiner will use BRI (Broadest reasonable interpretation) of the claims.
Applicant argues Pg 4, Yanagiguchi and Harada are only concerned with internal sealing solutions.
Both ‘Yanagiguchi and ‘Harada expand outwardly.
Applicant argues Pg 5:
Moreover, Harada fails to teach or suggest the presence of an expansion slot in the sidewall that "permit[s] the effective circumference of the adapter ring to be increased when pressure is applied outwardly to the sidewall," as recited in claim 1, because Harada has a slot located only in its endwall.
Harada Fig 2 shows a system of slots through the inside towards the outside and in the center, ‘Yanagiguchi Fig 7 shows a slot all the through from the inside towards the outside.
Examiner suggest that Applicant bring in from the disclosure more specifics on structural differences between their invention and the prior art.
Conclusion
Examiner encourages Applicant to fill out and submit form PTO-SB-439 to allow internet communications in accordance with 37 CFR 1.33 (MPEP 02.03). Should the need arise to perfect applicant-proposed or examiner’s amendments, authorization for e-mail correspondence would have already been authorized and would save time.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAWRENCE AVERICK whose telephone number is (571)270-7565. The examiner can normally be reached 8:00AM - 3:00PM M- F ET.
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/LAWRENCE AVERICK/ Primary Examiner, Art Unit 3799
02/18/2026