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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/17/2026 has been entered.
Response to Arguments
Applicant's arguments filed 09/17/2026 have been fully considered.
Applicant argues that prior arts, Ito et al. (USPN 9347336 B2), Haruyama et al. (US PGPub 20120308772 A1) and Chen (CN 101831606 B), do not read on amendment to independent claims 1 and 9 “the physical vapor deposition coating layer comprises CrN, stellite welding is performed on the inner peripheral surface of the bush without the physical vapor deposition coating layer or the outer peripheral surface of the valve rod without the physical vapor deposition coating layer.”
Applicant argues that Haruyama does not read on the amendment to independent claims 1 and 9, as it relates to the manner in which a coating is applied. Here, Applicant argues that Haruyama uses heat treatment rather than the physical vapor deposition that the Applicant claims. This argument is not persuasive. The purpose of Applicant’s invention is use the physical vapor deposition coating to decrease abrasion which “decrease[s] in thermal efficiency as the steam turbine plant due to steam leakage.” (Applicant’s Specification Para. 10). Haruyama’s invention utilizes heat treatment to deposit as a coating to decrease the formation of nitride (Para. 4). It has been held that a person of ordinary skill in the art would select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP §2144.07. Here, both the Applicant and Haruyama seek to prevent degradation of the surface impacted by fluid flow. As a result, deposition of a coating utilizing heat treatment process or deposition of a coating utilizing physical vapor deposition are a matter of design choice.
Applicant’s arguments to Chen are void because they do not address the purpose for the use of Chen.
Please see the rejection below for further details.
Claim Rejections - 35 USC § 112
The amendment to claim 2 overcomes the 112 rejection.
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 1–2, 5–6 and 9 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 1 and 9: the limitation “stellite welding is performed on the inner peripheral surface of the bush without the physical vapor deposition coating layer or the outer peripheral surface of the valve rod without the physical vapor deposition coating layer, and a film thickness of the physical vapor deposition coating layer is 2 pm to 30 pm” is a method for use of an apparatus within an apparatus claim. This language is indefinite because it is unclear to a person having ordinary skill in the art at the time of the invention, as to when infringement occurs. Infringement could occur when “one creates a system that allows the user” to weld the bush or “when the user actually uses the” stelite welding. MPEP §2173.05(p).
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.
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) 1–2 and 5–6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al. (USPN 9347336 B2) in view of Haruyama et al. (US PGPub 20120308772 A1) in further in view of Konno (US PGPub 20110135946 A1).
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Figure 1-Ito Annotated Fig. 1
Regarding Claim 1, Ito discloses a steam valve comprising: a valve casing (31) including a steam inlet portion (33), a steam outlet portion (34), and a steam chamber (61), and having an opening portion (Ito Annotated Fig. 1) communicating with the steam chamber (Ito Annotated Fig. 1); a valve seat (35) provided in a vicinity of the steam outlet portion (34) in the steam chamber (61) in the valve casing (31); a valve cover (36) installed on the valve casing (31) to close the opening portion (Ito Annotated Fig. 1), and having a through hole (Ito Annotated Fig. 1); and a valve element (32) provided at one end of the valve rod (37), and provided to be capable of abutting on the valve seat (35) but does not disclose a bush nor a PVD coating layer is formed on an outer peripheral surface of the valve rod.
Haruyama teaches a bush (202) in a cylindrical shape (Fig. 2) and a sleeve (203) in a cylindrical shape in order to provide a guide for the valve stem which also allows for smoother linear translation when controlling the flow rate (Paras. 2 and 27).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the valve housing of Ito with a bushing and sleeve as taught by Haruyama in order to guide the valve stem as it moves linearly in the valve body.
Per the Ito–Haruyama combination Haruyama’s bushing (202) and sleeve (203) is surrounds Ito’s valve stem (37).
The Ito–Haruyama combination teaches a bush (Haruyama 202) in a cylindrical shape (Haruyama Fig. 2) and a sleeve (Haruyama 203) in a cylindrical shape fitted in the through hole (Ito Annotated Fig. 1); a valve rod (Ito 37/ Haruyama 201) penetrating the bush (Haruyama 202 and also seen in Fig. 2) to be slidable therein.
Konno teaches a physical vapor deposition coating layer (Para. 7) in order to prevent damage due to corrosion.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the valve element of Ito with a Physical Deposition Vapor (PVD) as taught by Konno in order to prevent damage due to corrosion (Para. 8).
The Ito–Haruyama–Konno combination teaches a physical vapor deposition coating layer (Konno) is formed on an outer peripheral surface of the valve rod (Ito 37) sliding in the bush (Haruyama 202), or an inner peripheral surface of the bush (Haruyama 202), the physical vapor deposition coating layer comprises CrN, stellite welding (Konno Para. 7) is performed on the inner peripheral surface of the bush (Haruyama 202) without the physical vapor deposition coating layer or the outer peripheral surface of the valve rod (Ito 37) without the physical vapor deposition coating layer, and a film thickness of the physical vapor deposition coating layer is 2 pm to 30 pm.
Please note that physical vapor deposition coating layer location and physical vapor deposition coating layer thickness are design choices. It has been held that one of ordinary skill in the art before the effective filing date of the claimed invention to locate the parts in such a manner where “stellite welding is performed on the inner peripheral surface of the bush without the physical vapor deposition coating layer or the outer peripheral surface of the valve rod without the physical vapor deposition coating layer,” since it has been held that rearranging parts of an invention involves only routine skill in the art. MPEP §2144.04(VI)(C). Here, Applicant place the materials in location that decreases degradation in places that are exposed to fluid flow (Para. 10, where galling is a form of degradation). The purpose of Konno’s invention is to locate the material in locations that decreases degradation. Because both Applicant and Konno are utilizing the same materials to decreases degradation the limitation where “stellite welding is performed on the inner peripheral surface of the bush without the physical vapor deposition coating layer or the outer peripheral surface of the valve rod without the physical vapor deposition coating layer” is a design choice.
It has been held that a person of ordinary skill in the art would select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP §2144.07. Here, both the Applicant and Konno seek to prevent degradation of the surface impacted by fluid flow. As a result, deposition of a coating utilizing heat treatment process or deposition of a coating utilizing physical vapor deposition are a matter of design choice.
Regarding Claim 2, the Ito–Haruyama–Konno combination teaches a sleeve (Haruyama 203) in a cylindrical shape provided on the steam chamber side (Ito Annotated Fig. 1) of the valve cover (Ito 36), the sleeve (Haruyama 203) having a center axis coaxial with a center axis of the bush (Haruyama 202, as seen in Fig. 2), wherein: the valve element comprises: a column-shaped portion which is connected to one end of the valve rod (Ito 37/ Haruyama 201), and slides to an inner peripheral surface of the sleeve (Haruyama 203); and a hemispherical portion (Ito Fig. 1) provided to be capable of abutting on the valve seat (Ito 35); and a PVD coating layer is formed on the inner peripheral surface of the sleeve (Haruyama 203 and Konno Para. 7).
Regarding Claims 5 and 6, the Ito–Haruyama–Konno combination teaches a steam generator (Ito 20); a steam turbine (Ito 12); a steam pipe (Ito Fig. 2) which guides steam generated in the steam generator (Ito 20) to the steam turbine (Ito 12); and the steam valve (Ito 6) according to claim 1 interposed in the steam pipe (Ito Fig. 2).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al. (USPN 9347336 B2) in view of Haruyama et al. (US PGPub 20120308772 A1) in further in view of Konno (US PGPub 20110135946 A1), in further view of Chen (CN 101831606 B).
Regarding Claim(s) 9, the structural limitation of the apparatus described in the claim is recited in claim(s) 1, with the exception of “a hardness of the physical vapor deposition coating layer is 2000 HV or more.”
Chen teaches a hardness of the physical vapor deposition coating layer is 2000 HV or more (Para. 52).
Conclusion
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 Angelisa L. Hicks whose telephone number is 571-272-9552 and email is Angelisa.Hicks@USPTO.gov. The examiner can normally be reached Monday-Friday (9:30AM-5:00PM EST).
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/Angelisa L. Hicks/
Primary Examiner
Art Unit 3753
