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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/4/2026 has been entered.
Response to Amendment
This action is responsive to the amendment and RCE dated 6/4/2026. Claims 1-7 and 10-24 remain pending. Claims 22-24 are newly presented. This action is Non-Final.
Election/Restrictions
Newly submitted claim 24 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-7 and 10-23, drawn to a valve assembly with housing, ball, spring, drive pin, and the drive pin having a hard coating of silicon nitride, metal carbide, or metal nitride, classified in F16K31/0665.
II. Claim 24, drawn to a valve assembly with housing, ball, spring, drive pin, and the drive pin having a hard surface treatment of a cold working process, classified in B23P9/00.
The inventions are independent or distinct, each from the other because:
Inventions I and II are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed can have a materially different design as Invention I has additional, separate material coated over the drive pin that is specifically a silicon nitride, metal carbide, or metal nitride, while Invention II does not as the material of the actual pin is cold worked and does not have a coating of any other specific material. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The inventions have acquired a separate status in the art in view of their different classification.
The inventions have acquired a separate status in the art due to their recognized divergent subject matter.
The inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries), such as different text searches for the specific materials as only claimed in claims 1 and 23 (silicon nitride, metal carbide, metal nitride) and the specific process of hardening (cold working) as only claimed in claim 24.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
In the originally filed application, applicant constructively elected the hard surface treatment being a hard coating applied to the surface per at least claim 7. In the amendment dated 1/21/2026, claim 1 was amended to recite the hard surface treatment in a Markush type claim as being a hard coating (which was/is recited in claim 7), heat treatment, and cold working. However, Claim 1 (and newly presented claim 23), now recite the hard surface treatment as being a hard coating. This is in line with what was constructively elected in the originally filed application. As described above, newly added claim 24 directed to cold rolling is a separate invention and the applicant has already constructively elected a hard coating treatment.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 24 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Objections
Claim 7 is objected to because of the following informalities: claim 7 recites the hard surface treatment comprises a hard coating applied to the surface of the one or more components. However, claim 1 has been amended to recite that the hard surface treatment is a hard coating. Thus, the limitations from claim 7 appear to be duplicative to that of amended claim 1.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a), first paragraph
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 10 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 10 recites that the hard coating of the ball valve element is formed from a material that is different than the hard coating of the first end of the drive pin. Support for this cannot be found in the originally filed disclosure. Pages 3-4 of the originally filed specification (particularly at the bottom of page 3 and the top of page 4) describe the ball element including a first hard surface treatment and the valve seat including a second hard surface treatment. Lines 26-33 describe the components as having different surface treatments. However, lines 20-22 describe the hard surface treatment as being any process which increases the hardness. Page 4, lines 20-24 describe the hard surface treatment as being a hard coating (material) or alternatively a physical process such as heat treatment or cold working. The originally filed disclosure is devoid of the different surface treatments being specifically due to a material that is different. Further, there is no disclosure of specifically the structure of the ball valve element being of a different material than the structure of the first end of the drive pin. The only example provided is the ball valve element having a different hard surface treatment than the valve seat (page 3, lines 34-35).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code 103 not included in this action can be found in a prior Office action.
Claim(s) 1-4, 6-7, 10-13, and 15-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kabat et al. (U.S. 6,679,231) in view of Davies (U.S. 2009/0026292).
Kabat discloses a valve assembly comprising: a valve housing (52) comprising a fluid inlet (82), a fluid outlet (80), a valve opening (84), and a valve seat (74) surrounding the valve opening, the valve opening being disposed between the fluid inlet and the fluid outlet (fig. 2), a ball valve element (76) disposed within the valve housing, a spring (86) arranged to urge the ball valve element onto the valve seat to close the valve opening, and a drive pin (108) having a first end (lower end) and a second end (upper end), the drive pin being aligned with the valve opening, the valve assembly being movable between a closed position, in which the ball valve element is held in the valve seat by the spring, closing the valve opening (fig. 2), and an open position, in which the first end of the drive pin extends through the valve opening to push the ball valve element away from the valve seat, opening the valve opening (col. 4, ll. 52-62), wherein the first end of the drive pin includes a hard surface treatment , the hard surface treatment comprising a hard coating, (drive pin has hard coating 146, see col. 5, ll. 61-65, and also see col. 5, ll. 46-47 describing the hardness as well as col. 6, ll. 16-17 and 24-25 describing the hard, wear resistant coating and high hardness).
While Kabat discloses having multiple components have the hard surface treatment (such as the stop 78, drive pin 108, spring seat 79, base 81, see col. 5, ll. 35-65), Kabat does not appear to disclose the ball valve element including a hard surface treatment of a hard coating wherein the hard coating comprises at least one of silicon nitride, a metal carbide, and a metal nitride or the hard coating of the first end of the drive pin comprises at least one of silicon nitride, a metal carbide, and a metal nitride.
Davies teaches that it was known to apply a coating to any component of a similar fuel injector valve (para. 35) with the coating being formed of a hard, wear resistant material including metal carbide and silicon nitride (para. 39, metal carbide being tungsten carbide, see also para. 22) and metal nitride (para. 32) as well as amorphous diamond-like carbon (para. 39).
As Kabat discloses it was known to have certain components of the fuel injector valve coated to decrease wear (col. 5, ll. 34-37) and Davies teaches it was known to apply a coating to any of the components in a fuel injector valve that are subject to repeated impact or sliding engagement (para. 35, like components such as the ball and pin of a valve which have the potential to repeatedly impact each other upon opening and closing motion), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Kabat by having any/each of the spring, ball valve element, valve seat, first end of the drive pin, spring seat, and pole piece include a hard surface treatment, and especially the ball,, as Kabat already discloses having a number of these components having a hard coating (see above) and Davies teaches it was known to have any number of these components with a hard coating. The motivation for doing so would be to increase wear rates for all the components (see para. 34-35 of Davies) and especially as it has been held that the duplication of essential working parts (the duplication being in this instance the hard coating) generally involves only routine skill in the art. See MPEP2144.04.
Further, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the material of the hard coating of Kabat for the ball and drive pin such that it is a material such as, for example, metal nitride, silicon nitride, or metal carbide, as taught by Davies in order to provide an alternative material known to have good wear resistance and high hardness (see para. 32 of Davies) for similar fuel injector devices, if so desired by a user for a particular application of the fuel injector, such as for a petroleum based fuel, which provides a lubricating benefit as part of the fuel, and especially as it has been held that selection of a known material on the basis of its suitability for an intended use involves only routine skill in the art. See MPEP2144.07.
Regarding claim 2, Kabat as modified further discloses a spring seat (79), the ball valve element being disposed between the valve seat and the spring seat such that, when the valve is in the open position, the ball valve element is in contact with the spring seat (fig. 2 and col. 4, ll. 52-62).
Regarding claim 3, Kabat as modified further discloses wherein the spring seat includes a hard surface treatment (142, col. 5, ll. 55-56).
Regarding claim 4, Kabat as modified further discloses a pole piece (92), the drive pin extending through a bore in the pole piece (fig. 2).
Regarding claim 6, Kabat as modified further discloses wherein each of the spring, ball valve element, valve seat, first end of the drive pin, spring seat, and pole piece include a hard surface treatment (as taught above by Davies in the rejection of claim 1).
Regarding claim 7, Kabat as modified further discloses wherein the hard surface treatment comprises a hard coating applied to the surface of the one or more components (col. 5, ll. 61-65).
Regarding claim 10, Kabat as modified discloses the claimed invention but does not appear to disclose the hard coating of the ball valve element formed from a material that is different than the hard coating of the first end of the pin.
However, as taught above by Davies, paragraphs 32 and 39 of Davies teach the use of many different materials for the coating, including metal carbide, silicon nitride, and metal nitride, thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have any combination of materials for the coating of the various components, including one of silicon nitride, metal carbide, and metal nitride for the ball valve element and different one of silicon nitride, metal carbide, and metal nitride for the first end of the drive pin, as a design choice / engineering expedient within the level of ordinary skill in the art and as applicant has not disclosed a criticality in the specification for such a combination. The motivation for doing so would be to have a specific material for each of the ball valve element and first end of the drive pin if so desired by a user for a particular application.
Regarding claim 11, Kabat as modified further discloses an armature (106, 94) connected to the second end of the drive pin, and a coil (90) surrounding the armature such that energisation of the coil causes the drive pin to move, actuating the valve between the closed position to the open position (col. 4, ll. 52-62).
Regarding claim 12, Kabat as modified further discloses a first guide bushing (114) fixedly secured to the inner surface of the valve housing, and being slidably engaged with at least a portion of the armature to guide the motion of the armature (both fixedly secured and slidably engaged in the same manner as the applicant’s device, see col. 4, ll. 21-25).
Regarding claim 13, Kabat as modified further discloses wherein the armature is stepped and has a rear end portion of reduced diameter (118) which is surrounded and guided by the first guide bushing (fig. 2) and a front end portion of enlarged diameter (120) which is located between the first guide bushing and the pole piece (fig. 2).
Regarding claim 15, Kabat as modified further discloses wherein the valve assembly is configured to control the flow of a relatively liquid free gas therethrough (Kabat is interpreted to meet this intended use limitation which has not been given patentable weight, but see also col. 1, ll. 6-10).
Regarding claim 16, Kabat as modified further discloses wherein the valve assembly is configured to control the flow of hydrogen gas therethrough (Kabat is interpreted to meet this intended use limitation which has not been given patentable weight, but see also col. 1, ll. 6-10).
Regarding claim 17, Kabat as modified further discloses wherein the valve assembly is configured to control the flow of ammonia gas therethrough (Kabat is interpreted to meet this intended use limitation).
Regarding claim 18, Kabat as modified discloses a fluid injection system for injecting a fluid, the system comprising: a source of a fluid (26), and a valve assembly according to claim 1 (see the rejection of claim 1 above), the source of a fluid being connected to the fluid inlet of the valve assembly (fig. 1 and col. 2, ll. 37-42).
Regarding claim 19, Kabat as modified further discloses wherein the source of a fluid comprises a source of a relatively liquid free gas (Kabat is interpreted to meet this limitation as the material or article worked upon, in this case the contents of the fluid source, has not been given patentable weight, MPEP2115, but see also col. 1, ll. 6-10).
Regarding claim 20, Kabat as modified further discloses wherein the source of a fluid comprises a hydrogen source (Kabat is interpreted to meet this limitation as the material or article worked upon, in this case the contents of the fluid source, has not been given patentable weight, MPEP2115, but see also col. 1, ll. 6-10).
Regarding claim 21, Kabat as modified further discloses wherein the source of a fluid comprises an ammonia source (Kabat is interpreted to meet this limitation as the material or article worked upon, in this case the contents of the fluid source, has not been given patentable weight, MPEP2115, but see also col. 1, ll. 6-10).
Regarding claim 22, Kabat as modified further discloses wherein the hard coating is applied by at least one of sputtering, physical vapour deposition, and dip coating (Kabat as modified is interpreted to meet this limitation as the patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product in the prior art, the claim is unpatentable even though the prior product was made by a different process (see MPEP 2113))(but see also paragraph 24 of Davies describing physical vapor deposition).
Regarding claim 23, Kabat discloses a valve assembly comprising: a valve housing (52) comprising a fluid inlet (82), a fluid outlet (80), a valve opening (84), and a valve seat (74) surrounding the valve opening, the valve opening being disposed between the fluid inlet and the fluid outlet (fig. 2), a ball valve element (76) disposed within the valve housing, a spring (86) arranged to urge the ball valve element onto the valve seat to close the valve opening, and a drive pin (108) having a first end (lower end) and a second end (upper end), the drive pin being aligned with the valve opening, the valve assembly being movable between a closed position, in which the ball valve element is held in the valve seat by the spring, closing the valve opening (fig. 2), and an open position, in which the first end of the drive pin extends through the valve opening to push the ball valve element away from the valve seat (col. 4, ll. 52-62), opening the valve opening, wherein the first end of the drive pin includes a hard surface treatment, the hard surface treatment comprising a hard coating (drive pin has hard coating 146, see col. 5, ll. 61-65, and also see col. 5, ll. 46-47 describing the hardness as well as col. 6, ll. 16-17 and 24-25 describing the hard, wear resistant coating and high hardness).
Kabat does not appear to disclose wherein the hard coating comprises at least one of silicon nitride, a metal carbide, and a metal nitride.
Davies teaches that it was known to apply a coating to any components including similar valve components (para. 35) with the coating being formed of a hard, wear resistant material including metal carbide and silicon nitride (para. 39, metal carbide being tungsten carbide, see also para. 22) and metal nitride (para. 32) as well as amorphous diamond-like carbon (para. 39).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the material of the hard coating of Kabat such that it is a material such as, for example, metal nitride, silicon nitride, or metal carbide, as taught by Davies in order to provide an alternative material known to have good wear resistance and high hardness (see para. 32 of Davies) for similar fuel injector devices and especially as it has been held that selection of a known material on the basis of its suitability for an intended use involves only routine skill in the art. See MPEP2144.07.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kabat in view of Davies as applied to claim 5 above, and further in view of Hornby (U.S. 7,377,040).
Kabat as modified discloses the claimed invention but does not appear to disclose the pole piece including a hard surface treatment.
Hornby teaches it was known in the art to include a hard surface treatment to a pole piece (col. 6, ll. 53-64).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Kabat by having the pole piece have a hard surface treatment as taught by Hornby in order to reduce wear and reduce variations in the working air gap (see col. 6, ll. 53-64 of Hornby, as Kabat desires to have uniform air gap for uniform thrust, see col. 5, ll. 8-11).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kabat in view of Davies as applied to claim 12 above, and further in view of Herbillon (WO 2018050731).
Kabat as modified discloses the claimed invention but does not appear to disclose the first guide bushing being comprised of polytetrafluoroethylene.
Herbillon teaches it was known in the art to have a bushing made out of various materials, including polytetrafluoroethylene (para. 37).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Kabat by having the bushing made of polytetrafluoroethylene as taught by Herbillon in order to provide a relatively inexpensive material with high temperature resistance and low friction and especially as it has been held that selection of a known material on the basis of its suitability for an intended use involves only routine skill in the art. See MPEP2144.07.
Response to Arguments
Applicant's arguments filed 6/4/2026 have been fully considered but they are not persuasive.
On pages 8-9 of the response, the applicant argues that applying the teaching of Davies to the assembly of Kabat would result in the hard coating being applied to the longitudinal surface of the drive pin in the region where the pin slides within the bore and not where static, point contact occurs. The examiner respectfully disagrees. Kabat discloses in column 5, lines 35-38 that various components of the fuel injector valve assembly can be coated to decrease wear. Davies teaches that it was known in the art to apply such a coating to any components of the fuel injector valve assembly, including components that can have repeated contact (paragraph 35). As the surface of the ball and drive pin engagement has the potential for repeated contact as they are separate components that contact each other and move in order to open and close, it flows naturally from the teaching of Davies that there is the benefit of decreasing wear to the ball by having a similar hard coating applied to the ball.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL R REID whose telephone number is (313)446-4859. The examiner can normally be reached on Monday-Friday 9am-5pm est.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisors can be reached by phone. Craig Schneider can be reached at 571-272-3607, or Ken Rinehart can be reached at 571-272-4881. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/MICHAEL R REID/ Primary Examiner, Art Unit 3753
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