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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/31/2026 has been entered. Therefore, claims 1-15, 20-22, 24, and 25 are pending for consideration following applicant’s amendment filed 3/31/2026.
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.
Claims 1-15, 20-22, and 24 are 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 1 recites “wherein the connector geometry is not used to connect the two flanges to each other”. However, applicant’s specification as filed does not describe the connector geometry such that it is not used to connect the two flanges together. Instead, applicant’s specification as filed describes (page 5, fourth paragraph) the connector geometry such that it is used (in conjunction with tool 100), to inhibit rotation of the piston 4 to thereby allow for assembly of screws 49 (which secures the two flanges 46 and 47 together).
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 1-15, 20-22, and 24 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 “wherein the connector geometry is not used to connect the two flanges to each other”. However, it is unclear what is required by these limitations, particularly because applicant’s connector geometry is used to inhibit rotation of the piston 4 to thereby allow for assembly of screws 49 (which secures the two flanges 46 and 47 together). Therefore, it is unclear if this limitation refers to a particular time during which the connector is not used to connect the two flanges together.
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.
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) 1-3, 5-10, 13, 14, 20-22, and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kusumoto et al. (US Patent Application 2002/0134441) in view of Sine (US Patent 5,586,483).
Regarding Claim 1, Kusumoto discloses a valve (Figure 3 especially) capable of use in a refrigeration application (the phrase “for a refrigeration application” is merely a recitation of an intended use of the claimed valve and the valve of Kusumoto is capable of being used in a refrigeration application), comprising a bonnet 11 (as shown in Figure 3) connected to a housing (the housing including the members defining chamber 1, inlet 2, and outlet 3) with two fluid openings (2 and 3), a spindle 8 (it is noted that the limitation of a spindle only requires a rod-like element) and a piston 5 for opening and closing a fluid passage (para. 0066) between the two fluid openings (2 and 3), wherein the spindle 8 engages the piston 5 for moving it between a closed position and an open position of the valve (para. 0065), wherein a bottom closing portion (5a and 5b) of the piston 5 comprises an outer flange 5b and an inner flange 5a between which a sealing element 6 (6 is between 5b and 5a along the direction of the axis of spindle 8) is provided, wherein the sealing element 6 seals the fluid passage between the two fluid openings when the valve is closed (as shown in Figure 3), wherein the two flanges (5b and 5a) are connected to each other by means of at least one screw (screws as shown in Figure 3; para. 0048) provided on a bottom side of the outer flange 5b (as shown in Figure 3, an unnumbered screw is provided on a bottom side of the outer flange 5b), wherein a connector geometry (the head of a second of the unnumbered screws connecting 5a with 5b provides a connector geometry) configured to receive a tool (the head of the screw is necessarily configured to receive a tool for assembling and disassembling the screw) is provided on the bottom side of the outer flange 5b (the head of the second unnumbered screw is provided on the bottom side of the outer flange 5b as shown in Figure 3), wherein the connector geometry is a recess and/or a protrusion surrounded by a surface of the bottom side of the outer flange (as shown in Figure 3, the head of the second unnumbered screw forms a protrusion surrounded by a surface of the bottom side of the outer flange 5b), and wherein the connector geometry is not used to connect the two flanges to each other (as best understood as described above; the connector geometry, i.e. the head of the screw, does not physically connect the two flanges at least in an uninstalled state – that is, there is some time in which the head of the screw is not used to connect the two flanges to each other and this is seen to be achieved in the same manner as achieved by applicant’s device).
Kusumoto does not disclose the shape of the screw heads provided within the piston and therefore does not disclose the connector geometry (i.e. the head of the unnumbered screw described above) is a non-circular geometry.
Sine teaches an arrangement of connecting piston components and further teaches a connector geometry (geometry of nut 30) is a non-circular geometry (nut 30 defines a hexagonal geometry). Furthermore, the nut 30 is configured to receive a tool (e.g. a wrench) and is provided on the bottom side of an outer flange 22 and is surrounded by a surface of the bottom side of the outer flange 22 (as shown in Figures 2-4).
It would have been obvious to one of ordinary skill in the art before the application was effectively filed to modify the device of Kusumoto such that the unnumbered fasteners are replaced by threaded shafts and nuts as taught by Sine for the purpose of utilizing an alternative, functionally equivalent fastening arrangement known in the art. It is noted that Sine teaches a plurality of screws 28, wherein one of these screws are relied upon as readable on the claimed “at least one screw” while a second screw 28 is coupled to a nut 30 relied upon as readable on the recited “non-circular connector geometry”.
Regarding Claim 2, Kusumoto in view of Sine is seen as further disclosing the connector geometry (nut 30 as taught by Sine in place of the second unnumbered screw head of Kusumoto as described above) is fluidly connected to a pressure balancing passage (the nut is seen to be fluidly connected to the passage through the seat 4a at least when the valve is in the open position; the passage through the seat 4a which is readable as a pressure balancing passage because the passage balances the pressure between the inlet and outlet sides of the housing).
Regarding Claim 3, Kusumoto in view of Sine further discloses the connector geometry (nut 30 as taught by Sine as described above) comprises a protrusion (the nut forms a protrusion as shown by Sine).
Regarding Claim 5, Kusumoto in view of Sine does not disclose the connector geometry extends along a central axis of the piston.
However, the location of the fasteners is seen to have been an obvious matter of engineering design choice and adding an additional fastener at the central axis of the piston of Kusumoto requires a mere duplication of parts and it has been generally held that a mere duplication of parts is within the level of ordinary skill in the art (MPEP 2144.04).
Therefore, it would have been obvious to one of ordinary skill in the art before the application was effectively filed to modify the device of Kusumoto in view of Sine to include an additional screw and nut along the central axis of the piston for the purpose of providing additional securing of the flanges. It is noted that the additional nut provides the connector geometry as described with respect to claim 1 above.
Regarding Claim 6, Kusumoto further discloses the valve is a service valve (the term “service valve” is not given a special definition in applicant’s specification as filed and therefore this broad term is met by the structure of Kusumoto at least because the valve is operable to open and close a flow passage, thereby providing a service valve).
Regarding Claim 7, Kusumoto in view of Sine further discloses the connector geometry (defined by nut 30 as taught by Sine as described above) is provided between two, three or more screws for connecting the two flanges to each other (in the manner taught by Sine; one of the nuts 30 is between two adjacent screws 28 along an arc as shown in Figure 1).
Regarding Claim 8, Kusumoto in view of Sine is seen as further disclosing the connector geometry (defined by nut 30 as taught by Sine as described above) is oriented such that the tool does not impair access to the screws when connected to the connector geometry (as described above, the tool is not positively recited by the claim and therefore it is at least possible for a tool to connect to the nut 30 while not impairing access to the other screws).
Regarding Claim 9, Kusumoto in view of Sine further discloses the at least one screw (screws provided between 5a and 5b as shown in Figure 3 of Kusumoto in the manner taught by Sine at 28) and the connector geometry (defined by nut 30 as taught by Sine as described above) are provided on the same side of the piston (the lower side as described above).
Regarding Claim 10, Kusumoto in view of Sine further discloses the connector geometry (nut 30 as taught by Sine as described above) comprises a protrusion (the nut forms a protrusion as shown by Sine).
Regarding Claims 13 and 14, Kusumoto in view of Sine does not disclose the connector geometry extends along a central axis of the piston.
However, the location of the fasteners is seen to have been an obvious matter of engineering design choice and adding an additional fastener at the central axis of the piston of Kusumoto requires a mere duplication of parts and it has been generally held that a mere duplication of parts is within the level of ordinary skill in the art (MPEP 2144.04).
Therefore, it would have been obvious to one of ordinary skill in the art before the application was effectively filed to modify the device of Kusumoto in view of Sine to include an additional screw and nut along the central axis of the piston for the purpose of providing additional securing of the flanges. It is noted that the additional nut provides the connector geometry as described with respect to claim 1 above.
Regarding Claim 20, Kusumoto further discloses the valve is a shut-off and/or a regulating valve (the valve is a “shut-off” at least because it is capable of shutting off flow).
Regarding Claims 21 and 22, Kusumoto in view of Sine further discloses the connector geometry (nut 30 as taught by Sine as described above) has a hexagonal shape (as best shown in Figure 1 of Sine).
Regarding Claim 24, Kusumoto in view of Sine further discloses the connector geometry (defined by nut 30 as taught by Sine as described above) is provided between two, three or more screws for connecting the two flanges to each other (in the manner taught by Sine; one of the nuts 30 is between two adjacent screws 28 along an arc as shown in Figure 1).
Allowable Subject Matter
Claims 4, 11, 12, and 15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 1st paragraph and 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.
Claim 25 is allowed.
Response to Arguments
Applicant's arguments filed 3/31/2026 have been fully considered but they are not persuasive. Specifically, applicant argues that Kusumoto and Sine fail to teach the connector geometry is not used to connect the two flanges to each other. These arguments are not persuasive at least because it is unclear what is required by the new limitations as described above. That is, applicant’s connector geometry is described as being used to inhibit rotation of the piston 4 to thereby allow for assembly of screws 49 (which secures the two flanges 46 and 47 together). Therefore, as best understood this limitation requires a time during which the connector is not used to connect the two flanges together. In view of this interpretation, it is seen that the combination of Kusumoto in view of Sine teaches all of the limitations of claim 1 because there is at least some time in which the connector geometry does not physically connect the two flanges and this occurs at least in an uninstalled state – that is, there is some time in which the connector geometry is not used to connect the two flanges to each other.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN MURPHY whose telephone number is (571)270-5243. The examiner can normally be reached Monday - Friday 8am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Craig Schneider can be reached on (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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/KEVIN F MURPHY/Primary Examiner, Art Unit 3753
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