DETAILED ACTION
Claims 1, 4-11, 14, 16-20, 22-24, 26, and 29 were filed with the Preliminary Amendment dated 04/28/2025. Claims 2, 3, 12, 13, 15, 21, 25, 27, and 28 were cancelled.
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/13/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 8 and 6A.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the valve head arranged in the discharge channel downstream of the valve seat (claim 11) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
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 do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: resilient element in claim 4.
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. The specification describes the resilient element as a spring, or an expansion spring (page 11, lines 17-18).
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.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “means of a joint” in claim 1.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 112
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 4, 7, 16, 24, and 26 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 4 recites the limitation "the actuator" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the claim will be construed as if it is written as: “further comprising [[the]] an actuator that comprises at least one resilient element.
With regard to claim 7, the phrase “keeping it outside” renders the claim confusing and, therefore indefinite. It is not clear what element “it” is referring to. As best understood, and for purposes of examination, the phrase will be construed as the following: “keeping [[it]] the inertial mass outside.”
Claim 16 recites the limitation "the oscillating joint" in 2. There is insufficient antecedent basis for this limitation in the claim. Claim 16 depends from claim 1. Claim 1 refers to an “oscillating group” and also to “a joint”, but not to an “oscillating joint.” It is not clear what is being referred to in claim 16. For purposes of examination, claim 16 will be construed as if “oscillating joint” is written as “oscillating group.”
Claim 24 recites the limitation "the resilient element" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 24 depends from claim 23, which depends from claim 22. Claim 22 originally required a “resilient element”, but that phrase was deleted in the Preliminary Amendment dated 04/28/2025. Therefore, it is not clear if claim 24 should be amended to depend from claim 4 instead of claim 22, or if claim 24 is referring to a different element. For purposes of examination, claim 24 is being construed as if it is dependent from claim 24.
With regard to claim 24, the phrase “an expansion spring” in line 2 renders the claim indefinite. Claim 24 depends from claim 23. Claim 23 already recites an expansion spring. It is not clear if claim 24 is referring to a different expansion spring or the same one as claim 23. For purposes of examination, claim 24 will be construed as if it is dependent from claim 4 and not claim 23.
Dependent claim 26 is also rejected for being dependent upon a rejected claim.
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 (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 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.
Claims 1, 4, 7, 8, 9, 11, 14, 17, 18, 19, 20, 22, and 29 (as far as they are all definite and understood) are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP 1473494 (“Guillemaut”).
With regard to claim 1, Guillemaut discloses a shut-off valve for a fluid (para [0001] and Figs 1-2, comprising: a valve body (1) comprising a discharge channel (channel from 2 to 3) for the fluid, comprising an inlet (2) for the fluid, an outlet (3) for the fluid and an interception zone (zone with 9, see annotated Fig) which is arranged between the inlet (2) and the outlet (3); a closure device (5a+5b) which is at least partially arranged in the interception zone (zone with 9, see annotated Figs) and which is movable along an axis (X) (vertical axis, shown in annotated Fig) between an open position (position in Fig 1), in which a passage of fluid is allowed between the inlet (2) and the outlet (3) , and a closed position (position in Fig 2), in which the passage is prevented; the closure device (5a+5b) being urged to close (urged to close by spring 6); and an oscillating group (10+M) comprising a rod (10) and an inertial mass (M) which is secured to the rod (10) in such a manner that the rod (10) has at least one free end (top end of 10 near 9), the oscillating group (10+M) being secured in a pivoting manner (compare Fig 1 to Fig 2) to the valve body (1) by means of a joint (11), the joint (11) being configured so as to separate the interception zone (zone with 9) from a receiving chamber (chamber with M) (see annotated Fig), in which the inertial mass (M) is housed, keeping it outside the interception zone (see Fig 1), the oscillating group (10+M) being supported in terms of oscillation with respect to the valve body (1) by the joint (11) between a rest position (position in Fig 1), in which the rod (10) is arranged along the axis (X) (vertically aligned), and a safety position (position in Fig 2), in which the rod (10) is inclined with respect to the axis (X) (see Fig 2 and annotated Fig 1); wherein the oscillating group (10+M) is configured so as to abut the closure device (10 abuts portion of 5a+5b at 9 as shown in Fig 1), maintaining in the open position (see Fig 1), when the oscillating group (10+M) is in the rest position (position in Fig 1), and to allow a translational movement (moves downward) of the closure device (5a+5b) into the closed position (where 5b closes seat) when the oscillating group (10+M) is in the safety position (position in Fig 2), the oscillating group (10+M) being configured so as to be moved from the rest position (Fig 1) to the safety position (Fig 2) when the inertial mass (M) is subjected to a lateral acceleration greater than a predefined value (“seismic jerk” or “violent shock” that moves M, para [0004]).
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With regard to claim 4 (as best understood), Guillemaut discloses an actuator that comprises at least one resilient element (spring 6).
With regard to claim 7, Guillemaut discloses that the joint (11) is configured so as to separate the discharge channel (channel from inlet 2 to outlet 3) from the receiving chamber (chamber with M), in which the inertial mass (M) is received, keeping the inertial mass outside the discharge channel (see Fig 1).
With regard to claim 8, Guillemaut discloses that the joint (11) is at a pivot location (pivot shown when compare between Figs 1 and 2) positioned between the free end of the rod (top end of 10) and the inertial mass (M) (see Fig 2).
With regard to claim 9¸Guillamaut discloses that the interception zone (zone with 9) of the valve body (1) comprises a valve seat (portion of 1 that is sealed by 5b in closed position, see annotated Fig) and the closure device (5a+5b) comprises a valve head (5b) which is arranged in the discharge channel (see annotated Fig) and which is provided to occupy a position spaced apart from the valve seat when the closure device (5a+5b) is in the open position (position in Fig 1), and a position in which the valve head (5b) is engaged in a sealing manner with the valve seat (seat shown in annotated Fig 1) when the closure device (5a+5b) is in the closed position (position in Fig 2).
With regard to claim 11, Guillemaut discloses that the valve head (5b) is arranged in the discharge channel (channel from inlet 2 to outlet 3) downstream of the valve seat (seat shown in annotated Fig) (see Fig 1).
With regard to claim 14, Guillemaut discloses that the closure device (5a+5b) comprises a pin (portion extending down from 5b, see annotated Fig) which is fixedly joined to the valve head (5b) and which is arranged along the axis (X) (see annotated Fig) and slidingly movable (compare Figs 1 and 2) into the interception zone (zone with 9) and which has a free end (bottom end) in the direction away from the valve head (5b), and the oscillating group (10+M) is supported in a pivoting manner (at pivot at 11) between the rest position (Fig 1), in which the free end (top end) of the rod (10) abuts the free end (bottom end) of the pin (portion extending down from 5b), maintaining the closure device (5a+5b) in the open position (see Fig 1), and the safety position (position in Fig 2), in which the free end (top end) of the rod (10) does not abut the free end (bottom end) of the pin (portion extending down from 5b), so that the closure device (5a+5b) is free to move in translation into the closed position (see Fig 2).
With regard to claim 17, Guillemaut discloses that the free end (bottom end) of the pin (portion extending down from 5b) is tapered (see annotated Fig 2).
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With regard to claim 18, Guillemaut discloses that the free end (bottom end) of the pin (portion extending down from 5b) is tapered with a spherical or conical form (at least partially conical form shown in Fig 2).
With regard to claim 19, Guillemaut discloses that the free end (top end) of the rod (10) is tapered (see Fig 2).
With regard to claim 20, Guillemaut discloses that the free end (top end) of the rod (10) is tapered with a frustoconical form (shown in Fig 2, see annotated Fig 2).
With regard to claim 22, Guillemaut discloses that the closure device (5a+5b) is urged to close by a spring (spring 6).
With regard to claim 29, Guillemaut discloses use of a shut-off valve constructed according to claim 1 (see above with respect to claim 1) in a vehicle (“road and rail vehicles” para [0002]) for intercepting a fluid following an impact which is generated following a collision of the vehicle as a result of an incident (“In the event of violent impacts of uneven road vehicles” para [0002]).
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.
Claim 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over EP 1473494 (“Guillemaut”).
With regard to claim 5, Guillemaut discloses all the claimed features with the exception of disclosing explicitly that the inertial mass has a weight between 20 and 80g.
Guillemaut is silent as to the precise weight of the inertial mass (M), but does disclose that the inertial mass can be used in road vehicles or rail vehicles or boats (see para [0002]), which would have different weights and impact requirements.
It would have been a matter of obvious design choice to one having ordinary skill in the art before the effective filing date of the claimed invention to make the inertial mass of Guillemaut have any suitable weight, such as between 20 and 80 g, because the weight of the inertial mass does not appear to provide any unexpected results.
With regard to claim 6, Guillemaut discloses all the claimed features with the exception of disclosing explicitly that the inertial mass has a weight between 30 and 50g.
Guillemaut is silent as to the precise weight of the inertial mass (M), but does disclose that the inertial mass can be used in road vehicles or rail vehicles or boats (see para [0002]), which would have different weights and impact requirements.
It would have been a matter of obvious design choice to one having ordinary skill in the art before the effective filing date of the claimed invention to make the inertial mass of Guillemaut have any suitable weight, such as between 30 and 50g, because the weight of the inertial mass does not appear to provide any unexpected results.
Claim 10 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over EP 1473494 (“Guillemaut”) in view of U.S. Pat. No. 4,131,124 (“Sunde”).
With regard to claim 10, Guillemaut discloses all the claimed features with the exception of disclosing that the valve head (5b) is arranged in the discharge channel upstream of the valve seat.
Sunde discloses a shut-off valve with a discharge channel having an inlet (at 12), an outlet (at 14), and a valve seat (where 18 seats on valve body to close off opening in Fig 2), a valve head (18), pin (30), inertial mass (36), and joint (at 34), similar to that of Guillemaut, and teaches that it is known in the art to have the valve head (18) upstream of the valve seat (see annotated Fig).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to utilize a closure device with a valve head upstream of the valve seat as taught by Sunde in place of the valve head position of Guillemaut, since the valve head/closure device arrangements are known equivalents and the use of which would be known to one of ordinary skill in the art.
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With regard to claim 16, Guillemaut discloses that the oscillating joint (11) is a ball joint (“ball joint ( 11)” para [0003]) with a corresponding spherical element (ball) which is fixedly jointed to the rod (10) (see Figs 1 and 2) and which is arranged along it at a location between the free end (top end) of the rod (10) and the inertial mass (M) (See Fig 1).
Guillemaut discloses all the claimed features with the exception of explicitly disclosing that the joint (11) comprises a spherical pin which is fixedly joined to the valve body.
Sunde discloses a shut-off valve with a discharge channel having an inlet (at 12), an outlet (at 14), and a valve seat (where 18 seats on valve body to close off opening in Fig 2), a valve head (18), pin (30), inertial mass (36), and ball joint (at 34), similar to that of Guillemaut, and teaches that it is known in the art to have the joint include a spherical element (ball) (“he pivot device 34 may be of the gimble type or a ball joint” (col. 3, lines 38-39) and a spherical pin fixedly joined to the valve body) (shown, not labeled in Figures, see annotated Fig).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to utilize a joint with a spherical element and spherical pin as taught by Sunde in place of the spherical joint of Guillemaut, since the joints are known equivalents and the use of which would be known to one of ordinary skill in the art.
Claim 23, 24, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over EP 1473494 (“Guillemaut”) in view of U.S. Pat. Pub. No. 2021/0317923 (“Heberling”).
With regard to claim 23, Guillemaut discloses all the claimed features with the exception of disclosing the spring is an expansion spring.
Guillemaut does disclose a spring (6).
Heberling discloses a valve with a spring (7). Heberling discloses embodiments with a compression spring or an extension (i.e., expansion) spring (see para [0039]).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to utilize an expansion spring as taught by Heberling in place of the spring of Guillemaut, since the springs are known equivalents and the use of which would be known to one of ordinary skill in the art.
With regard to claim 24, as best understood, Guillemaut discloses the valve body (1) has an internal abutment (at 7) and the resilient element is a spring (6) which has an axis arranged along the axis (X) and which is confined between the valve head (5b) and the internal abutment (7), wherein the closure device (5a+5b) comprises a shaft (shaft shown extending from 5b toward 13, see annotated Fig) which is arranged along the axis (X) in the direction away from the valve head (5b) at the side opposite the pin (see annotated Fig) and which moves inside the spring (6) (see Fig 1 and compare with Fig 2 to see movement).
Guillemaut discloses all the claimed features with the exception of disclosing the spring/resilient element is an expansion spring.
Guillemaut does disclose a spring (6).
Heberling discloses a valve with a spring (7). Heberling discloses embodiments with a compression spring or an extension (i.e., expansion) spring (see para [0039]).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to utilize an expansion spring as taught by Heberling in place of the spring of Guillemaut, since the springs are known equivalents and the use of which would be known to one of ordinary skill in the art.
With regard to claim 26, Guillemaut (as modified above) discloses that the shaft (shaft shown extending from 5b toward 13, see annotated Fig) comprises a shaft portion which is slidingly received in the internal abutment (7) in such a manner that, when the closure device (5a+5b) moves between the open (Fig 1 position) and closed (Fig 2 position) positions, the shaft portion slides in the internal abutment (7) (compare Figs 1 and 2 showing motion of shaft portion sliding in 7).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
JP 60208675 discloses a shut-off valve with an oscillating group with a rod and inertial mass, as well as a ball joint.
U.S. Pat. No. 2,158,753 discloses a shut-off valve with an oscillating group with a rod, inertial mass and a joint.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA CAHILL whose telephone number is (571)270-5219. The examiner can normally be reached Mon-Fri: 6:30 to 3:00.
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/JESSICA CAHILL/Primary Examiner, Art Unit 3753