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 .
Response to Amendment
Applicant’s amendment filed on September 8, 2025 has been received and carefully considered. Claims 1-17 are canceled. Claims 29-33 are withdrawn. Claim 34 is new. Claims 18-28 and 34 are under consideration.
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.
Claims 18, 19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Romiti et al. (US 2008/0219900) in view of Conval A (Conval, Inc. Camseal® and Clampseal® Urea & Ammonia Service Valves, 2019), Conval B (Conval, Inc. High Performance Valves for the World’s Most Demanding Applications, 2019), and Zhang et al. (CN 205226530 U).
Regarding claim 18, Romiti et al. discloses a urea production plant (see FIG. 1-2) comprising a high pressure (HP) synthesis section (110 or 210) comprising a reaction zone (i.e., a urea synthesis reactor 112), a HP stripper 114, a HP carbamate condensation zone (i.e., a condenser 116), and a valve (i.e., a control valve 142 or 150; see paragraphs [0038], [0052]).
Romiti et al. fails to disclose the claimed valve construction for the valve 142 or 150.
Conval A discloses a variety of commercially available urea and ammonia service valves specifically designed for high-pressure piping in urea reactors, strippers, and condensers. The valves shown (e.g., Clampseal® Urea Ball Valves, Urea Actuated Valves, Clampseal® Urea Globe valves, Urea Gate Valves, etc.) comprise a valve body, an inlet for fluid, an outlet for fluid, a flow-regulating member, a chamber in the valve body for receiving a corrosive process fluid, and a valve seat. Conval B further discloses the aforementioned features of these valves (see figures, e.g., at pages 5, 8, 10, 12, 17, 19, and 20). Conval A also discloses that the urea and ammonia service valves are made from corrosion resistant materials, including duplex stainless steel, e.g., Ferralium 255, Duplex F51, SAF 2507, and DP28W (see page 3).
Conval A and B fail to disclose that the valve body comprises the recited two-part valve body construction, including an outer body part and an inner body part, wherein the materials of the outer body part and the inner body part are different from each other, and wherein the duplex stainless steel is the material of the inner body part.
Zhang et al. discloses a corrosion-resistant valve (see FIG. 1-4; abstract; translation) comprising a valve body having an outer body part (i.e., a main valve body 6) and an inner body part (i.e., a lining 2, 4, 5, 8) fit together and/or mechanically joined to each other, wherein the outer body part 6 is made of a first material (i.e., the main valve body 6 is made of cast iron or cast steel), wherein the inner body part 2, 4, 5, 8 is made of a second material (i.e., the lining is made of a corrosion resistant steel), wherein the first material and the second material are different from each other, and wherein the second material suitability comprises duplex stainless steel (i.e., the lining material can comprise a highly corrosion resistant material such as double-phase (duplex) steel 2205, 2507, or 1.4462). The valve comprises the valve body, an inlet for fluid (i.e., via an opening proximate a first flange 3), an outlet for fluid (i.e., via an opening proximate an opposite flange 3), a flow-regulating member (i.e., a member, not shown, which extends across the valve body and is received in an upper shaft seat 1 and a lower shaft seat 10), a chamber (i.e., the space inside by the valve body, extending between the first and second flanges 3) for receiving a corrosive process fluid in the valve body, and a valve seat 7; wherein the inner body part (i.e., the lining) comprises a surface exposed to said chamber and directly in contact with the corrosive process fluid in the chamber in operation; and wherein the outer body part 6 does not contact with the corrosive process fluid in operation.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to provide a urea and ammonia service valve made from duplex stainless steel, as taught by Conval A and B, for the valve in the urea production plant of Romiti et al. because the urea and ammonia service valve was designed specifically for high-pressure piping in urea reactors, strippers, and condensers and for use with the corrosive process fluids in a urea production plant.
Furthermore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the valve body of the urea and ammonia service valve in the modified urea production plant of Romiti et al. to comprise the claimed two-part valve body construction because a less expensive steel material could be used to form the outer body part of the valve body and a smaller amount of the expensive, highly corrosion-resistant, duplex stainless steel material could be used to form the inner body part of the valve body, and accordingly, the cost of manufacturing the corrosion resistant valve could be reduced in comparison to the prior method of manufacturing the entire valve body from the duplex stainless steel material, as taught by Zhang et al. (see translation at page 2, under “Background technology”; page 3, under “advantages and positive effects”, and page 4, at the underlined portions under “Preferred Embodiment”).
Regarding claim 19, as reiterated from above, Romiti et al. discloses that the high pressure (HP) synthesis section (110 or 210) comprises a HP stripper 114 and a HP carbamate condensation zone (i.e., a condenser 116).
Regarding claim 21, Conval A (see page 3) discloses that suitable valve types for the urea and ammonia service valves include, e.g., Globe (Y-, T-, and Angle-Pattern) valves.
Conval B further discloses the construction of the Y-Pattern Globe valve (at page 8), the T-Pattern Globe valve (at page 10), and the Angle-Pattern Globe valve (at page 12). The parts in common of these valves are further labeled in the Exploded View of the Clampseal® valve on pages 5-6. As shown in the figures, the Globe (Y-, T-, and Angle-Pattern) valves comprise a valve body, an inlet for fluid, an outlet for fluid, a flow-regulating member, a chamber for receiving process fluid, and a valve seat; wherein the flow-regulating member comprises a stem and a plug arranged for moving in the chamber between at least two different positions for regulating flow (i.e., where the positions are set by Travel H). The stem further extends through an opening of the valve body provided with stem packing (i.e., the stem packing in the Conval Packing System; see page 7). In the modified valve body having the two-part valve body construction, the stem would also extend through an opening of the inner body part.
It would have been an obvious design consideration for one of ordinary skill in the art before the effective filing date of the claimed invention to select a valve type having the claimed flow regulating member for the valve in the modified urea production plant of Romiti et al. because the claimed flow regulating member (i.e., of the Globe (Y-, T- or Angle-Pattern) urea and ammonia service valve) was specifically designed to regulate the flow of the corrosive process fluid in a urea production plant, as taught by Conval A and B.
Claims 20, 23, 24, and 26-28 are rejected under 35 U.S.C. 103 as being unpatentable over Romiti et al. (US 2008/0219900) in view of Conval A (Conval Inc. Camseal® and Clampseal® Urea & Ammonia Service Valves, 2019), Conval B (Conval, Inc. High Performance Valves for the World’s Most Demanding Applications, 2019), and Zhang et al. (CN 205226530 U), as applied to claim 18 above, and further in view of Bauer (US 4,161,187).
The combination of Romiti et al., Conval A and B, and Zhang et al. fails to disclose or teach the additionally claimed valve features.
Bauer discloses a corrosion resistant valve (see Figure) comprising: a valve body with an outer body part (i.e., an outer body 4) and an inner body part (i.e., a tubular sleeve 24) fit together and/or mechanically joined to each other; an inlet 6 for fluid; an outlet 8 for fluid; a flow regulating member (i.e., a valve plug 50 connected to an actuating rod 62); a chamber in the valve body (i.e., a cylindrical central chamber 10) for receiving a corrosive process fluid (e.g., corrosive acid conditions are inherent of pitch containing fluids; see column 3, lines 7-14); and a valve seat 28; wherein the outer body part 4 is made of a first material (e.g., 316 stainless steel) and the inner body part 24 is made of a second material (e.g., chrome carbide or tungsten carbide), and the first material and the second material are different from each other (see column 3, lines 38-43); wherein the inner body part 24 comprises a surface exposed to the chamber 10 and directly in contact with the process fluid in the chamber 10 in operation, and the valve is configured to ensure that the outer body part 4 is not in contact with the process fluid in operation.
With respect to claim 20, Bauer discloses that the inner body part (i.e., tubular sleeve 24) is a single unitary part.
With respect to claim 23, Bauer discloses that the valve comprises an opening in the inner body part (i.e., an opening in the side wall of the tubular sleeve 24, which communicates with a flow passage 30 of the inlet 6) and an opening in the outer body part 4 (i.e., an opening in the side wall of the outer body 4, which communicates with the flow passage 30 of the inlet 6); said openings being aligned with each other so as to allow the process fluid to flow (i.e., from the flow passage 30) between the opening in the inner body part 24 and the chamber 10; wherein the valve comprises a protective element (i.e., a tubular sleeve 20) arranged inside the opening in the outer body part 4 so as to cover the outer body part 4 from exposure to the process fluid in the opening in the outer body part 4; and the protective element 20 also extends through the opening in the inner body 24 (see Figure).
With respect to claim 24, Bauer discloses that the protective element (i.e., the tubular sleeve 20) is a tubular element inserted in both the opening in the inner body part 24 and the opening in the outer body part 4 (see Figure).
With respect to claim 26, Bauer discloses that the outer body part 4 includes a recess for receiving the inner body part 24, and wherein the inner body part 24 is releasably held in place in the outer body part 4 (i.e., the tubular sleeve 24 can be removed from the outer body 4 by unfastening the bolts 40 securing the bonnet flange 44 to the enlarged end 36 of the outer body 4, followed by heating the assembly to the insertion temperature to expand the outer body 4 and facilitate the removal of the tubular sleeve 24 through the upper opening of the outer body 4; see column 3, lines 50, to column 4, line 3).
With respect to claim 27, Bauer discloses that the inner body part is a sleeve 24 that fits in a recess of the outer body part 4 and fits through an opening in the outer body part 4 (i.e., the tubular sleeve 24 fits through the opening proximate to the end 36 of the outer body 4).
With respect to claim 28, Bauer discloses that the inner body part 24 is mechanically held in a recess of the outer body part 4 with an interference fit (i.e., the tubular sleeve 24 is sized so that the O.D. of the sleeve is slightly larger than the I.D. of the chamber 10, so that the sleeve 24 is locked in place and prevented from moving in the outer body 4 during its intended operation; see column 3, lines 36, to column 4, line 3).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the valve in the modified urea production plant of Romiti et al. to comprise the additionally claimed valve features because the valve features would have been considered conventional features of a valve having a two-part valve body construction, and furthermore, in the valve so constructed, the inner body part would be locked into place within the outer body part, so that the inner body part is prevented from moving within the outer body part during the intended operation of the valve, as taught by Bauer (see column 3, line 36, to column 4, line 3).
Claims 20, 22, 25, 26, and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Romiti et al. (US 2008/0219900) in view of Conval A (Conval Inc. Camseal® and Clampseal® Urea & Ammonia Service Valves, 2019), Conval B (Conval, Inc. High Performance Valves for the World’s Most Demanding Applications, 2019), and Zhang et al. (CN 205226530 U), as applied to claim 18 above, and further in view of Howard (US 1,258,903).
The combination of Romiti et al., Conval A and B, and Zhang et al. fails to disclose or teach the additionally claimed valve features.
Howard (see FIG. 1) discloses a corrosion-resistant valve comprising: a valve body with an outer body part (i.e., valve chamber 1) and an inner body part (i.e., an interior lining 5) fit together and/or mechanically joined to each other; an inlet for fluid (i.e., via an inlet portion 2); an outlet for fluid (i.e., via a base of the valve chamber 1); a flow-regulating member (i.e., a valve stem 9 with a plug formed by parts 30-34); a chamber (i.e., of the valve chamber 1) for receiving a corrosive process fluid in the valve body (e.g., corrosive process fluids from sulfite digesters), and a valve seat (i.e., a valve seat 27 with a flange 28 defining a beveled portion to engage with the disc valve 33 portion of the plug); wherein the outer body part 1 and the inner body part 5 are made of different materials; wherein the inner body part 5 is made from a corrosion resistant material (e.g., lead; see page 1, lines 45-50); wherein the inner body part 5 comprises a surface exposed to the chamber and directly in contact with the corrosive process fluid in the chamber in operation, and the valve is configured to ensure that the outer body part 1 is not in contact with the corrosive process fluid in operation.
With respect to claim 20, Howard discloses that the inner body part (i.e., the interior lining 5) is a single unitary part.
With respect to claim 22, Howard discloses that the valve seat 27,28 is supported by and in direct contact with the inner body part 5 (i.e., the flange 28 of the valve seat 27 is supported by and in direct contact with the lining 5 proximate the base of the valve chamber 1; see FIG. 1).
With respect to claim 25, Howard discloses that the valve comprises a seat connection piece (i.e., an outlet pipe 23 with a lining 24 and a flange 25 at its upper end to connect with a corresponding flange 25 at the base of the valve chamber 1) which is attached to the outer body part 1 by releasable connecting means (i.e., bolts 26) and which holds the inner body part 5 in place in a recess of the outer body part 1.
With respect to claim 26, Howard discloses that the outer body part 1 includes a recess (i.e., a space formed between the flange 28 portion of the seat 27 and the wall of the valve chamber 1) for receiving the inner body part (i.e., the interior lining 5 is positioned within this space, between the flange 28 portion and the wall of the valve chamber 1), and wherein the inner body part 5 is releasably held in place in the outer body part 1 (i.e., the interior lining 5 is not permanently fixed in the valve chamber 1; the interior lining 5 is merely held in place within the valve chamber 1 by means of fastening collars or flanges 6 and 7, which engage with corresponding grooves or recesses 6’ and 7’ of the valve chamber 1).
With respect to claim 34, Howard discloses that the seat connection piece 23,24,25 also holds the valve seat 27,28 in place in the valve body 1.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the valve in the modified urea production plant of Romiti et al. to comprise the additionally claimed valve features because the valve features would have been considered conventional features of a valve having a two-part valve body construction, and furthermore, in the valve so constructed, the valve seat could be readily removed and replaced when required, the outer body part would be protected from corrosive process fluids by the inner body part, and the valve could be manufactured and sold at a moderate figure (cost), as taught by Howard (see page 1, lines 8-23; page 2, lines 19-24).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 18-27 and 34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 14-22 of copending Application No. 18/850,936 in view of Bowers et al. (Chemical Engineering, 2021, v. 128, n. 5, pp. 43-46).
This is a provisional nonstatutory double patenting rejection.
Application No. 18/850,936 claims a valve comprising the same structural features as the instantly claimed valve, wherein:
with respect to claim 18, the valve comprises a valve body, an inlet for fluid, an outlet for fluid, a flow-regulating member, a chamber for receiving fluid in the valve body, and a valve seat, wherein the valve body comprises an outer body part and an inner body part fit tougher and/or mechanically joined to each other, whereby the outer body part is made of a first material and whereby the inner body part is made of a second material, wherein the first and second material are different from each other; wherein the inner body part comprises a surface exposed to said chamber and directly in contact with the fluid in the chamber in operation, wherein the second material is duplex stainless steel (see ref. claim 1);
with respect to claim 20, the inner body part is a single unitary part (see ref. claim 22);
with respect to claim 21, the flow-regulating member comprises a regulating stem or a stem and plug arranged for moving in the chamber between at least two different positions for regulating fluid flow; and wherein the stem extends through an opening of the inner body part provided with a stem packing (see ref. claim 3);
with respect to claim 22, the valve seat is supported by and in direct contact with the inner body part (see ref. claim 15);
with respect to claim 23, the valve comprises an opening in the inner body part and an opening in the outer body part, said openings being aligned with each other so as to allow the process fluid to flow between the opening in the inner body part and the chamber; wherein the valve comprises a protective element arranged inside the opening in the outer body part so as to cover the outer body part from exposure to the process fluid in the opening in the outer body part, wherein the protective element optionally also extends through the opening in the inner body (see ref. claim 16);
with respect to claim 24, the protective element is a tubular element inserted in both the opening in the inner body part and the opening in the outer body part (see ref. claim 18);
with respect to claim 25, the valve comprises a seat connection piece which is attached to the outer body part by releasable connecting means and which holds the inner body part in place in a recess of the outer body part (see ref. claim 19);
with respect to claim 26, the outer body part includes a recess for receiving the inner body part, and wherein the inner body part is releasably held in place in the outer body part (see ref. claim 21);
with respect to claim 27, the inner body part is a sleeve that fits in a recess of the outer body part and fits through an opening in the outer body part (see ref. claims 21); and
with respect to claim 34, the seat connection piece also holds the valve seat in place in the valve body (see ref. claim 20).
Application No. 18/850,936 fails to claim that the valve is a component of a high pressure (HP) synthesis section in a urea production plant, wherein the synthesis section comprises a reaction zone, a HP stripper, and a HP carbamate condensation zone.
Bowers et al. discloses the use of Duplex (DSS) or Super Duplex (SDSS) stainless steels for the manufacture of severe-service valves for urea applications, and in particular, for urea applications involving the high pressure section of a urea production plant, which includes a reaction zone (i.e., a urea reactor, where urea is produced by the reaction of ammonia and carbon dioxide at high pressure, typically at 140 bars or 2,031 psi), a stripper, a high-pressure carbamate condenser, and a high-pressure off-gas scrubber (see under heading “Urea synthesis”). Bowers et al. further discloses that the metallurgy of DSS or SDSS is especially advantageous for the manufacture of these severe-service valves because the alloys are able to maintain their corrosion-resistant surfaces in the presence of low or almost zero oxygen, and the alloys also exhibit a high strength suitable for high pressure valve applications (see under heading “Severe-service metallurgy”).
It would have been obvious for one of ordinary skill in the art at the time the invention was made to provide the claimed valve of Application No. 18/850,936 in a high pressure synthesis section of a urea production plant, wherein the high pressure synthesis section includes a reaction zone, a high pressure stripper, and a high pressure carbamate condensation zone, because valves manufactured from duplex stainless steel material were known to be especially suitable as severe-service valves in urea applications, and, in particular, in urea applications involving the high pressure synthesis section in a urea production plant, due to the inherent ability of duplex stainless steels to maintain corrosion-resistant surfaces in the presence of low or almost zero oxygen, and the high strength of the duplex stainless steel alloys further allows for the valves to be used in high pressure applications, as taught by Bowers et al.
Claim 28 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 14-22 of copending Application No. 18/850,936 in view of Bowers et al. (Chemical Engineering, 2021, v. 128, n. 5, pp. 43-46), as applied to claim 18 above, and further in view of Bauer (US 4,161,187).
This is a provisional nonstatutory double patenting rejection.
Application No. 18/850,936 claims that the inner body part is held in a recess of the outer body part (see ref. claim 21) but fails to claim that the inner body part is mechanically held with an interference fit or a friction fit.
Bauer discloses a corrosion resistant valve (see Figure) comprising: a valve body with an outer body part 4 and an inner body part (i.e., a tubular sleeve 24) fit together and/or mechanically joined to each other; an inlet 6 for fluid; an outlet 8 for fluid; a flow regulating member (i.e., a valve plug 50 with an actuating rod 62); a chamber in the valve body (i.e., a central chamber 10) for receiving a corrosive process fluid (e.g., corrosive acid conditions are inherent of pitch containing fluids; see column 3, lines 7-14); and a valve seat 28; wherein the outer body part 4 is made of a first material (e.g., 316 stainless steel) and the inner body part 24 is made of a second material (e.g., chrome carbide or tungsten carbide), and the first and second materials are different (see column 3, lines 38-43); wherein the inner body part 24 comprises a surface exposed to the chamber 10 and directly in contact with the process fluid in the chamber in operation, and the valve is configured to ensure that the outer body part 4 is not in contact with the process fluid. Specifically, Bauer further discloses that the inner body part 24 is mechanically held in a recess of the outer body part 4 with an interference fit (i.e., the tubular sleeve 24 is sized so that the O.D. of the sleeve is slightly larger than the I.D. of the chamber 10, so that the sleeve 24 is locked in place and prevented from moving in the outer body 4 during the intended operation of the valve; see column 3, lines 36, to column 4, line 3).
It would have been obvious for one of ordinary skill in the art at the time the invention was made to further configure the claimed valve of Application No. 18/850,936, which was provided in the high pressure synthesis section in a urea production plant, to comprise an interference fit between the inner body part and the outer body part because the inner body part would be locked into place within the outer body part, and the inner body part would be prevented from moving within the outer body part during the intended operation of the valve, as taught by Bauer (see column 3, line 36, to column 4, line 3).
Response to Arguments
Applicant’s arguments filed on September 8, 2025 have been fully considered.
Applicant (at page 8, third paragraph) argues,
“… the Office has failed to present a prima facie case of obviousness, and instead appears to be impermissibly picking and choosing the elements from multiple references in order to recreate Applicant’s claimed urea plant, and more specifically the urea plant with the claimed valve construction, without any suggestion or motivation to do so absent Applicant’s disclosure. The Office admits that Romiti fails to disclose the claimed construction of the valve. Instead, Romiti discloses a urea production plant with a completely different valve that is not specifically disclosed. Conval A and Conval B are simply product manuals that disclose a large selection of different valves for many different uses, but as admitted by the Office, Conval A and Conval B fail to disclose the two-part valve body construction as claimed.” (with emphasis added).
The Office respectfully disagrees.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988); In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992); KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, Romiti et al. discloses a urea production plant (see FIG. 1-2) comprising a high pressure (HP) synthesis section (110 or 210) including a valve (i.e., a control valve 142 or 150; see paragraphs [0038], [0052]). Since Romiti et al. merely discloses a generic control valve 142,150, it would have been obvious for one of ordinary skill in the engineering art to look to known valves used under similar process environments.
Conval A discloses commercially available valves for specific use as urea and ammonia service valves, wherein the valves are designed for use with high-pressure piping in urea reactors, strippers, and condensers. The urea and ammonia service valves are made from corrosion resistant materials, including duplex stainless steel, e.g., Ferralium 255, Duplex F51, SAF 2507, and DP28W (see page 3). Conval B was further relied upon to provide details on to the construction of these valves (see figures, e.g., at pages 5, 8, 10, 12, 17, 19, and 20).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to select a urea and ammonia service valve made from duplex stainless steel, as taught by Conval A and B, for the valve in the high pressure synthesis section in the urea production plant of Romiti et al. because the urea and ammonia service valves sold by Conval, Inc. were designed specifically for high-pressure piping in urea reactors, strippers, and condensers and use with the corrosive process fluids in a urea production plant.
In response to applicant’s argument that Conval A and B fail to disclose a two-part valve body construction, the feature was taught by the additional prior art reference to Zhang et al. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant (at page 8, last paragraph) further argues,
“Zhang discloses a valve having a liner that is the inner surface of the valve that is mechanically welded to the outer body, wherein the liner is corrosion resistant and can be made from a number of different materials. Zhang specifically mentions the adhesion between the inner body and the outer body, but does not disclose the inner and outer body part are “fit together and/or mechanically joined to each other’ as claimed. Zhang also does not teach or suggest use in a high pressure environment, such as one found in a urea production plant or process. Applicant respectfully submits that one skilled in the art would not look to four different, unrelated references to construct the valve used in the plant claimed by Applicant without some motivation to do so, and here, there is no motivation or suggestion to select the features necessary to make the present valve.” (with emphasis added).
The Office respectfully disagrees.
Zhang et al. was merely relied upon to teach a corrosion-resistant valve having an inner body part (i.e., a lining 2, 4, 5, 8) made from a material that was different from an outer body part (i.e., a main valve body 6), wherein the material of the inner body part comprises duplex stainless steel (i.e., a highly corrosion resistant material such as double-phase (duplex) steel 2205, 2507, or 1.4462). In Zhang et al., the outer body part and the inner body part “fit together” because the inner body part is a sheet plate of duplex stainless steel that has been shaped so as to fit inside of the outer body part and to provide a direct and continuous contact of an outer surface of the inner body part with an inner surface of the outer body part. One of ordinary skill in the art would have been motivated to modify a valve that was manufactured entirely from duplex stainless steel (such as the urea and ammonia service valves sold by Conval, Inc.) to comprise a two-part construction in which only an inner body part was manufactured from duplex stainless steel, because a less expensive steel material could be used to form the outer body part of the valve body and a smaller amount of the expensive, highly corrosion-resistant, duplex stainless steel material could be used to form the inner body part of the valve body, and accordingly, the cost of manufacturing the corrosion resistant valve could be reduced in comparison to the prior method of manufacturing the entire valve body from the duplex stainless steel material, as taught by Zhang et al. (see translation at page 2, under “Background technology”; page 3, under “advantages and positive effects”, and page 4, at the underlined portions under “Preferred Embodiment”).
In response to applicant's argument that the examiner has combined an excessive number of references, reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. See In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991).
Furthermore, in response to applicant’s argument that the applied references are “unrelated references”, the Office asserts that one of ordinary skill in the art would have considered the references to be sufficiently related. In this case, Romiti et al., Conval A, and Conval B describe valves for use in the high pressure piping of a high pressure synthesis section in a urea synthesis plant, and Conval A, Conval B, and Zhang et al. describe valves made from corrosion resistant materials, and in particular, duplex stainless steel.
Applicant (at page 9, first paragraph) further argues,
“Contrary to the reasons stated by the Office that it would have been obvious to modify the valve body to comprise the claimed two-part valve body construction (i.e., “because a less expensive steel material could be used to form the outer body part of the valve boy and a smaller amount of the expensive, highly corrosion-resistant, duplex stainless steel material could be used to form the inner body part of the valve body, and accordingly, the cost of manufacturing the corrosion resistant valve could be reduced in comparison to the prior method of manufacturing the entire valve body from the duplex stainless steel material, as taught by Zhang”’), absent Applicant’s own disclosure, there is no reason to do so. Instead, the Office has simply found many of the elements of Applicant’s claims and combined them to recreate the invention by relying on Applicant’s disclosure and teaching, contrary to the teachings of the references themselves. Accordingly, Applicant respectfully submits that current rejection is the result of impermissible hindsight reconstruction.” (with emphasis added).
The Office respectfully disagrees.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper.
Applicant (at page 10, first and second paragraphs) argues,
“… the Office has failed to present a prima facie case of obviousness, and instead appears to be impermissibly picking and choosing the elements from multiple references in order to recreate Applicant’s claimed urea plant, and more specifically valve construction, without any suggestion or motivation to do so absent Applicant’s disclosure. As discussed above, the combination of Romiti, Conval A and Conval B and Zhang fail to disclose all of the elements of claim 18. Claims 20, 23, 24 and 26-28 depend from claim 18. The addition of Bauer to teach that the inner body part is a single unitary part does not remedy the deficiencies of the combination of Romiti, Conval A and Conval B and Zhang. Applicant respectfully submits that one skilled in the art would not look to five different, unrelated references to construct the valve used in the plant claimed by Applicant without some motivation to do so, and here, there is no motivation or suggestion to select the features necessary to make the present valve having the claimed features.
Contrary to the reasons stated by the Office that it would have been obvious to modify the valve body to comprise the claimed two-part valve body construction to comprise the additionally claimed valve features—namely, “because the valve features would have been considered conventional features of a valve having a two-part valve body construction” and “the inner body part would be locked into place within the outer body part so that the inner body part is prevented from moving within the outer body part during the intended operation of the valve, as taught by Bauer’—absent Applicant’s disclosure, there is no reason to do so. Instead, the Office has simply found many of the elements of Applicant’s claims in five different unrelated references and combined them to recreate the claimed invention, contrary to the teachings of the references themselves.” (with emphasis added).
The Office respectfully disagrees.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art.
In response to applicant's argument that the examiner has combined an excessive number of references, reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention.
One of ordinary skill in the art would have been motivated to further modify the valve in the modified plant of Romiti et al. to comprise the additionally claimed valve features of Bauer because, in the valve so constructed, the inner body part would be locked into place within the outer body part, so that the inner body part is prevented from moving within the outer body part during the intended operation of the valve (see column 3, line 36, to column 4, line 3).
In addition, one of ordinary skill in the art would have considered the applied references to be sufficiently related. In this case, Romiti et al., Conval A, and Conval B describe valves for use in the high pressure piping of a high pressure synthesis section of a urea synthesis plant, and Conval A, Conval B, and Zhang et al. describe valves made from corrosion resistant materials, and in particular, duplex stainless steel. Furthermore, Zhang et al. and Bauer describe valves having a two-part valve body construction.
Applicant (at page 11, second to fourth paragraphs) further argues,
“… the Office has failed to present a prima facie case of obviousness, and instead appears to be impermissibly picking and choosing the elements from multiple references in order to recreate Applicant’s claimed urea plant, and more specifically valve construction, without any suggestion or motivation to do so absent Applicant’s disclosure…
The addition of Howard for a corrosion resistant valve and where the inner body part is a single unitary part does not remedy the deficiencies of the combination of Romiti, Conval A and Conval B and Zhang. Applicant respectfully submits that one skilled in the art would not look to five different, unrelated references to construct the valve used in the plant claimed by Applicant without some motivation to do so, and here, there is no motivation or suggestion to select the features necessary to make the present valve having the claimed features.
Contrary to the reasons stated by the Office that it would have been obvious to modify the valve body to comprise the claimed two-part valve body construction to comprise the additionally claimed valve features—namely, “because the valve features would have been considered conventional features of a valve having a two-part valve body construction” and “the valve seat would be readily removed and replaced when required, the outer body part would be protected from corrosive process fluids by the inner body part, and the valve could be manufactured and sold at a moderate figure (cost), as taught by Howard’”—absent Applicant’s disclosure, there is no reason to do so. Instead, the Office has simply found many of the elements of Applicant’s claims in five different unrelated references and combined them to recreate the invention, contrary to the teachings of the references themselves.” (with emphasis added).
The Office respectfully disagrees.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art.
In response to applicant's argument that the examiner has combined an excessive number of references, reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention.
One of ordinary skill in the art would have been motivated to further modify the valve in the modified urea production plant of Romiti et al. to comprise the additionally claimed valve features of Howard because, in a valve so constructed, the valve seat could be readily removed and replaced when required, the outer body part would be protected from corrosive process fluids by the inner body part, and the valve could be manufactured and sold at a moderate figure (cost) (see page 1, lines 8-23; page 2, lines 19-24).
In addition, one of ordinary skill in the art would have considered the applied references to be sufficiently related. In this case, Romiti et al., Conval A, and Conval B describe valves for use in the high pressure piping of a high pressure synthesis section of a urea synthesis plant, and Conval A, Conval B, and Zhang et al. describe valves made from corrosion resistant materials, and in particular, duplex stainless steel. Furthermore, Zhang et al. and Howard describe valves having a two-part valve body construction.
Applicant (at page 12, third paragraph) further argues,
“… it would not have been obvious to combined the teachings of Application No. 18/850,936 with the teachings of Bauer or Bowers to arrive at the claimed invention. Applicant respectfully submits that there is no motivation to combine the teachings of Bowers and/or Bauer with those of copending Application No. 18/850,936 in the manner proposed by the Office, and thus the rejections are the result of impermissible hindsight reconstruction.” (with emphasis added).
The Office respectfully disagrees.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper.
In response to the argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art.
Regarding claims 18-27 and 34, App. No. 18/850,936 claims a valve having the same structure as the instant valve which, in particular, comprises an inner body part made of duplex stainless steel. The claims of the two applications differ in that the instant application claims the valve as a component of a high pressure synthesis section of a urea production plant.
Bowers et al., however, discloses the use of Duplex (DSS) or Super Duplex (SDSS) stainless steels for the manufacture of severe-service valves for urea applications, and in particular, for urea applications involving the high pressure section of a urea production plant (see under heading “Urea synthesis”). Bowers et al. further discloses that the metallurgy of DSS or SDSS is especially advantageous for the manufacture of such severe-service valves because these alloys are able to maintain their corrosion-resistant surfaces in the presence of low or almost zero oxygen, and the alloys also exhibit a high strength suitable for high pressure valve applications (see under heading “Severe-service metallurgy”).
It would have been obvious for one of ordinary skill in the art to employ the claimed valve of App. No. 18/850,936 in a high pressure synthesis section of a urea production plant, because the valve, which comprises an inner body part of duplex stainless steel, would have been especially suitable for use as a severe-