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 .
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.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 15 Oct 2024 and 28 Oct 2025 were filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Specification
The amendment filed 15 Oct 2024 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
The incorporation by reference of the international patent application PCT/JP2023/034904 filed on September 26, 2023 and of the Japanese patent application No. 2022-164702 filed on October 13, 2022 is ineffective as it was added on the date of entry into the national phase, which is after the filing date of the instant application. The filing date of this national stage application is the filing date of associated PCT, in this case 26 Sept 2023, see MPEP 1893.03(b). Therefore the specification amendment of 15 Oct 2024 to include the incorporation by reference is new matter, per MPEP 608.01(p). Applicant is advised to remove the phrase “each of which are incorporated herein by reference in its entirety” from the specification.
Applicant is required to cancel the new matter in the reply to this Office Action.
The disclosure is objected to because of the following informalities:
In ¶ 44, line 16 “rage” should likely read “range”.
Appropriate correction is required.
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: “an elastic member” in claim 1.
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.
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.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hodapp et al (US 20230287993).
Regarding Claim 1, Hodapp et al disclose a fluid control valve (Figure 1) provided with1 a motor (34), a valve element (see Annotated Figure A), a valve seat (60), and a passage (22a to 22b), and configured to perform controlling of a control fluid to flow through the passage by moving the valve element with the motor between a valve open position at which the valve element is separated from the valve seat (shown in Figure 1) and a valve close position at which the valve element is contacted with the valve seat (¶ 67), wherein the fluid control valve is provided with an elastic member (54) to apply an urging force to the valve element in a closing direction (¶ 66), the motor is provided with a drive shaft (38) to operate the valve element (¶ 66),
a position control mode to control the drive shaft to move to a target position (from p1 to p2 shown in figure 9 and disclosed in ¶ 82) and a thrust control mode to control the drive shaft to obtain a target thrust (from p2 to p3 in Figure 9 and disclosed in ¶ 82) are provided, and while the valve element moves from the valve open position to the valve close position, the fluid control valve is provided with a control program configured to control the motor with the position control mode until the valve element reaches a predetermined position before reaching the valve close position from the valve open position (the predetermined position p2 as disclosed in Figure 9) and to switch control of the motor from the position control mode to the thrust control mode with the target thrust of zero to bring the valve element to reach the valve close position from the predetermined position only by the urging force (Figure 9 at p3 with the target thrust of zero disclosed in ¶ 82; and ¶ 69 discloses holding the closed position only via spring elements).
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Annotated Figure A
Regarding Claim 2, Hodapp et al disclose where the control program is configured to maintain a state in which the valve element is at the valve close position after the valve element reaches the valve close position by the thrust control mode with the target thrust of zero (¶ 82 and ¶ 69; where ¶ 69 discloses holding the valve closed only by the urging force of the spring; wherefore the thrust remains zero).
Regarding Claim 3, Hodapp et al disclose wherein the predetermined position is determined based on a thermal expansion amount of the valve seat in an opening/closing direction of the valve element (¶ 69).
Regarding Claim 4, Hodapp et al disclose where the predetermined position is determined based on a thermal expansion amount of the valve seat in an opening/closing direction of the valve element (¶ 69).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE GARDNER whose telephone number is (571)270-0144. The examiner can normally be reached Monday - Friday 8AM-4PM EST.
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/NICOLE GARDNER/
Examiner, Art Unit 3753
1 The transitional term “provided with” has been interpreted as open terminology (like “comprising”), allowing for the inclusion of other components in addition to those recited. See MPEP 2111.03.