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 .
Election/Restrictions
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-18 and 21-23, drawn to a primary gasket.
Group II, claim(s) 19-20, drawn to a cylinder assembly.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because the groups do not share the same or corresponding technical feature. Also see rejection of claims below. Furthermore the primary gasket of claim 11 is different than a primary gasket in claim 19 (claim 19 can be taught by the prior art well known to assignee, see IDS and application and/or patents of assignee).
During a telephone conversation with Stephen Evans on 3/17/2026 a provisional election was made without traverse to prosecute the invention of group I, claims 11-18 and 21-23. Affirmation of this election must be made by applicant in replying to this Office action. Claims 19-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The election/restriction is made final.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Response to Arguments
Applicant's arguments filed 3/2/2026 have been fully considered but they are not persuasive.
Applicants’ argument that added limitation “is configured to selectively form a seal or a fluid gap with said axial housing wall” is not taught by Lee is not persuasive, since this limitation adds no structural limitation to the primary gasket only an intended use which is give no patentable weight in an apparatus claim when the gasket of Lee can be used as described in claim (see many references on form 892 which show the use of a lip seal in a housing that is capable of forming a seal or fluid gap). It is further noted that the reference of Lee (KR 20070062258) form a seal with end portion of 43 contacting a back wall of a housing and a fluid gap between 45 and the back wall of the housing.
It is further noted that applicant is only claiming a primary gasket which is taught by Lee and Edlund.
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.
Claim 22-23 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 22, entire claim, unclear since claim 17 provides “and/or”. For examination purpose the reference of Lee teaches uniformly distributed radial openings , which meets the claims 17 and 22-23. Examiner has provided a preemptive rejection of claim 22-23 below in paragraph 14 below.
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.
Claim(s) 11-18 and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al (KR20070062258A) in view of Edlund et al (DE4223671A1).
Lee discloses a primary gasket (e.g. figure 3) for a cylinder assembly (intended use but the primary gasket of Lee is capable of being placed in a cylinder assembly, see figure 1 and other references provided on form 892, see MPEP 2113-2114 regarding intended use and/or method limitations), wherein the cylinder assembly comprises a cylinder and a float slidingly housed in a float housing delimited by a cylinder wall of the cylinder for pressurizing a fluid (e.g. intended use the primary gasket of Lee is capable of this see figure 1 and other references provided on form 892), wherein the primary gasket (e.g. figure 3) comprises an annular body (e.g. body of the primary gasket in figure 3), which extends circumferentially at least along a circumferential direction (e.g. see circumferential direction shown in figure 3) about an axial direction, wherein the primary gasket defines a radial direction perpendicular (e.g. again figure 3 shows this) to the axial direction and the circumferential direction (C-C), wherein the annular body is configured to be accommodated in a primary gasket housing (e.g. intended use but the primary gasket of Lee is capable of being placed in a housing, see figure 1 and other references provided on form 892, see MPEP 2113-2114 regarding intended use and/or method limitations) defined in the cylinder wall, in which the primary gasket housing is delimited radially by an axial housing wall and axially by a first radial housing wall and a second radial housing wall connected to the axial housing wall (e.g. intended use but the primary gasket of Lee is capable of being placed in a groove, see figure 1 and other references provided on form 892, see MPEP 2113-2114 regarding intended use and/or method limitations), wherein the annular body comprises an inner lip (e.g. 42), a central lip (e.g. lip 43), an outer lip (e.g. 41), and a back portion (e.g. back portion having 44), wherein the back portion comprises a back abutment surface (e.g. 44) configured to abut against the first radial housing wall of the primary gasket housing (e.g. intended use but the back portion of Lee is a contact surface with a surface of the groove, see figure 1 and other references provided on form 892, see MPEP 2113-2114 regarding intended use and/or method limitations), wherein the inner lip, central lip, and outer lip extend axially from the back portion (e.g. figure 3 shows this), on the side opposite the back abutment surface, radially spaced apart from one another, wherein the inner lip is configured to form a seal with said float (e.g. intended use but the inner lip of Lee is capable of contacting an element such as the float, see figure 1 and other references provided on form 892, see MPEP 2113-2114 regarding intended use and/or method limitations), wherein the outer lip is configured to selectively form a seal or a fluid gap with the axial housing wall (e.g. intended use but the outer lip of Lee is capable of forming a seal or fluid gap with the axial housing wall, see figure 1 and other references provided on form 892, see MPEP 2113-2114 regarding intended use and/or method limitations and it is further noted that the outer lip is flexible and fluid from slots on the back surface 44 is capable of flexing the outer lip inward to form a fluid gap), wherein the central lip comprises an annular lip body (e.g. body of 43), which extends axially between the back portion and a central lip edge, wherein the annular lip body has a central lip thickness (e.g. thickness of the central lip 43) along the radial direction (R-R), wherein the central lip edge comprises at least one central lip abutment portion (e.g. portion of 43 that is capable of contacting a wall of 2, see figure 2) configured to abut against the second radial wall (e.g. intended use but the central lip edge of Lee is capable of contacting a surface of the groove, see figure 2 and other references provided on form 892, see MPEP 2113-2114 regarding intended use and/or method limitations), wherein the central lip comprises at least one radial opening (e.g. one of 45), wherein the at least radial opening passes through the central lip thickness (e.g. the opening 45 extends radially through the lip thickness, see figure 3). Wherein the at least one radial opening is circumferentially spaced from another of the at least one by a distance equal to at least the value of the diameter (e.g. see each of 45 in figure 3). Wherein the radial openings are uniformly distributed circumferentially over the annular lip body (e.g. see 45 which are uniformly distributed circumferentially in figure 3), and/or wherein there are from 10 to 100 of the radial openings (9), preferably from 20 to 50, preferably 30. Wherein the at least one radial opening is circumferentially spaced from another of the at least one radial openings by a distance equal to at least three times the value of said diameter (e.g. this is the case when considering only two radially openings 45).
Lee discloses the invention as claimed above but fails to disclose at least one radial opening defining a closed side opening profile in the annular body. Edlund discloses a gasket with an inner lip (e.g. inner lip having 61), an outer lip (e.g. outer lip having 60), a central lip (e.g. central lip 62) between the inner and outer lips, the central lip having inner axial surface and outer axial surface (e.g. inner axial surface facing the inner lip having 61 and outer axial surface facing the outer lip having 60) that define a thickness, plurality of radial bores (e.g. 66) through the thickness of the central lip defining a closed side opening profile in the annular body (e.g. see dotted lines in figure 3 defining a closed side opening profile for the plurality of radial bores), each radial bore of the plurality of radial bores having at least one side opening wall (e.g. see radial bore 66 having side walls in cross-section), the plurality of radial bores are spaced from a back surface by at least 1 to 3 diameter of the radial bore (e.g. back surface is the one contacting 56 and the radial bores are spaced from the back surface by at least 1 to 3 times the diameter of the radial bore 66), the radial bores are cylindrical and the radial bores are spaced circumferentially. It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to replace the radial recess 43 of Lee by the radial bores of Edlund, with reasonable expectation of success, since the concept of recess or bores to provide function of pressure distribution is art equivalent (see description of figure 2 of elements 49, 48, 47’ and 46 and radial bores 66 in figure 3 of Edlund).
Regarding claim 12: The combination of Lee and Edlund teaches the central lip comprises at least one side opening wall, wherein the at least one side opening wall seamlessly delimits the at least one radial opening, wherein the central lip comprises a radially inner axial surface and a radially outer axial surface respectively facing the inner lip and the outer lip, wherein each side opening wall extends predominantly and radially from the radially inner axial surface to the radially outer axial surface avoiding interfering with the central lip edge and defining the closed opening side profile (e.g. the teaching of Edlund would provide a through port or hole in the central lip of Lee instead of the slot or groove 45 in Lee).
Regarding claim 13: The combination of Lee and Edlund teaches wherein each radial opening has a respective opening axis, wherein each opening is delimited about the respective opening axis seamlessly by a respective opening side wall of the annular lip body and/or wherein each radial opening has a respective opening diameter and/or wherein the closed side opening profile has either a cylindrical or a prismatic shape and/or wherein the closed side opening profile is defined by a side opening wall of the annular lip body, which extends at least radially of the central lip thickness, wherein the respective side opening wall has a cylindrical extension about the opening axis or comprises a plurality of side walls, which laterally delimit a hollow prism (this is the case when the elements 45 of Lee are interchanged by the elements 66 of Edlund).
Regarding claim 14: The combination of Lee and Edlund teaches wherein each opening axis is axially distanced from the central lip edge by a distance less than twice the value of the opening diameter, and/or wherein each opening axis is axially spaced from the back abutment surface by a distance equal to at least three times the value of the opening diameter, preferably comprised between four times and six times the value of the opening diameter, wherein the opening diameter is at least equal to the central lip thickness (this is the case when the elements 45 of Lee are interchanged by the elements 66 of Edlund).
Regarding claim 15: The combination of Lee and Edlund teaches wherein the central lip comprises a plurality of the at least one radial opening, wherein the radial openings are circumferentially spaced apart from each other on the central lip (this is the case when the elements 45 of Lee are interchanged by the elements 66 of Edlund).
Regarding claim 16: The combination of Lee and Edlund teaches wherein the at least one radial opening is circumferentially spaced from another of the at least one by a distance equal to at least the value of the diameter (this is the case when the elements 45 of Lee are interchanged by the elements 66 of Edlund).
Regarding claim 17: The combination of Lee and Edlund teaches wherein the radial openings are uniformly distributed circumferentially over the annular lip body, and/or wherein there are from 10 to 100 of the radial openings (9), preferably from 20 to 50, preferably 30 (this is the case when the elements 45 of Lee are interchanged by the elements 66 of Edlund).
Regarding claim 18: The combination of Lee and Edlund teaches wherein the at least one central lip abutment portion configured abut against the second radial wall extends seamlessly along the central lip edge forming a continuous annular abutment portion (e.g. the back surface of Lee would be continuous and in contact by the teaching of Edlund, where the elements 45 of Lee are replaced by the radial bores 66 of Edlund).
Regarding claim 21: Wherein the at least one radial opening is circumferentially spaced from another of the at least one radial openings by a distance equal to at least three times the value of said diameter (this is the case when the elements 45 of Lee are interchanged by the elements 66 of Edlund).
Regarding claim 22: Wherein there are from 20 to 50 of the radial openings (e.g. see rejection of claim 17 above and also paragraph 11).
Regarding claim 23: Wherein there are 30 of the radial openings (e.g. rejection of claim 17 above and also paragraph 11).
Claim(s) 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Lee and Edlund.
Lee and Edlund disclose the claimed invention except there are from 20 to 50 of the radial openings. Discovering an optimum range of a result effective variable involves only routine skill in the art. In re Kulling, 895 F.2d 1147, 14 USPQ 2d 1056. Without the showing of some unexpected result. Since applicant has not shown some unexpected result the inclusion of this limitation is considered to be a matter of choice in design. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have 20 to 50 radial openings with reasonable expectation of success as a matter of design choice. It is furthermore provided that predictable result of design is provided when openings are limited the pressure distribution along the central lip is minimal and also depends on the size of lip seal (large diameter would require may radial openings but small would require fewer openings).
Lee and Edlund disclose the claimed invention except there are 30 of the radial openings. Discovering an optimum range of a result effective variable involves only routine skill in the art. In re Kulling, 895 F.2d 1147, 14 USPQ 2d 1056. Without the showing of some unexpected result. Since applicant has not shown some unexpected result the inclusion of this limitation is considered to be a matter of choice in design. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have 20 to 50 radial openings with reasonable expectation of success as a matter of design choice. It is furthermore provided that predictable result of design is provided when openings are limited the pressure distribution along the central lip is minimal and also depends on the size of lip seal (large diameter would require may radial openings but small would require fewer openings).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Keck teaches radial bores 3 in figures 1-4 and radial recess in figures 9-12 to equalize pressure and Stella teaches radial bores in figure 2 and radial recess in figure 1 and 4.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VISHAL A PATEL whose telephone number is (571)272-7060. The examiner can normally be reached 7:00 am to 4:00pm.
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/VISHAL A PATEL/Primary Examiner, Art Unit 3675