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 Arguments
Applicant's arguments filed 08/04/2026 have been fully considered but they are not persuasive.
In regards to applicant’s argument that it would not be obvious to a person of ordinary skill in the art to modify the prior art reference Winkler with the claimed range, Examiner respectfully disagrees. The prior art reference Winkler discloses in paragraph 49 that the coating does not need to cover the entire spool and may be limited to the regions of the spool that will mechanically interface with the sleeve, hence the end portions do mechanically interface with the sleeve. One of ordinary skill in the art would find it obvious to modify the coating of Winkler to be in the claimed range of the coating since the disclosure of Winkler broadly encompasses the claimed range of the coating at the end portions, and the case law cited below.
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 3 and 11 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.
Regarding claim 3, the limitation “each of portions of the outer circumferential surface” is unclear which portion the applicant is referring to.
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(s) 2-3, and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Winkler (Pub. No. US 2017/0138489).
Regarding claim 2, Winkler discloses a spool valve (Figs. 1-12) comprising: a cylindrical sleeve (110), the sleeve (110) including two or more input ports (113) and two or more output ports (113), each of the two or more input ports (113) and two or more output ports (113) communicating with inside (Figs. 1-3) of the sleeve (110); and a spool valve element (102) configured to slide inside (paragraph 24) the sleeve (110) in an axial direction of the sleeve (110), wherein: an open area of each of the input ports and the output ports (113) is adjusted by sliding (paragraph 25) of the spool valve element (102), each of both end portions (at lands 109) in the axial direction of at least one of the sleeve (110) and the spool valve element (102) comprises: a support portion (coating 1112 at the glands as disclosed in paragraph 49) configured to support the sliding of the spool valve element (102) by reducing a gap (1116) between an inner circumferential surface of the sleeve (110) and an outer circumferential surface of the spool valve element (102) more than at other portions of the end portions (paragraphs 49-50), the sleeve (110) includes a first surface treated portion (paragraphs 49-50) treated with first plating (product by process) in each of both end portions of the inner circumferential surface (paragraphs 49-50) in the axial direction, and the first surface treated portion is the support portion (paragraphs 49-50), but lacks disclosure wherein each of the support portions has a plating range in the axial direction of 1mm or more and 15% of a total length of the sleeve or less.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to cause the support portion of Winkler to have a plating range of 1mm or more in the axial direction and 15% or less of a total length of the sleeve in the axial direction, since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentable distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the support portion of Winkler would not operate differently with the claimed dimensions since the support portion of Winkler functions in the same manner as the inventor’s disclosed support portion to reduce wear between the surfaces as disclosed in paragraphs 48-49. MPEP § 2144.05(II)(A): Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.").
The surface treated portion produced by plating does not limit the claim. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product in the prior art, the claim in unpatentable even though the prior product was made by a different process (see MPEP 2113).
Regarding claim 3, Winkler discloses a spool valve (Figs. 1-12) comprising: a cylindrical sleeve (110), the sleeve (110) including two or more input ports (113) and two or more output ports (113), each of the two or more input ports (113) and two or more output ports (113) communicating with inside (Figs. 1-3) of the sleeve (110); and a spool valve element (102) configured to slide inside (paragraph 24) the sleeve (110) in an axial direction of the sleeve (110), wherein: an open area of each of the input ports and the output ports (113) is adjusted by sliding (paragraph 25) of the spool valve element (102), each of both end portions (at lands 109) in the axial direction of at least one of the sleeve (110) and the spool valve element (102) comprises: a support portion (coating 1112 at the glands as disclosed in paragraph 49) configured to support the sliding of the spool valve element (102) by reducing a gap (1116) between an inner circumferential surface of the sleeve (110) and an outer circumferential surface of the spool valve element (102) more than at other portions of the end portions (paragraphs 49-50), the spool valve element (102) includes a surface treated portion (1112) treated with electrolytic plating (product by process), in each of portions (at the lands, paragraph 49) of the outer circumferential surface facing both end portions (paragraphs 49-50) of the inner circumferential surface of the sleeve (110) in the axial direction, the surface treated portion (1112) is the support portion (paragraphs 48-50), but lacks disclosure wherein each of the support portions has a plating range in the axial direction of a minimum of twice a length of a sliding distance of the spool valve element in the axial direction.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to cause the support portion of Winkler to have a plating range of a minimum of twice a length of a sliding distance of the spool valve element in the axial direction, since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentable distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the support portion of Winkler would not operate differently with the claimed dimensions since the support portion of Winkler functions in the same manner as the inventor’s disclosed support portion to reduce wear between the surfaces as disclosed in paragraphs 48-49. MPEP § 2144.05(II)(A): Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.").
The surface treated portion produced by electrolytic plating does not limit the claim. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product in the prior art, the claim in unpatentable even though the prior product was made by a different process (see MPEP 2113).
Regarding claim 8, Winkler discloses a spool valve (Figs. 1-12) comprising: a cylindrical sleeve (110), the sleeve (110) including two or more input ports (113) and two or more output ports (113), each of the two or more input ports (113) and two or more output ports (113) communicating with inside (Figs. 1-3) of the sleeve (110); and a spool valve element (102) configured to slide inside (paragraph 24) the sleeve (110) in an axial direction of the sleeve (110), wherein: an open area of each of the input ports and the output ports (113) is adjusted by sliding (paragraph 25) of the spool valve element (102), each of both end portions (at lands 109) in the axial direction of at least one of the sleeve (110) and the spool valve element (102) comprises: a support portion (coating 1112 at the glands as disclosed in paragraph 49) configured to support the sliding of the spool valve element (102) by reducing a gap (1116) between an inner circumferential surface of the sleeve (110) and an outer circumferential surface of the spool valve element (102) more than at other portions of the end portions (paragraphs 49-50), the sleeve (110) includes the support portion (1112) formed with a reduced inner diameter (paragraphs 49-50), on each of both end portions of the inner circumferential surface in the axial direction (paragraphs 49-50), a reduced amount of the inner diameter of the support portion is 4 μm or more, but 60 μm or less (paragraph 50), but lacks disclosure wherein each of the support portions has a plating range in the axial direction that is 2% or more and 15% or less of a total length of the sleeve in the axial direction.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to cause the support portion of Winkler to have a plating range that is 2% or more and 15% or less of a total length of the sleeve in the axial direction, since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentable distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the support portion of Winkler would not operate differently with the claimed dimensions since the support portion of Winkler functions in the same manner as the inventor’s disclosed support portion to reduce wear between the surfaces as disclosed in paragraphs 48-49. MPEP § 2144.05(II)(A): Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.").
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Winkler (Pub. No. US 2017/0138489) in view of Kihlberg (U.S. Patent No. 5,222,521).
Regarding claim 5, Winkler discloses the spool valve (Figs. 1-12), wherein the spool valve element (102) includes a second surface treated portion (1112) treated with second plating (product by process), on at least a portion of the outer circumferential surface (paragraphs 49-50) facing the first surface treated portion (1112), and a surface treated portion (1112) having a hardness higher then the adjacent mating surface (paragraph 49) but lacks disclosure wherein the second plating has a hardness higher than a hardness of the first plating.
Kihlberg teaches a spool valve (10) comprising a sleeve (12) and spool valve element (11), wherein the sleeve (12) has an inner surface having hardness (Column 2 lines 20-47), the spool valve element (11) has an exterior surface having a hardness (Column 2 lines 20-47), and wherein the exterior surface of the spool valve element (11) has a hardness higher (Column 2 lines 20-47) than a hardness of the inner surface of the sleeve (12).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the hardness of the first and second treated portions to have a hardness of the second treated portion that is harder that the first treated portion, for the advantage of preventing galling and avoiding damage due to cavitation (abstract).
Regarding claim 6, Winkler discloses the spool valve (Figs. 1-12), wherein the first plating is electroless plating (product by process), and the second plating is electrolytic plating (product by process).
The surface treated portion produced by electroless or electrolytic plating does not limit the claim. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product in the prior art, the claim in unpatentable even though the prior product was made by a different process (see MPEP 2113).
Claim(s) 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Winkler (Pub. No. US 2017/0138489) in view of ITO et al. (Pub. No. US 2022/0187027).
Regarding claims 10-11, Winkler discloses the spool valve (Figs. 1-12), the gap (1116) excluding a reduced area by the support portions (1112) is 7 μm or more, but 55 μm or less (paragraph 50), but lacks disclosure wherein in a flow rate control unit for temperature regulation, that regulates a temperature of a susceptor provided in a semiconductor manufacturing device by circulating a temperature regulation fluid to the susceptor, the spool valve regulates an output flow rate of a low-temperature fluid for reducing the temperature of the temperature regulation fluid, the low-temperature fluid being inputted in a first input port, which is one of the two or more input ports, and outputted from a first output port, which is one of the two or more output ports, and an output flow rate of a high-temperature fluid for increasing the temperature of the temperature regulation fluid, the high-temperature fluid being inputted in a second input port, which is one of the two or more input ports, and outputted from a second output port, which is one of the two or more output ports, to regulate the temperature of the temperature regulation fluid.
ITO et al. teach a spool valve (2003) for regulating an output flow rate (paragraph 132), wherein the spool valve (2003) is used in a flow rate control unit (2001) that regulates a temperature (paragraphs 131-132) of a susceptor (110).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the use of the spool valve of Winkler with a spool valve used in a flow rate control unit as taught by ITO et al. for the advantage of enabling the use of the spool valve in a heat exchange system (paragraph 123).
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Winkler (Pub. No. US 2017/0138489) in view of Kihlberg (U.S. Patent No. 5,222,521), and further in view of ITO et al. (Pub. No. US 2022/0187027).
Regarding claims 13-14, Winkler discloses the spool valve (Figs. 1-12), the gap (1116) excluding a reduced area by the support portions (1112) is 7 μm or more, but 55 μm or less (paragraph 50), but lacks disclosure wherein in a flow rate control unit for temperature regulation, that regulates a temperature of a susceptor provided in a semiconductor manufacturing device by circulating a temperature regulation fluid to the susceptor, the spool valve regulates an output flow rate of a low-temperature fluid for reducing the temperature of the temperature regulation fluid, the low-temperature fluid being inputted in a first input port, which is one of the two or more input ports, and outputted from a first output port, which is one of the two or more output ports, and an output flow rate of a high-temperature fluid for increasing the temperature of the temperature regulation fluid, the high-temperature fluid being inputted in a second input port, which is one of the two or more input ports, and outputted from a second output port, which is one of the two or more output ports, to regulate the temperature of the temperature regulation fluid.
ITO et al. teach a spool valve (2003) for regulating an output flow rate (paragraph 132), wherein the spool valve (2003) is used in a flow rate control unit (2001) that regulates a temperature (paragraphs 131-132) of a susceptor (110).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the use of the spool valve of Winkler with a spool valve used in a flow rate control unit as taught by ITO et al. for the advantage of enabling the use of the spool valve in a heat exchange system (paragraph 123).
Conclusion
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 Reinaldo Sanchez-Medina, telephone number 571-270-5168, fax number 571-270-6168. The examiner can normally be reached on Monday-Friday (7:30AM-4:00PM EST).
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/REINALDO SANCHEZ-MEDINA/Primary Examiner, Art Unit 3753
