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 Preliminary Amendment
The preliminary amendment dated 12/27/2024 has been received and accepted. Claims 6-8 are newly presented. Claims 1-8 are being examined.
Information Disclosure Statement
The information disclosure statements (IDSs) dated 4/9/2025 and 2/10/2026 have been received and considered.
Specification
The disclosure is objected to because of the following informalities:
Paragraph 76, “mounting hole 41a” should be --mounting hole 40a-- per paragraph 77 and figure 7.
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: biasing member in claim 1, corresponding in structure to coil spring 4 or coil spring 5 per paragraph 19 and primary chamber side biasing member in claims 5-8, corresponding in structure to coil spring 5 per paragraph 19.
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 § 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 1-8 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 1 recites that the biasing member is configured to bias the spool toward a primary chamber side (line 6). Claim 1 then recites the biasing member is disposed on the primary chamber side or a secondary chamber side (lines 10-11). It is unclear how the biasing member would be able to bias the spool toward a primary chamber side while being located on the primary chamber side. Based on figure 1, if the “primary chamber side” is the left side, the biasing member would necessarily need to be spring 4 located on the opposite, secondary chamber side in order to bias the spool toward the primary chamber side. If the “primary chamber side” is the right side, the biasing member would necessarily need to be spring 5 located on the opposite, secondary chamber side in order to bias the spring toward the primary chamber side. Thus, there does not appear to be a position where the biasing member biases the spool toward a primary chamber side and the biasing member is also disposed on the primary chamber side.
Claims 2-8 are rejected due to their dependency on claim 1.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-8, as far as they are definite, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hirata et al. (U.S. 4,753,158).
Hirata discloses a valve (fig. 4) comprising: a housing (37a); a spool (38a) having a throttle port (39a), disposed in the housing to be movable in an axial direction (col. 5, ll. 28-57, col. 6, ll. 19-40 generally, the spool with the port moves to the left and right in fig. 4), and partitioning off the housing into a primary chamber (36a) and a secondary chamber (35a); and a biasing member (50a) configured to bias the spool toward a primary chamber side in an axial direction (the left side with 36a), wherein the spool operates in the axial direction due to a pressure difference between the primary chamber and the secondary chamber (col. 5, ll. 28-57, col. 6, ll. 19-40, especially col. 5, ll. 40-56 describing the pressure differential and also col. 6, ll. 29-36 and similar to the applicant’s device), and the biasing member is disposed on the primary chamber side or a secondary chamber side with respect to the throttle port (secondary chamber side, the right side in fig. 4).
Regarding claim 2, Hirata further discloses wherein the spool has a step portion (the radially inward extending surface of spool 38a that spring 50a contacts, to the left of the lead line for numeral 40a in fig. 4) with which an end of the biasing member comes into contact (fig. 4).
Regarding claim 3, Hirata further discloses wherein the step portion is provided on an inner peripheral surface of the spool (radially inner peripheral surface, see fig. 4).
Regarding claim 4, Hirata further discloses wherein the spool is further provided with an open-close port (43a, see col. 5, ll. 36-57, which opens and closes the passage at 46a based on a pressure differential) configured to switch a communication state between the primary chamber and the secondary chamber (from the communication state in which fluid flow from the primary chamber to the secondary chamber flows through 39a, 40a, 42a and into 36a to a communication state in which fluid flow from the primary chamber to the secondary chamber flows through the groove 46a, see col. 5, ll. 36-52, additionally and/or alternatively, see col. 6, ll. 6, ll. 24-40 describing two different communication states, one being when the spool is in a first position, the other being when the spool moves to the right), and the biasing member (50a) is disposed on the secondary chamber side with respect to the open-close port (to the right of the open-close port).
Regarding claims 5-8, Hirata further discloses a primary chamber side biasing member (51a) configured to bias the spool toward the secondary chamber side in the axial direction (to the right in fig. 4), wherein the throttle port and the primary chamber are in communication with each other via a flow path that bypasses the primary chamber side biasing member (when the spool is moved to the left and fluid is flowing from 35a, through 46a, and to 36a, the fluid bypasses the spring 51a as the flowpath is not through 51a via 41a, see col. 5, ll. 43-52).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Holder (U.S. 7,401,751) discloses a spool valve with biasing member that has various states of fluid flow including from the inlet to the outlet and from the outlet to the inlet.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL R REID whose telephone number is (313)446-4859. The examiner can normally be reached on Monday-Friday 9am-5pm est.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisors can be reached by phone. Craig Schneider can be reached at 571-272-3607, or Ken Rinehart can be reached at 571-272-4881. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/MICHAEL R REID/ Primary Examiner, Art Unit 3753