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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because:
---Reference character “89” in Fig. 5A and 6A has been used to designate different components (see FIG. A below). In the specification, reference number “89” is being used to describe the second hat ring 89, of which the instance of the reference number “89” shown on the leftmost side of Figs. 5A and 6A appears to be correct (compare it to the first hat ring 87). The second instance of reference number “89” (located near the middle of Figs. 5A and 6A) appears to be the erroneous character. The Office suggests that the erroneous instance of reference character “89” in Figs, 5A and 6A is deleted.
PNG
media_image1.png
475
647
media_image1.png
Greyscale
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
The Office notes that at least claim 1 and 10 and their applicable dependent claims recites “a plurality of slots machined to span radially”. The limitation of “machined” is considered a Product-by-Process limitation. 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 is unpatentable even though the prior product was made by a different process (see MPEP 2113).
Claim Objections
Claim 4 is objected to because of the following informalities:
---Claim 4 recite the following:
Claim 4. The gate valve of claim 1, wherein there is not a seal element positioned between the proximal valve body face and the first proximal seat face; and there is not a seal element positioned between the proximal valve body face and the first proximal seat face.
Notice that the claim 4 recites the same limitation of “there is not a seal element positioned between the proximal valve body face and the first proximal seat face” twice. The Office suggests that either the second iteration is deleted or amended so that it does not reiterate the same limitations.
Appropriate correction is required.
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 1-10 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 the following:
Claim 1. A gate valve, comprising:
a valve body having a gate cavity intersecting a channel having a proximal channel portion and a distal channel portion on opposing sides of the gate cavity, wherein a three-dimensional frame of reference comprises three mutually orthogonal directions, wherein an X axis corresponds to a center line of the channel, a Y axis is a center line of the gate cavity, and a Z axis orthogonal to the X axis and the Y axis;
a gate positioned in the gate cavity and moveable between a closed position blocking flow through the channel and an open position allowing flow through the channel, the gate having a proximal gate face and a distal gate face extending perpendicular to the channel; and
a proximal seat between a proximal valve body portion and the gate, the proximal seat having a first proximal seat face adjacent a proximal valve body face and a second proximal seat face adjacent the proximal gate face;
a proximal annular groove on a radial outer surface of the proximal seat;
a proximal axial seal positioned in the proximal annular groove in direct contact with the proximal seat and the valve body;
a proximal plurality of slots machined to span radially from the channel to a proximal annular groove;
a distal seat between a distal valve body portion and the gate, the distal seat having a first distal seat face adjacent a distal valve body face and a second distal seat face adjacent the distal gate face;
a distal annular groove on a radial outer surface of the distal seat;
a distal axial seal positioned in the distal annular groove in direct contact with the distal seat and the valve body; and
a distal plurality of slots machined to span radially form the channel to a distal annular groove.
Notice the recitations of “a proximal annular groove” in claim 1 L16-17 and “a distal annular groove” in claim 1 L24-25 and that the same limitations are already recited in claim 1 L13 and claim 1 L21, respectively. Due to a possible claim drafting error it is unclear and indefinite if the latter recitations of L16-17 and L24-25 are the same as those previously recited in L16-17 and L14-25 or if they are distinct. Based on the disclosure, the Office will assume that they are the same limitations. If so, the Office suggests that claim 1 is amended as follows:
Claim 1. A gate valve, comprising:
a valve body having a gate cavity intersecting a channel having a proximal channel portion and a distal channel portion on opposing sides of the gate cavity, wherein a three-dimensional frame of reference comprises three mutually orthogonal directions, wherein an X axis corresponds to a center line of the channel, a Y axis is a center line of the gate cavity, and a Z axis orthogonal to the X axis and the Y axis;
a gate positioned in the gate cavity and moveable between a closed position blocking flow through the channel and an open position allowing flow through the channel, the gate having a proximal gate face and a distal gate face extending perpendicular to the channel; and
a proximal seat between a proximal valve body portion and the gate, the proximal seat having a first proximal seat face adjacent a proximal valve body face and a second proximal seat face adjacent the proximal gate face;
a proximal annular groove on a radial outer surface of the proximal seat;
a proximal axial seal positioned in the proximal annular groove in direct contact with the proximal seat and the valve body;
a proximal plurality of slots machined to span radially from the channel to [[a]] the proximal annular groove;
a distal seat between a distal valve body portion and the gate, the distal seat having a first distal seat face adjacent a distal valve body face and a second distal seat face adjacent the distal gate face;
a distal annular groove on a radial outer surface of the distal seat;
a distal axial seal positioned in the distal annular groove in direct contact with the distal seat and the valve body; and
a distal plurality of slots machined to span radially form the channel to [[a]] the distal annular groove.
---Claims 9 and 10 recites the following:
Claim 9. A seat comprising:
a seat, the seat having a first seat face and a radial outer surface, wherein the seat is adapted for fitment with a gate valve;
wherein the seat has a plurality of conduits extending through the seat and an annular groove; and,
a hat ring removably disposed in the annular groove.
Claim 10. A seat comprising:
a seat, the seat having a first seat face and a radial outer surface, wherein the seat is adapted for fitment with a gate valve;
wherein the seat has a plurality of slots machined to span radially on the seat to an annual groove on an outer diameter of the seat; and
a hat ring removably disposed in the annular groove.
Notice that claim 9 L2 and claim 10 L2 recites “a seat”, however, claim 9 L1 and claim 10 L1 already recites the same limitation. It is unclear and indefinite if the latter recitation of claim 9 L2 and claim 10 L2 are the same as the previous recitation of claim 9 L1 and claim 10 L1 or if they are distinct. Furthermore, it is unclear how “a seat” comprises “a seat” and if the claim limitations directed to the seat (e.g. “the seat having a first seat face”) is related to the first instance of “a seat” or the second instance or both. Is the applicant attempting to claim “A valve seat assembly comprising a seat…” or “A seat comprising: a first seat face and a radial outer face…”? The Office will assume that they are the same or related limitations. The Office suggests that the claims are amended to clarify what the applicant to attempting to claim.
---Claim(s) 2-8, being dependent on any of the preceding claim(s) above, inherit the same deficiencies as the parent/intervening claim(s) and as such is/are rejected in the same manner, see the rejection(s) above.
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.
(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) 9 is/are rejected under 35 U.S.C. 102a1/a2 as being anticipated by Hulsey US-3497177.
Regarding claim 9, as best understood by the Office, Hulsey US-3497177 teaches in Figs. 1-7 (see at least Fig. 1, 2, 4 and 6-7) the limitations of:
---Claim 9. A seat (seat assembly 25 and/or seat 26) comprising: a seat (seat assembly 25 and/or seat 26), the seat having a first seat face and a radial outer surface (see at least Figs. 1-2 and 3-7), wherein the seat is adapted for fitment with a gate valve (gate valve 15); wherein the seat has a plurality of conduits (a plurality of radial conduits 38) extending through the seat and an annular groove (annular groove 37); and, a hat ring (seal ring 40) removably disposed in the annular groove.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim(s) 1-4 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taylor US-3871616 in view of Meek US-20120292550.
Regarding claims 1-4 and 8, as best understood by the Office, Taylor US-3871616 teaches in Figs. 1-9 (see at least Fig. 1 and 9) of a gate valve assembly 10 having at least valve body 14, a reciprocating gate 60, valve seats 34 and rearward seals 36 positioned on rearward annular grooves of the seats similar to applicant’s general invention. The device of Taylor fails to disclose the feature of a plurality of slots as claimed. However, such a feature is known in the art.
Meek US-20120292550 teaches in Figs. 1-5 (see at least Figs. 1-3) of yet another example of a gate valve assembly comprising at least valve body 20, a reciprocating gate 24 and valve seat assemblies 1, each comprising a seat 2 having a plurality of annular and/or radial shallow grooves/slots 9 machined on the rearward side of seats. Theses shallow grooves 9 aid in assisting in installing the seats to the valve pockets 22 and prevent undesirable interference with the gate (see at least Para. [0039]).
It would have been obvious to one of ordinary skill in the art at the time that the invention was effectively filed to modify the valve seats 34 of the device of Taylor to include on the rearward face a plurality of annular and/or radial shallow grooves/slots 9 machined on the rearward side of seats in a similar manner as taught by Meek since such a modification aids in assisting in installing the seats to the valve pockets and prevent undesirable interference with the gate.
As such, the device of the combination of Taylor US-3871616 in view of Meek US-20120292550 teaches the limitations of:
---Claim 1. A gate valve (see the gate valve assembly 10 of Taylor as modified by Meek), comprising: a valve body (valve body 14 of Taylor) having a gate cavity (cavity 26 of Taylor that allows the gate 60 to reciprocate) intersecting a channel (the horizontal flow channel of Taylor which allows fluid to be controlled by the gate 60) having a proximal channel portion (either one of the left-side or right-side of the channel) and a distal channel portion (the other of either one of the left-side or right-side of the channel) on opposing sides of the gate cavity, wherein a three-dimensional frame of reference comprises three mutually orthogonal directions, wherein an X axis corresponds to a center line of the channel, a Y axis is a center line of the gate cavity, and a Z axis orthogonal to the X axis and the Y axis (see at least Figs. 1 and 9 of Taylor); a gate (gate 60 of Taylor) positioned in the gate cavity and moveable between a closed position blocking flow through the channel and an open position allowing flow through the channel, the gate having a proximal gate face (either one of the left-side or right-side of the gate) and a distal gate face (the other of either one of the left-side or right-side of the gate) extending perpendicular to the channel; and a proximal seat (the corresponding one of either one of the left-side or right-side valve seat 32 of Taylor and as modified by Meek to include a plurality of shallow slots 9) between a proximal valve body portion (the corresponding valve body pocket 30 that receives a portion of the corresponding valve seat 32) and the gate, the proximal seat having a first proximal seat face adjacent a proximal valve body face and a second proximal seat face adjacent the proximal gate face; a proximal annular groove (see the annular grooves that holds seals 36 of Taylor) on a radial outer surface of the proximal seat; a proximal axial seal (see seal 36 of Taylor) positioned in the proximal annular groove in direct contact with the proximal seat and the valve body; a proximal plurality of slots (see the plurality of annular and/or radial shallow grooves/slots 9 as taught by Meek machined on the rearward side of seats) machined to span radially from the channel to a proximal annular groove (see the annular grooves that holds seals 36 of Taylor); a distal seat between a distal valve body portion and the gate, the distal seat having a first distal seat face adjacent a distal valve body face and a second distal seat face adjacent the distal gate face; a distal annular groove on a radial outer surface of the distal seat; a distal axial seal positioned in the distal annular groove in direct contact with the distal seat and the valve body; and a distal plurality of slots machined to span radially form the channel to a distal annular groove (notice that the valve seats of Taylor and Meek are identical and the features shown on the proximal side seat are mirrored on the distal side seat).
---Claim 2. The gate valve of claim 1, wherein the proximal seat is a monolithic seat and the distal seat is a monolithic seat (see at least Fig. 1 of Taylor).
---Claim 3. The gate valve of claim 1, wherein the proximal seat simultaneously contacts the proximal valve body face and the proximal gate face during pressure conditions; and the distal seat simultaneously contacts the distal valve body face and the distal gate face during pressure conditions (see at least Fig. 1 of Taylor).
---Claim 4. The gate valve of claim 1, wherein there is not a seal element positioned between the proximal valve body face and the first proximal seat face; and there is not a seal element positioned between the proximal valve body face and the first proximal seat face (see at least Fig. 1 of Taylor).
---Claim 8. The gate valve of claim 1, wherein: the proximal seat and the distal seat have a maximum ± 0.001 inch thickness tolerance; the gate has a maximum ± 0.001 inch thickness tolerance; and a seat pocket length from the proximal valve body face to the distal valve body face has a maximum ± 0.002 inch thickness tolerance [the device of the combination of Taylor in view of Meek fails to disclose the specific tolerances as claimed, however, the Federal Circuit has 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 patentably distinct from the prior art device [see MPEP 2144.04(IV)(A)]. Additionally, notice that the applicant does not discloses in the specification the criticality of said tolerance but merely mentions them as exemplary embodiments. As such, it would have been obvious to one of ordinary skill in the art at the time that the invention was effectively filed to modify the tolerances of the device of the combination of Taylor in view of Meek to be within any desired appropriate tolerance such as those claimed, since the device of the combination would work appropriately within the claimed tolerance range].
Claim(s) 5-7 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taylor US-3871616 in view of Meek US-20120292550 as applied to the claims above, and further in view of Castleman US-20100052267.
Regarding claims 5-7 and 10, the device of the combination of Taylor in view of Meek fails to disclose the limitation of the seals being unidirectional seals or bidirectional seal array comprising a first and second unidirectional seals with hat rings as claimed. However, bidirectional seal assemblies arranged in a similar manner as applicant’s invention are well-known in the art.
Castleman US-20100052267 teaches in at least Fig. 1 of a bidirectional seal assembly 10 comprising a sealing component 12 having seal lips 22 on each side of the seal component forming a pair of unidirectional seals 22, wherein the sealing lips 22 are biased into sealing engagement via a spring/energizer 24 and are further supported by hat rings 16 with internal passage 26. These types of bidirectional seals are an improvement over conventional O-ring type seals in that bidirectional seals not only provide sealing due to their resiliency but provide a reliable sealing force due to the spring/energizer providing an initial biasing force on the seal lips 22 that is supported via the hat rings, but also provides a dynamic sealing function wherein fluid acting on the inner radial portion of the lips 22 aids in further energizing the seal lips into sealing engagement with its surroundings.
It would have been obvious to one of ordinary skill in the art at the time that the invention was effectively filed to modify/replace the conventional O-ring seals 36 (see Fig. 1 of Taylor) of the device of the combination of Taylor in view of Meek to be bidirectional seal assemblies 10 similar to the one as taught by Castleman comprising a sealing component 12 having seal lips 22 on each side of the seal component forming a pair of unidirectional seals 22, wherein the sealing lips 22 are biased into sealing engagement via a spring/energizer 24 and are further supported by hat rings 16 with internal passage 26 since such a modification improvement over conventional O-ring type seals in that bidirectional seals not only provide sealing due to their resiliency but provide a reliable sealing force due to the spring/energizer providing an initial biasing force on the seal lips 22 that is supported via the hat rings, but also provides a dynamic sealing function wherein fluid pressure acting on the inner radial portion of the lips 22 aids in further energizing the seal lips into sealing engagement with its surroundings.
As such, the device of the combination of Taylor US-3871616 in view of Meek US-20120292550 and Castleman US-20100052267 teaches the limitations of:
---Claim 5. The gate valve of claim 1, wherein the proximal axial seal comprises a first proximal unidirectional seal and the distal axial seal comprises a first distal unidirectional seal (see seals 36 of Taylor which are modified/replace to be bi-directional seal assemblies 10 similar to those as taught by Castleman which includes sealing lips 22 which acts as an unidirectional seal).
---Claim 6. The gate valve of claim 1, wherein the proximal axial seal is a bi-directional seal assembly comprising a first proximal unidirectional seal with a first proximal hat ring and a second proximal unidirectional seal with a second proximal hat ring; and the distal axial seal is a bi-directional seal assembly comprising a first distal unidirectional seal with a first distal hat ring and a second distal unidirectional seal with a second distal hat ring (see seals 36 of Taylor which are modified/replace to be bi-directional seal assemblies 10 similar to those as taught by Castleman which includes two pairs of opposite facing sealing lips 22 which acts as unidirectional seals and each seal is supported by a spring/energizer 24 and a hat ring 16 with an internal passage 26 similar to applicant’s invention).
---Claim 7. The gate valve of claim 1, wherein the proximal axial seal is a bi-directional seal assembly comprising a first proximal unidirectional seal with a first proximal hat ring and a second proximal unidirectional seal with a second proximal hat ring; a first passage through the first proximal hat ring between the proximal annular groove and the first proximal unidirectional seal; a second passage through the second proximal hat ring between the proximal annular groove and the second proximal unidirectional seal; the distal axial seal is a bi-directional seal assembly comprising a first distal unidirectional seal with a first distal hat ring and a second distal unidirectional seal with a second distal hat ring; a first passage through the first distal hat ring between the distal annular groove and the first distal unidirectional seal; and a second passage through the second distal hat ring between the distal annular groove and the second distal unidirectional seal (see seals 36 of Taylor which are modified/replace to be bi-directional seal assemblies 10 similar to those as taught by Castleman which includes two pairs of opposite facing sealing lips 22 which acts as unidirectional seals and each seal is supported by a spring/energizer 24 and a hat ring 16 with an internal passage 26 similar to applicant’s invention).
---Claim 10. A seat (see either one of seat assembly 32 of Taylor as modified by Meek and Castleman above) comprising: a seat (seat 32 of Taylor as modified by Meek and Castleman above), the seat having a first seat face (the gate facing side of seat 32 of Taylor) and a radial outer surface (the radial outer surface of the seat 32 of Taylor), wherein the seat is adapted for fitment with a gate valve (gate 60 of Taylor); wherein the seat has a plurality of slots (see the plurality of annular and/or radial shallow grooves/slots 9 as taught by Meek machined on the rearward side of seats) machined to span radially on the seat to an annual groove (see the annular groove that holds seal 36 of Taylor which in turned is modified/replaced to be bidirectional seal assembly 10 similar to the ones as taught by Castleman including sealing lips 22 which acts as unidirectional seals and each seal is supported by a spring/energizer 24 and a hat ring 16 with an internal passage 26 similar to applicant’s invention) on an outer diameter of the seat; and a hat ring (see the bidirectional seal assembly 10 of Castleman which replaces the seal 36 of Taylor and includes hat ring 16) removably disposed in the annular groove (see at least Fig. 1 of Taylor, Figs. 2-3 of Meek and Fig. 1 of Castleman).
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.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent Hovarth US-12110979.
Although the claims at issue are not identical, they are not patentably distinct from each other because the device of the claim 7 of the patent either explicitly or implicitly anticipates all the limitations of the present application and/or any missing structure or detail would be obvious over the cited prior art. Notice that claim 9 broadly generally requires a seat for a gate valve, wherein the seat has a plurality of conduits extending through the seat and an annular groove and a hat ring removably disposed in the annular groove. At least claim 7 of Hovarth requires in greater detail at least: a gate valve, a valve body, proximal/distal channels, a gate, proximal and distal seats, proximal and distal annular grooves, proximal and distal axial seals, wherein the proximal/distal axial seal comprises first and second unidirectional seals with hat rings and a proximal and a distal conduit extending though the proximal/distal seat between the proximal/distal channel and the proximal/distal annular groove. Notice that the difference between claim 9 of the application and claim 7 of Horvath is that the Horvath patent includes greater details of the seat and only positively claims “a conduit” (singular but does not discourage the existence of others) whereas claim 9 requires a plurality of conduits and that the hat ring is removable. However, the Federal Court has held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced (In reHarza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960); MPEP 2144.04 VI B) and if it were considered desirable for any reason to obtain access to a portion of a second component of the prior art to which a first component is applied, it would be obvious to make the first component removable for that purpose (In reDulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) ; MPEP 2144.04 V C). Furthermore, at least prior art teaches: Hulsey US-3497177 teaches of the use of multiple conduits 38/138 on the seat that fluidly connect the channel to the annular groove allowing for a greater amount of fluid to affect the various portions of the seat assembly; and Castleman US-20100052267 teaching of seal assemblies including back-to-back unidirectional lip seals 22 with hat rings 14 that provide an improved dynamic seal capable of being energized by fluid pressure acting on the lip seals with the seals not being fixed structures and allowing removability from its enclosure. As such, it would have been obvious to one of ordinary skill in the art to modify the device of claim 7 of the Horvath patent to include a plurality of conduits extending through the seat and the annular groove in a similar manner as the singular conduit of Horvath and as mentioned by the Federal Court and/or as taught by Hulsey since additional conduits allow for more fluid communication between the channels and the annular groove to affect the seat assembly and it would have been obvious to one of ordinary skill in the art to allow the proximal and/or distal seal assemblies (which includes unidirectional seals and hat rings) to be separable/removable from the annular groove of the seat in a similar manner as mentioned by the Federal Court and/or Castleman since this allows for easier maintenance of the seat assembly as compared to an integral or fixed seal assembly which would require full replacement of the seat assembly.
Conclusion
The prior/relevant art made of record and is considered pertinent to applicant's disclosure is as follows:
---References A (relevant but not considered “prior art”): Horvath US-12110979.
---References B (prior art u-shaped/unidirectional seals): Ramirez US-4706970, Hopkins US-4592558, Castleman US-20100052267.
---References C (prior art gate valves and their seat assemblies): Kalimuthu US-11435001, Moseley US-11174958, Sundararajan US-9885420; Valera US-11199270, Al-Jarallah US-11047485, Chen US-10072763, Williams US-4643395, Oliver US-4577834, Manson US-10794496, Koricanek US-11767918, Mullins US-11725738, McGuire US-11572956, McEnvoy US-11448324, Ungchusri US-10995863, Lah US-10683941, Scott US-10378659, Atencio US-9850740, Sundararajan US-9453578, Kahn US-9206910, DeOcampo US-9091351, Dhawan US-8672295, Comeaux US-8662473, Parks US-8327866, Lam US-7562859, Chatufale US-7004452, Sundararajan US-6966537, Armstrong US-6454015, Chatufale US-6279875, Beson US-5624101, Craven US-5415378, Roberson US-5192051, Parks US-5090661, Meyer US-4878651, Baugh US-4824074, Bunch US-4741509, Tipton US-440381, Taylor US-3871616, Wolfe US-20120318528, Fenton US-20120080634, Gavela US-11796069, Scattini US-10281047, Ricard US-9915359, Hunter US-9759334, McEvoy US-9261196, Phillips US-8403296, Lam US-7306201, Chatufale US-6664572, Puranik US-6260822, Williams US-5762320, Dyer US-5201872, Haynes US-5029812, Stroud US-4971098, Ali US-4645179, Nelson US-4625942, Tort US-4531710, Kim US-4364544, Alaniz US-4083376, Morrison US-4068821, Morrison US-4067542, Grove US-3972507, Grove US-3890991, Houlgrave US-3827673, Grove US-3765440, Grove US-3765647, Fowler US-3749357, Fowler US-3696831, Bowden US-3667727, Hulsey US-3497177, Kee US-3401915, Yancey US-3347261, Bolling US-3321176, Jackson US-3181552, Estes US-3078865, Meek US-20120292550 and Jaspar FR-2568972.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID COLON-MORALES, whose telephone number 571-270-1741 and fax number is 571-270-2741. If the applicant has authorized internet communications via the filling of form PTO/SB/439, the examiner can be reached via email at david.colon-morales@uspto.gov , email communication is not permitted if the applicant has not filed an authorization for internet communication (see MPEP 502.03 for more details on internet communications). The examiner can normally be reached on Monday-Friday (7:30AM-3:30PM EST).
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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisors can be reached by phone. KENNETH RINEHART can be reached at 571-272-4881 or CRAIG SCHNEIDER can be reached at 571-272-3607. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAVID COLON-MORALES/Primary Examiner, Art Unit 3753