DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 1 Oct 2024 was filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Cite #1 under US Patents has not been considered because it is an erroneous duplicate of Cite #2.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 13 and 15 from Figure 1 and 1129b in Figure 9D.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “104” has been used to designate both “a first longitudinal extent” in ¶ 62 and Figure 8 and “a seat” in ¶ 71 and Figures 8 and 10A-10E.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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.
Specification
The disclosure is objected to because of the following informalities:
In ¶ 25, line 8 “the traveling valve 90” should likely read “the traveling valve assembly 90”.
Throughout the specification end 115a is alternately referred to as the first end, lower end or the downhole end. Consider amending for clarity.
Throughout the specification end 115b is alternatively referred to as the second end, the upper end or the uphole end. Consider amending for clarity.
In ¶ 34, line 1 “structure 160” should likely read “structure 150”.
In ¶ 35, line 5 “metallurgical securement 150” should likely read “metallurgical securement 160”.
In ¶ 38, line 2 “the tapered surface and sidewall 112, 114” should likely read “the tapered surface and sidewall 124, 114”.
In ¶ 38, line 3 “the flow passage 112” should likely read “the flow passage 111”.
In ¶ 41, line 5 “all for flow” should likely read “allow for flow”.
In ¶ 45, lines 3-4, in two instances “the ribs 120” should likely read “the ribs 126”.
In ¶ 49, line 3 “a ball passage 125” should likely read “a ball passage 127”.
In ¶ 55, lines 2 and 5 “Block 180” should likely read “Block 218”.
In ¶ 56, line 1 “securing step 212-214” should likely read “securing step 212, 214” since there is no step 213.
In ¶ 59, line 3 “the end 125 of the insert” should likely read “the end of the insert”.
In ¶ 61, line 4 “the insert’s lower end 126” should likely read “the insert’s lower end 115a”.
In ¶ 61, line 5 “The adapter 140” should likely read “The adapter 102”.
In ¶ 70, line 10 “a seal 170” should likely read “a seal 172”.
In ¶ 73, lines 5 and 7 “tapered sidewall 112” should likely read tapered sidewall 114”.
Appropriate correction is required.
The use of the term “Stay Brite”, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claims 8 and 11 are objected to because of the following informalities:
In Claim 8, lines 5, 7, and 8 “the rails” should likely read “the plurality of rails”.
In Claim 8, line 7 “the exterior of the ring structure” should likely read “an exterior of the ring structure”.
In Claim 8, line 9 “each rail” should likely read “each rail of the plurality of rails”.
In Claim 11, line 1 “the rails” should likely read “the plurality of rails”.
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.
Claim 9 is 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 9 recites the limitation "the second extent of the tapered sidewall" in line 2. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, “the second extent of the tapered sidewall” will be interpreted as “second extent of the tapered surface” from Claim 1.
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.
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, 4-5, 8-11 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable as obvious over Ford (US 20100269928) in view of Samayamantula (US 20210270381).
Regarding Claim 1, Ford discloses a valve assembly for a downhole pump (Figures; ¶ 1). The valve assembly comprising:
a housing (12 generally) configured to connect on the downhole pump (¶ 1), the housing having first and second ends (see Annotated Figure A) and defining a first flow passage therethrough (through channel 18), the first flow passage (18) defining a longitudinal sidewall (see Annotated Figure A) transitioned to a tapered sidewall (see Annotated Figure A), the longitudinal sidewall disposed between the first and second ends (see Annotated Figure A), the tapered sidewall disposed between the longitudinal sidewall and the first end (see Annotated Figure A), the tapered sidewall being angled inward from the longitudinal sidewall (see Annotated Figure A);
an insert (30 generally) disposed in the first flow passage of the housing as an assembled arrangement (see Annotated Figure A), the insert having third and fourth ends (see Annotated Figure A) and defining a second flow passage (via 50) allowing for flow therethrough (see Annotated Figure A), the second flow passage defining a ball stop (36) toward the third end (see Annotated Figure A) and defining a ball passage (through 40 shown in Figure 12) toward the fourth end (see Annotated Figure A), an exterior of the insert having a longitudinal surface (see Annotated Figure A) toward the fourth end (see Annotated Figure A) transitioned to a tapered surface (see Annotated Figure A; along 38 as seen in Figure 9; ¶ 39) toward the third end (see Annotated Figure A), the tapered surface being angled inward (see Annotated Figure A; ¶ 39), a first extent of the longitudinal sidewall exposed to the second flow passage of the insert (inherently along 38 as seen in Annotated Figure A), a second extent of the tapered surface of the insert engaged in a loaded engagement against the tapered sidewall of the first flow passage (inherently along the third end portion of 38 as seen in Annotated Figure A by pressing the insert into the housing as discussed in ¶ 38),
a seat (48) disposed in the first flow passage of the housing (Figure 11 within 18) adjacent the fourth end of the insert (see Annotated Figure A); and
a ball (46) disposed in the second flow passage of the insert and trapped between the ball stop and the seat (Figures 11 and 12; ¶ 40),
but fails to expressly disclose where the second extent being greater than the first extent, and
the loaded engagement comprising a shrink fit of the tapered sidewall of the first flow passage against the tapered surface of the insert due to (i) the assembled arrangement being thermally expanded in response to applied heat, and (ii) the tapered sidewall of the housing being thermally compressed against the tapered surface of the insert in response to subsequent cooling of the assembled arrangement after the applied heat.
It would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the longitudinal sidewall and tapered surface of Ford such that the second extent is greater than the first extent since such a modification would have involved a mere change in the size of a component, 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). A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). 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."). In the instant case, the housing and the insert would not operate differently with the claimed first extent and second extent dimensions since the housing and the insert function in the same manner as the inventor’s disclosed housing and insert.
Additionally, Samayamantula teaches a housing (16) and an insert (14) with a loaded engagement comprising a shrink fit (¶ 34) of the tapered sidewall of the first flow passage (at 8; where Ford discloses the sidewall as tapered) against the tapered surface of the insert (at 8; where Ford discloses the surface of the insert as tapered).1
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 system of Ford with the engagement as taught by Samayamantula for the advantage of preventing fluid flow between the insert and the housing.
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Annotated Figure A
Regarding Claim 4, Ford discloses an endpiece (the seat plug of ¶ 32) affixed to the second end of the housing (via 22; ¶ 32) but fails to expressly disclose where the end piece abuts the seat.
Samayamantula teaches a housing (16) and an insert (14) with a second end of the housing (at 26 of 16) and an endpiece (seat plug 22 as taught in ¶ 34) where the endpiece (22) is affixed to the second end of the housing (at 26) and abuts the seat (20; Figure 1).
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 system of Ford with the system as taught by Samayamantula for the advantage of holding the seat in place, as taught by Samayamantula (¶ 34).
Regarding Claim 5, Samayamantula teaches where the loaded engagement comprises an interference fit, in combination with the shrink fit (¶ 6, where a shrink fit is a type of interference fit and therefore the engagement of a shrink fit would provide also an interference fit) against the tapered sidewall of the first flow passage (the tapered sidewall disclosed by Ford in Annotated Figure A) due to the insert being subjected inside the housing to an axial force during the applied heat2.
Regarding Claim 8, Ford discloses where the insert (30 generally) comprises:
a ring structure (40) disposed at the fourth end of the insert (see Annotated Figure A) and defining the ball passage (through 40 shown in Figure 12); and
a plurality of rails (38) extending from the ring structure and converging to the ball stop at the third end (see Annotated Figure A and converging to ball stop 36), the rails being separated by flutes defined in the insert (50), the ball passage and the flutes forming the second flow passage (Figure 12), the exterior of the ring structure and the rails toward the fourth end having the longitudinal surface transitioned to the tapered surface of each of the rails toward the third end (see Annotated Figure A), the tapered surface of each rail being angled inward (see Annotated Figure A; ¶ 39).
Regarding Claim 9, Ford discloses where the first extent of the longitudinal sidewall (inherently along 38 as seen in Annotated Figure A) is exposed via the flutes in the insert (via flutes 50 as seen in Figure 11); and
wherein the second extent of the tapered sidewall (inherently along the third end portion of 38 as seen in Annotated Figure A) is exposed via the flutes in the insert (via flutes 50 as seen in Figure 11).
Regarding Claim 10, Ford discloses where the insert comprises a total longitudinal extent from the fourth end to the third end (see Annotated Figure A) along a longitudinal axis of the insert (see Annotated Figure A); but fails to expressly disclose wherein a longitudinal extent of the tapered sidewall exposed via the flutes in the insert accounts for at least half of the total longitudinal extent of the insert.
It would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the longitudinal sidewall and tapered surface of Ford such that a longitudinal extent of the tapered sidewall exposed via the flutes in the insert accounts for at least half of the total longitudinal extent of the insert since such a modification would have involved a mere change in the size of a component, 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). A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). 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."). In the instant case, the housing and the insert would not operate differently with the claimed total extent dimensions since the housing and the insert function in the same manner as the inventor’s disclosed housing and insert.
Regarding Claim 11, Ford discloses where each of the rails (38) of the insert (30) is skewed at an angle relative to a longitudinal axis of the insert (Figure 11; with the longitudinal axis up and down along the housing in the orientation of Annotated Figure A).
Regarding Claim 13, Ford discloses a downhole pump for a reciprocating pump system (¶ 2) having a rod string disposed in a tubing string (¶ 3), the downhole pump comprising:
a barrel disposed in the tubing string and having a standing valve assembly (¶ 3); and
a plunger coupling to the rod string and movably disposed in the barrel (¶ 3), the plunger having a traveling valve assembly (¶ 3), wherein at least one of the standing valve assembly and the traveling valve assembly (¶ 6) comprises the valve assembly according to claim 1 (as discussed above as obvious over Ford in view of Samayamantula).
Claim(s) 2-3, 6 and 14-20 is/are rejected under 35 U.S.C. 103 as being unpatentable as obvious over Ford (US 20100269928) in view of Samayamantula (US 20210270381) in further view of Stachowiak Jr et al (US 20190353003).
Regarding Claim 2, Ford, as modified by Samayamantula teach all essential elements of the current invention as discussed above but fails to expressly teach where the longitudinal surface of the insert is floated unshouldered adjacent the longitudinal sidewall of the first flow passage; and wherein the valve assembly further comprises a metallurgical securement securing, in response to the applied heat, a first portion of the longitudinal surface of the insert to a second portion of the longitudinal sidewall of the first flow passage.
Stachowiak Jr et al teach a valve assembly (Figure 11D) with a housing (110) and an insert (120) where the longitudinal surface of the insert (the outside surface of insert 120 adjacent lower end 126 as shown in Figure 11D) is floated unshouldered adjacent the longitudinal sidewall of the first flow passage (¶ 95 and shown without any shoulder in Figure 11D); and wherein the valve assembly further comprises a metallurgical securement (151; ¶ 96 and 112) securing, in response to the applied heat, a first portion of the longitudinal surface of the insert to a second portion of the longitudinal sidewall of the first flow passage (¶ 112; Figure 11D).
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 system of Ford, as modified by Samayamantula with the assembly as taught by Stachowiak Jr et al for the advantage of providing an attachment solution without the added step of machining or forming a shoulder into the flow passage, thereby making manufacture easier and more cost efficient.
Regarding Claim 3, Stachowiak Jr et al teach where the metallurgical securement (151) comprises a brazing material (¶ 108) brazed in an annular space between the first portion of the longitudinal surface and the second portion of the longitudinal sidewall (Figure 11D; ¶ 108).
Regarding Claim 6, Ford discloses where the housing (12 generally) comprises a first material at least subject to thermal expansion and thermal compression (where the housing when subjected to any temperature change would be subject to thermal expansion and compression as the temperature changes); but fails to expressly disclose where the insert comprises a second material being different from the first material.
Stachowiak Jr et al teach a valve assembly (Figure 11D) with a housing (110) and an insert (120) where the insert comprises a second material being different from the first material of the housing (¶ 113).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the application to modify the materials of the housing and insert of Ford to be different than each other since selection of a known material on the basis of its suitability for an intended use involves only routine skill in the art. The motivation for doing so would be to provide a commonly used material that is inexpensive and durable.
Regarding Claim 14, Ford discloses a valve assembly for a downhole pump (Figures; ¶ 1). The valve assembly comprising:
a housing (12 generally) configured to connect on the downhole pump (¶ 1), the housing having first and second ends (see Annotated Figure A) and defining a first flow passage therethrough (through channel 18), the first flow passage (18) defining a longitudinal sidewall (see Annotated Figure A) and a tapered sidewall (see Annotated Figure A), the longitudinal sidewall disposed between the first and second ends (see Annotated Figure A), the tapered sidewall disposed between the longitudinal sidewall and the first end (see Annotated Figure A) and tapering inward from the longitudinal sidewall (see Annotated Figure A);
an insert (30 generally) disposed in the housing (see Annotated Figure A), the insert having third and fourth ends (see Annotated Figure A) allowing for flow therethrough (see Annotated Figure A), the third end (see Annotated Figure A) having a tapered surface (see Annotated Figure A) and defining a ball stop (36), the fourth end having a longitudinal surface (see Annotated Figure A) and defining a ball passage (through 40 shown in Figure 12),
but fails to expressly disclose the tapered sidewall of the flow passage being shrunk fit against the tapered surface, the longitudinal surface floated unshouldered adjacent the longitudinal sidewall; and a metallurgical securement securing a first portion of the longitudinal surface of the insert to a second portion of the longitudinal sidewall of the first flow passage.
Samayamantula teaches a housing (16) and an insert (14) with a loaded engagement comprising a shrink fit (¶ 34) of the tapered sidewall of the first flow passage (at 8; where Ford discloses the sidewall as tapered) against the tapered surface of the insert (at 8; where Ford discloses the surface of the insert as tapered).
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 system of Ford with the engagement as taught by Samayamantula for the advantage of preventing fluid flow between the insert and the housing.
Stachowiak Jr et al teach a valve assembly (Figure 11D) with a housing (110) and an insert (120) where the longitudinal surface of the insert (the outside surface of insert 120 adjacent lower end 126 as shown in Figure 11D) is floated unshouldered adjacent the longitudinal sidewall of the first flow passage (¶ 95 and shown without any shoulder in Figure 11D); and wherein the valve assembly further comprises a metallurgical securement (151; ¶ 96 and 112) securing, in response to the applied heat, a first portion of the longitudinal surface of the insert to a second portion of the longitudinal sidewall of the first flow passage (¶ 112; Figure 11D).
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 system of Ford, as modified by Samayamantula with the assembly as taught by Stachowiak Jr et al for the advantage of providing an attachment solution without the added step of machining or forming a shoulder into the flow passage, thereby making manufacture easier and more cost efficient.
Regarding Claim 15, Ford discloses a ball seat (48) disposed in the first flow passage adjacent the fourth end having the ball passage (through 40 as seen in Annotated Figure A); and
a ball (46) movably disposed in the first flow passage of the housing (see Annotated Figure A), engageable with the ball stop of the insert (Figure 12), passable at least partially through the ball passage of the insert (Figure 11 through 40), and seatable in the ball seat (¶ 38).
Regarding Claim 16, Stachowiak Jr et al teach where the metallurgical securement (151) comprises a brazing material (¶ 108) sealing an annular space between the first portion of the longitudinal surface and the second portion of the longitudinal sidewall (Figure 11D; ¶ 108).
Regarding Claim 17, Ford discloses a downhole pump for a reciprocating pump system (¶ 2) having a rod string disposed in a tubing string (¶ 3), the downhole pump comprising:
a barrel disposed in the tubing string and having a standing valve assembly (¶ 3); and
a plunger coupling to the rod string and movably disposed in the barrel (¶ 3), the plunger having a traveling valve assembly (¶ 3), wherein at least one of the standing valve assembly and the traveling valve assembly (¶ 6) comprises the valve assembly according to claim 14 (as discussed above as obvious over Ford in view of Samayamantula, in further view of Stachowiak Jr et al).
Regarding Claim 18, Ford discloses downhole pump for a reciprocating pump system (¶ 2) having a rod string disposed in a tubing string (¶ 3), the downhole pump comprising a valve assembly (Figures),
The examiner notes that the following limitations “assembled according to a method comprising” and everything that follows renders this claim a product by process claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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 of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113.
Therefore, Ford discloses the structure of:
a housing (12 generally) having first and second ends (see Annotated Figure A) and defining a first flow passage therethrough (through channel 18), the first flow passage (18) defining a longitudinal sidewall (see Annotated Figure A) transitioned to a tapered sidewall (see Annotated Figure A), the longitudinal sidewall disposed between the first and second ends (see Annotated Figure A), the tapered sidewall disposed between the longitudinal sidewall and the first end (see Annotated Figure A), the tapered sidewall being angled inward from the longitudinal sidewall (see Annotated Figure A);
an insert having third and fourth ends (see Annotated Figure A) and defining a second flow passage (via 50) allowing for flow therethrough (see Annotated Figure A), the second flow passage defining a ball stop (36) toward the third end (see Annotated Figure A) and defining a ball passage (through 40 shown in Figure 12) toward the fourth end (see Annotated Figure A), an exterior of the insert having a longitudinal surface (see Annotated Figure A) toward the fourth end (see Annotated Figure A) transitioned to a tapered surface (see Annotated Figure A; along 38 as seen in Figure 9; ¶ 39) toward the third end (see Annotated Figure A), the tapered surface being angled inward (see Annotated Figure A; ¶ 39), a first extent of the longitudinal sidewall exposed to the second flow passage of the insert (inherently along 38 as seen in Annotated Figure A), a second extent of the tapered surface of the insert engaged in a loaded engagement against the tapered sidewall of the first flow passage (inherently along the third end portion of 38 as seen in Annotated Figure A by pressing the insert into the housing as discussed in ¶ 38),
a ball seat (48) in the first flow passage of the housing adjacent the fourth end of the insert (see Annotated Figure A), affixing an endpiece (the seat plug of ¶ 32) to the second end of the housing, and abutting the ball seat against the fourth end of the insert (Figure 11),
but fails to expressly disclose floating the longitudinal surface of the insert unshouldered adjacent the longitudinal sidewall of the first flow passage and where the second extent being greater than the first extent, and the loaded engagement comprising a shrink fit of the tapered sidewall of the first flow passage against the tapered surface of the insert.
It would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the longitudinal sidewall and tapered surface of Ford such that the second extent is greater than the first extent since such a modification would have involved a mere change in the size of a component, 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). A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). 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."). In the instant case, the housing and the insert would not operate differently with the claimed first extent and second extent dimensions since the housing and the insert function in the same manner as the inventor’s disclosed housing and insert.
Additionally, Samayamantula teaches a housing (16) and an insert (14) with a loaded engagement comprising a shrink fit (¶ 34) of the tapered sidewall of the first flow passage (at 8; where Ford discloses the sidewall as tapered) against the tapered surface of the insert (at 8; where Ford discloses the surface of the insert as tapered).3
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 system of Ford with the engagement as taught by Samayamantula for the advantage of preventing fluid flow between the insert and the housing.
Stachowiak Jr et al teach a valve assembly (Figure 11D) with a housing (110) and an insert (120) where the longitudinal surface of the insert (the outside surface of insert 120 adjacent lower end 126 as shown in Figure 11D) is floated unshouldered adjacent the longitudinal sidewall of the first flow passage (¶ 95 and shown without any shoulder in Figure 11D).
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 system of Ford, as modified by Samayamantula with the assembly as taught by Stachowiak Jr et al for the advantage of providing an attachment solution without the added step of machining or forming a shoulder into the flow passage, thereby making manufacture easier and more cost efficient.
Regarding Claim 19, Stachowiak Jr et al teach further retaining the insert in the first flow passage by securing a first portion of the longitudinal surface to a second portion of the longitudinal sidewall with a metallurgical securement (¶ 96 and 112; Figure 11D at 151).
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 system of Ford, as modified by Samayamantula with the assembly as taught by Stachowiak Jr et al for the advantage of providing an attachment solution without the added step of machining or forming a shoulder into the flow passage, thereby making manufacture easier and more cost efficient.
Regarding Claim 20, Stachowiak Jr et al teach securing the first portion of the longitudinal surface to the second portion of the longitudinal sidewall with the metallurgical securement (151 in Figure 11C).
The limitation “applying heat to an assembled arrangement of the housing having the insert inserted therein; and brazing a brazing material between the first portion of the longitudinal surface of the insert and the second portion of the longitudinal sidewall of the first flow passage in response to the applied heat; and wherein increasing the loaded engagement of the tapered surface of the insert against the tapered sidewall of the first flow passage by shrink fitting the tapered sidewall of the housing against the tapered surface of the insert comprises using thermal expansion of the assembled arrangement from the applied heat, in combination with subjecting the insert in the housing to an axial force, and followed by thermal compression of the tapered sidewall of the housing against the tapered surface of the insert from subsequent cooling of the assembled arrangement” renders this claim a product by process claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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 of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable as obvious over Ford (US 20100269928) in view of Samayamantula (US 20210270381) in further view of Nehm (US 5195552).
Regarding Claim 7, Ford, as modified by Samayamantula teach all essential elements of the current invention as discussed above but fails to expressly teach a seal sealing between the longitudinal surface and the longitudinal sidewall.
Nehm teaches a valve assembly (Figure 1) with a longitudinal surface (the outside surface of housing 2 shown in Figure 1) and a longitudinal sidewall (the inner wall of the conduit of Col 10, lines 27-30) and a seal (28) sealing between the longitudinal surface and the longitudinal sidewall (Col 10, lines 27-30).
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 assembly of Ford, as modified by Samayamantula with the seal as taught by Nehm for the advantage of providing a fluid tight seal between the longitudinal surface and longitudinal sidewall.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable as obvious over Ford (US 20100269928) in view of Samayamantula (US 20210270381) in further view of Canatella (US 10100940).
Regarding Claim 12, Ford, as modified by Samayamantula teach all essential elements of the current invention as discussed above but fails to expressly teach where the ball passage of the insert defines a flare from the ball passage to the flutes.
Canatella teaches a valve assembly (Figure 4) with an insert (110) with a ball passage (120), where the ball passage of the insert (120) defines a flare (118) from the ball passage to the flutes (from 120 to flutes between rails 130a, 130b or 130c).
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 system of Ford, as modified by Samayamantula with the ball passage as taught by Canatella for the advantage of providing a surface complementary with ball to hold and retain the ball, as taught by Canatella (Col 3, lines 58-67).
Conclusion
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/NICOLE GARDNER/
Examiner, Art Unit 3753
1 The limitation “due to (i) the assembled arrangement being thermally expanded in response to applied heat, and (ii) the tapered sidewall of the housing being thermally compressed against the tapered surface of the insert in response to subsequent cooling of the assembled arrangement after the applied heat.” renders this claim a product by process claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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 of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113.
2 The limitation “due to the insert being subjected inside the housing to an axial force during the applied heat” renders this claim a product by process claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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 of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113.
3 The limitation “due to (i) the assembled arrangement being thermally expanded in response to applied heat, and (ii) the tapered sidewall of the housing being thermally compressed against the tapered surface of the insert in response to subsequent cooling of the assembled arrangement after the applied heat.” renders this claim a product by process claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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 of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113.