DETAILED ACTION
This action is in response to the amendment dated 4/16/2026. Claims 1-13 are currently amended. Claims 14 and 15 are newly added. No claims have been canceled. Presently, claims 1-15 are pending.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments, see the Claim Objections section on page 11 of the response dated 4/16/2026, with respect to the objections to claims noted in the Office action dated 3/6/2026 have been fully considered and are persuasive. The objections to the claims noted in the Office action dated 3/6/2026 have been withdrawn.
Applicant’s arguments, see the 35 USC 112(b) Rejections section on page 12 of the response dated 4/16/2026, with respect to the rejections of claims 1-13 under 35 U.S.C. 112(b) as provided in the Office action dated 3/6/2026 have been fully considered and are persuasive. The rejections of claims 1-13 under 35 U.S.C. 112(b) as provided in the Office action dated 3/6/2026 have been withdrawn.
Applicant's arguments filed 4/16/2026 have been fully considered but they are not persuasive.
Applicant argues the interpretation of the claims under 35 U.S.C. 112(f) in the 35 USC 112(f) treatment section on pages 11-12 of the response dated 4/16/2026.
Applicant argues that the treatment of the claim limitations of “damping element”, “compensating element”, “means of a clamping force” and “means of an electromagnetic drive” under 35 U.S.C. 112(f) should be withdrawn. Applicant argues that one of ordinary skill in the art would understand that the specific examples mentioned in the originally filed disclosure of the instant Application are merely examples and not a comprehensive list.
However, as noted in 35 U.S.C. 112(f), “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”. Further, it is considered that the above mentioned claim limitations are not modified by sufficient structure, material, or acts for performing the claimed functions.
Applicant’s arguments are not persuasive.
Therefore, the examples listed in the originally filed disclosure of the instant Application, and the equivalents thereof, are utilized to provide for the corresponding structure, material, or acts for the above listed claim limitations.
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.
Applicant argues the rejections of claims 1-13 under 35 U.S.C. 102(a)(1) as being anticipate by Jabcon (US 6405757) in the 35 U.S.C. 102(a)(1) rejections section on pages 12-13 of the response dated 4/16/2026.
Applicant argues that the Jabcon reference does not disclose or suggest a piston having a through-channel containing a damping element arranged within the piston itself, let alone a configuration in which such an internal damping element provides the impact-mitigating function at both axial ends of the piston.
However, it is considered that the Jabcon reference discloses:
a piston (26) having two end-face regions (see “first end-face region” and “second end-face region” in the annotated figure 5 below) and a second channel (see “second channel” in the annotated figure 5 below) extending completely through the piston between the two end-face regions of the piston (see figure 5);
wherein the damping element is structured to provide a impact-mitigating function of the piston on the end stop and on the sealing seat when the piston moves within the first channel and approaches the sealing seat and the end stop (it is considered that the elastomeric material 66 constitutes a damping element that would provide a impact-mitigating function based on the elastomeric material and the hardness of the material).
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Therefore, it is considered that the Jabcon reference addresses applicant’s concerns and newly added claim language. Applicant’s arguments are not persuasive.
Since the new grounds of rejection were necessitated by applicant’s amendment, the instant Office action is made final.
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: “damping element” in claim 1, line 10, “compensating element” in claim 4, line 2, “damping element” in claim 5, line 11 and “compensating element” in claim 5, line 13.
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 1 recites the limitation “damping element” in line 10. The recitation of “damping element” is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. A review of the originally filed disclosure dated 10/11/2024 indicates that the recitation of “damping element” includes “a material that is softer than the piston 3, in order to effectively mitigate an impact of the movable piston” (see paragraph [0051] and wherein the “damping element” is received within the channel in the piston (see paragraph [0052]).
Claim 3 recites the limitation “drive means” in line 3. The recitation of “drive means” is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. A review of the originally filed disclosure dated 10/11/2024 indicates that the recitation of “drive means” includes “an electromagnetic drive” (see at least paragraph [0015]).
Claim 4 recites the limitation “compensating element” in line 2. The recitation of “compensating element” is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. A review of the originally filed disclosure dated 10/11/2024 indicates that the recitation of “compensating element” includes a portion of the piston or the sealing seat or the end stop that partially bridges the annular gap (see element 9 in figure 4 and figure 5.
Claim 5 recites the limitation “means of a clamping force” in line 16. The recitation of “means of a clamping force” is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. A review of the originally filed disclosure dated 10/11/2024 indicates that the recitation of “means of a clamping force element” includes “a spring element, preferably a helical spring” (see at least the originally filed claim 10).
Claim 5 recites the limitation “means of an electromagnetic drive” in line 18. The recitation of “means of an electromagnetic drive” is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. A review of the originally filed disclosure dated 10/11/2024 indicates that the recitation of “means of an electromagnetic drive” includes “a coil 4” (see at least paragraph [0054]).
Claim 5 recites the limitation “damping element” in line 11. The recitation of “damping element” is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. A review of the originally filed disclosure dated 10/11/2024 indicates that the recitation of “damping element” includes “a material that is softer than the piston 3, in order to effectively mitigate an impact of the movable piston” (see paragraph [0051] and wherein the “damping element” is received within the channel in the piston (see paragraph [0052]).
Claim 5 recites the limitation “compensating element” in line 13. The recitation of “compensating element” is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. A review of the originally filed disclosure dated 10/11/2024 indicates that the recitation of “compensating element” includes a portion of the piston or the sealing seat or the end stop that partially bridges the annular gap (see element 9 in figure 4 and figure 5.
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) 1-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jabcon (US 6405757).
Regarding claim 1, the Jabcon reference discloses a solenoid valve (10) which comprises at least one fluid actuator (it is considered that the operation of the solenoid valve 10 controls a fluid flow through the housing element 13), the valve comprising:
a base body (it is considered that the combination of 13, 13e and 12 constitutes a base body) having a first channel (see “first channel” in the annotated figure 5 below);
a piston (26) having two end-face regions (see “first end-face region” and “second end-face region” in the annotated figure 5 below) and a second channel (see “second channel” in the annotated figure 5 below) extending completely through the piston between the two end-face regions of the piston (see figure 5);
a sealing seat (108) for interacting with a first of the end-face regions (at the “first end-face region” in the annotated figure 5 below);
an end stop (24) for interacting with a second of the end-face regions (at the “second end-face region” in the annotated figure 5 below); and
a damping element (it is considered that the elastomeric material 66 constitutes a damping element) arranged within the second channel (see figure 5) and extending from the first of the end-face regions to the second of the end-face regions (see figure 5),
wherein the piston is linearly movable within the first channel and is reversibly displaceable within the first channel in a first direction towards the sealing seat (108) and in a second direction towards the end stop (27), the first direction being opposite the second direction,
wherein the damping element is structured to provide a impact-mitigating function of the piston on the end stop and on the sealing seat when the piston moves within the first channel and approaches the sealing seat and the end stop (it is considered that the elastomeric material 66 constitutes a damping element that would provide a impact-mitigating function based on the elastomeric material and the hardness of the material).
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Regarding the recitations of “for a seat comfort system” and “which is equipped with such a seat comfort system”, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of preforming the intended use, then it meets the claim.
In regards to claim 2, the Jabcon reference discloses at least one end-side portion of the damping element (66) that protrudes relative to at least one of the end-face regions of the piston so as to form an annular gap (it is considered that the spacing surrounding the piston within the base body constitutes an annular gap) spacing the piston from the sealing seat (108) in the closed position (see the position depicted in figure 5) and away from the end stop (24) in the open position (considered when the piston is translated in the vertical position from the positioned depicted in figure 5 in which the end-face region 70 is in contact with the seat of the end stop 24).
In regards to claim 3, the Jabcon reference discloses wherein the piston is reversibly displaceable within the first channel by a drive means (it is considered that the operation of the electromagnetic drive having a solenoid coil 22 constitutes a “drive means” against a clamping force (considered the force provided by the spring 44) in the direction of the end stop for reaching an open position of the piston and wherein the clamping force biases the piston in the direction of the sealing seat (108) for reaching a closed position.
In regards to claim 4, the Jabcon reference discloses at least one compensating element (it is considered that the extensions 92 of the element 56 constitutes at least one compensating element) structured to partially bridge the annular gap, such that, with respect to a longitudinal direction of the piston (26), a length of a portion (considered the length that each of the end face regions 68 and 70 extends from the associated end faces of the piston 26) of the damping element that protrudes relative to the at least one of the end-face regions of the piston is less than a width (considered the length extensions of the of the portions 92 away from the surface on which the seat 108 is located) of the in particular associated compensating element.
Regarding claim 5, the Jabcon reference discloses a solenoid valve (10) that comprises at least one fluid actuator (it is considered that the operation of the solenoid valve 10 controls a fluid flow through the housing element 13), the valve comprising:
a base body (it is considered that the combination of 13, 13e and 12 constitutes a base body) having a first channel (see “first channel” in the annotated figure 5 below);
a piston (26) having two sides in a longitudinal direction (X) of the piston, at least one end-face region (see “first end-face region” and “second end-face region” in the annotated figure 5 below) and a second channel (see “second channel” in the annotated figure 5 below) extending completely through the piston in the longitudinal direction (X) of the piston (see figure 5);
a sealing seat (108) for interacting with a first of the two sides of the piston (at the “first end-face region” in the annotated figure 5 below);
an end stop (24) for interacting with a second of the two sides of the piston (at the “second end-face region” in the annotated figure 5 below); and
a damping element (it is considered that the elastomeric material 66 constitutes a damping element) arranged within the second channel (see figure 5) and extending from a first end of the second channel to a second end of the second channel (see figure 5); and
a compensating element (it is considered that the extensions 92 of the element 56 constitutes at least one compensating element),
wherein the piston is linearly movable within the first channel and is reversibly displaceable within the first channel in a first direction towards the sealing seat (108) by means of a clamping force (it is considered that the spring 44 provides the clamping force) into a closed position pressing the piston against the sealing seat (108) and, for reaching an open position, by means of an electromagnetic drive (it is considered that the solenoid coil 22 constitutes an electromagnetic drive) against the clamping force in the direction towards the end stop (24),
wherein the damping element is structured to provide an impact-mitigating function of the piston on the end stop and on the sealing seat when the piston moves within the first channel and approaches the sealing seat and the end stop (it is considered that the elastomeric material 66 constitutes a damping element that would provide an impact-mitigating function based on the elastomeric material and the hardness of the material),
wherein the damping element protrudes relative to the at least one end-face region of the piston, so as to form an annular gap (it is considered that the spacing surrounding the piston within the base body constitutes an annular gap) spacing the piston in the closed position away from the sealing seat or/and in the open position away from the end stop,
wherein the compensating element is structured to partially bridge the annular gap, such that, with respect to a longitudinal direction of the piston (26), a length of a portion (considered the length that each of the end face regions 68 and 70 extends from the associated end faces of the piston 26) of the damping element protruding relative to the at least one end-face region of the piston is less than a width (considered the length extensions of the of the portions 92 away from the surface on which the seat 108 is located) of the compensating element.
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Regarding the recitations of “for a seat comfort system” and “which is equipped with such a seat comfort system”, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of preforming the intended use, then it meets the claim.
In regards to claim 6, the Jabcon reference discloses wherein at least part of the compensating element is arranged or formed on the sealing seat (on the element 56 that forms the sealing seat 108).
In regards to claim 7, the Jabcon reference discloses wherein the damping element (66) is arranged or formed within the second channel, wherein the protruding portion of the damping element is located outside of the piston (see figure 5).
In regards to claim 8, the Jabcon reference discloses wherein the damping element (66) is made of an elastically hardened and initially shapeless material and is introduced into the second channel (see “second channel” in the annotated figure 5 above) (see at least col. 7, lines 22-43).
In regards to claim 9, the Jabcon reference discloses wherein the compensating element is a one piece component of the sealing seat (element 92 is on the element 56 that forms the sealing seat 108) and made of the same material (see at least figure 5) as the sealing seat.
In regards to claim 10, the Jabcon reference discloses the clamping force acting on the piston is generated by a spring element (44; see figure 5).
In regards to claim 11, the Jabcon reference discloses wherein the piston has two end-face regions (see “first end-face region” and “second end-face region” in the annotated figure 5 above), a first of the end-face regions being located on a first of the two sides of the piston and a second of the end-face regions being located on a second of the two sides of the piston, wherein the second channel (see “second channel” in the annotated figure 5 above) extends through the piston between the two end-face regions, wherein the damping element is arranged within the second channel (see figure 5).
In regards to claim 12, the Jabcon reference discloses wherein the second channel widens toward at least one of the two end-face regions of the piston (see figure 5).
In regards to claim 13, the Jabcon reference discloses wherein the second channel widens toward at least one of the end-face regions of the piston (see figure 5).
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.
Claim(s) 14 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jabcon (US 6405757) in view of Ellison (US 3670274).
In regards to claim 14, the Jabcon reference discloses wherein the piston has two end-face regions (see “first end-face region” and “second end-face region” in the annotated figure 5 above), a first of the end-face regions being located on a first of the two sides of the piston and a second of the end-face regions being located on a second of the two sides of the piston, wherein the second channel (see “second channel” in the annotated figure 5 above) extends through the piston between the two end-face regions.
Firstly, the Jabcon reference does not disclose wherein the piston has an access opening, which is connected to the second channel.
However, the Ellison reference teaches a valve assembly (10) having a piston (70) wherein a channel within the piston is filled a damping material (considered the material of 72, 74) wherein the channel includes an access opening (see “access opening” in the annotated figure below).
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Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to provide the second channel of the Jabcon reference with an access opening as taught by the Ellison reference in order to provide an additional channel to support the damping material within the piston.
Secondly, the combination of the Jabcon reference and the Ellison reference do not expressly disclose the damping material is introduced into the second channel through the access opening as an initially shapeless material.
However, the combination of the Jabcon reference and the Ellison reference discloses wherein the damping material (Jabcon: elastomeric material 66; Ellison: material 72, 74) is inserted and received within the second channel.
“[E]ven 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, it is considered that the combination of the Jabcon reference and the Ellison reference provides the product of a piston having a second channel with an access opening and wherein the damping material is received in both the access opening and the second channel of the piston.
In regards to claim 15, the Jabcon reference of the combination of the Jabcon reference and the Ellison reference discloses wherein the damping element (Jabcon: 66) completely fills the second channel (Jabcon: see figure 5).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bayan et al. (US 5494758) discloses a piston (10) defining a central channel wherein a polymeric material (14) is received to completely fill the central channel.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andrew J. Rost whose telephone number is (571) 272-2711. The examiner can normally be reached on Monday-Friday from 8:00 am to 4:30 pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Craig Schneider can be reached at 571-272-3607 or Kenneth 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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/ANDREW J ROST/Examiner, Art Unit 3753
/CRAIG M SCHNEIDER/Supervisory Patent Examiner, Art Unit 3753
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