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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-8) in the reply filed on April 16, 2026, is acknowledged. The traversal is on the ground(s) that the restriction should be withdrawn because all claims now have been amended to depend from claim 1. Applicant’s arguments are found persuasive, and the restriction requirement of February 25, 2026, is now withdrawn.
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. 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.
Claim Objections
Claims 1-3, 5, 8, 9 and 11 are objected to because of the following informalities:
In claim 1, line 2, the recitation “function- and construction” should read –function[[-]] and construction--.
In claim 1, lines 2 and 11-12, all recitations of “the control valve” should read –the modular control valve--.
In claim 1, lines 10 and 15, both recitations of “the control rod body” should read –the elongated control rod body--.
In claim 2, lines 2-3, the recitation “the control rod body” should read –the elongated control rod body--.
In claim 3, line 3, the recitation “the control valve” should read –the modular control valve--.
In claim 5, line 2 and lines 3-4, both recitations of “the control rod body” should read –the elongated control rod body--.
In claim 8, line 4, the recitation “function- and construction” should read –function[[-]] and construction--.
In claim 9, line 4, the recitation “the control valve” should read –the modular control valve--.
In claim 11, line 4, the recitation “the control valve” should read –the modular control valve--.
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 1-23 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.
Regarding claim 1, the phrase “hollow-cylinder-like connecting body,” recited in lines 9-10, renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "hollow-cylinder-like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Similarly, claims 14, 15 and 22 recite the limitation “hollow-cylinder-like connecting body” and are rejected for the same reason as claim 1, above.
Claim 4 recites the limitation “the first shoulder” in line 3; however, the claim is unclear as to if this limitation refers to one or more of the “at least one first shoulder” recited in parent claim 3, line 2, or a different first shoulder altogether.
Similarly, claim 4 recites the limitation “the second shoulder” in line 3; however, the claim is unclear as to if this limitation refers to one ore more of the “at least one second shoulder” recited in claim 4, line 2, or a different second shoulder altogether.
Regarding claim 6, the phrase “fold-like structure,” recited in line 2, renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "fold-like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Claim 15 recites the limitation “a mounting element” in lines 2-3; however, the claim is unclear as to if this recitation refers to the same “mounting element” recited in parent claim 23, line 6, or a different mounting element therefrom.
Claim 20 recites the limitation “the connecting flange receiving opening” in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 22 recites the limitation “the connecting flange receiving opening” in line 2 and lines 5-6. There is insufficient antecedent basis for this limitation in the claim.
Claim 22 recites the limitation “a mounting element” in line 4; however, the claim is unclear as to if this recitation refers to the same “mounting element” recited in parent claim 23, line 6, or a different mounting element therefrom.
Claims 2, 3, 5, 7-13, 16-21 and 23 are rejected because they depend on a rejected claim.
Claim Rejections - 35 USC § 102
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.
Claims 1-5, 8, 11 and 12, as best understood, are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by US12181071 (“Vlassof”).
Regarding claim 1, Vlassof discloses a pre-mountable control rod assembly (see figs. 5 and 6) for providing a modular control valve having a plurality of different valve function- and construction configurations, the control valve being adapted to adjust a process fluid flow of a process plant, the control rod assembly comprising:
an elongated control rod body (120) with a control element sided end section (bottom section, relative to the orientation of fig. 6) to which different control elements (via threaded bottom end of rod 120, relative to the orientation of fig. 6) are attachable, the control elements being configured to realize different process flows;
a connecting flange (138) arranged on a section of the elongated control rod body opposite the control element sided end section, wherein the connecting flange comprises a hollow-cylinder-like connecting body (138) configured to engage and/or connect the control rod body to a coupling structure (148) attachable to a valve housing (112) of the control valve, or a housing cover (150) of the control valve; and
a bellows seal (mainly defined by 126 & 134) that extends at least sectionally between the control element sided end section and the connecting flange, wherein a first end (134) of the bellows seal is directly connected (see fig. 5) to the control rod body and a second end (end adjacent adapter 138) of the bellows seal is directly connected to the connecting flange.
Regarding claim 2, Vlassof discloses the first end (134) of the bellows seal is located at the control element sided end section (male threaded section at right end, relative to the orientation of fig. 5) of the control rod body (120).
Regarding claim 3, Vlassof discloses the connecting flange (138) has at least one first shoulder (shoulder adjacent to packing 146; see fig. 5) configured to engage with the coupling structure or the housing cover (150; see fig. 6) of the control valve.
Regarding claim 4, Vlassof discloses the connecting flange (138) has at least one second shoulder (shoulder abutting housing cover 150 and receiving seal 152; see fig. 6) configured to receive at least one seal (152), wherein the first shoulder adjoins the second shoulder (see fig. 5).
Regarding claim 5, Vlassof discloses the bellows seal (mainly defined by 126 & 134) is, at the first end of the bellows seal, connected to the control rod body (120) in a continuous and/or circumferentially sealing manner in the circumferential direction of the control rod body.
Regarding claim 8, Vlassof discloses an extension (portion extending interiorly of sleeve 2) of the pre-mountable control rod assembly (see fig. 1) is smaller than a diameter of a penetration opening of a mounting flange (148; see fig. 1) and/or one or more insert sleeves attachable or attached to the mounting flange and configured to provide the different valve function- and construction configurations.
Regarding claim 11, Vlassof discloses the coupling structure (148) is configured to receive the pre-mountable control rod assembly (see fig. 6) and attach between the valve housing (112) and the housing cover (150) of the control valve, and wherein the coupling structure comprises:
a hollow-cylindrical base body (148) with a through-opening (opening through which shaft 120 extends), the hollow-cylindrical base body, on a valve housing sided end face, having a projection (see projection on bottom-most portion of member 148 in fig. 6) dimensioned and/or arranged such that, in an assembled state of the coupling structure, the projection projects at least partially into the valve housing.
Regarding claim 12, Vlassof discloses (see fig. 6) a control valve for adjusting a process fluid flow of a process plant, the control valve comprising:
a valve housing (112) with an inlet opening, an outlet opening (right and left openings of housing 112, relative to the orientation of fig. 6), and a passage opening (seat opening) arranged therebetween;
a housing cover (150) arranged opposite the passage opening with a through-opening (opening through which shaft 120 extends); and
a pre-mountable control rod assembly (see fig. 5) and configured to provide the modular control valve with a plurality of different valve function- and construction configurations (via operation of valve shaft 120).
Claims 1-3, 5 and 8, as best understood, are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by US3844307 (“Soury”).
Regarding claim 1, Soury discloses a pre-mountable control rod assembly for providing a modular control valve having a plurality of different valve function- and construction configurations, the control valve being adapted to adjust a process fluid flow of a process plant, the control rod assembly comprising:
an elongated control rod body (6) with a control element sided end section (section receiving control element 5; see fig. 1) to which different control elements (5) are attachable, the control elements being configured to realize different process flows;
a connecting flange (7 & 9) arranged on a section (section distal from control element 5) of the elongated control rod body opposite the control element sided end section, wherein the connecting flange comprises a hollow-cylinder-like connecting body (7 & 9) configured to engage and/or connect the control rod body to a coupling structure (mainly defined by 12 & 14) attachable to a valve housing (1) of the control valve, or a housing cover of the control valve; and
a bellows seal (8) that extends at least sectionally between the control element sided end section and the connecting flange, wherein a first end (end proximal to control element 5) of the bellows seal is directly connected (in a sealing manner; see specification col. 2, line 65, to col. 3, line 2) to the control rod body and a second end (end connected to connecting flange, 7 & 9) of the bellows seal is directly connected to the connecting flange.
Regarding claim 2, Soury discloses the first end (end proximal to control element 5) of the bellows seal (8) is located at the control element sided end section (section receiving control element 5) of the control rod body (6).
Regarding claim 3, Soury discloses the connecting flange (7 & 9) has at least one first shoulder (9) configured to engage with the coupling structure (mainly defined by 12 & 14) or the housing cover of the control valve.
Regarding claim 5, Soury discloses the bellows seal (8) is, at the first end (end proximal control element 5) of the bellows seal, connected to the control rod body (6) in a continuous and/or circumferentially sealing manner (see specification col. 2, line 65, to col. 3, line 2) in the circumferential direction of the control rod body.
Regarding claim 8, Soury discloses an extension (extension of guide 7 & 9) of the pre-mountable control rod assembly is smaller than a diameter of a penetration opening (interior opening extending through threaded flange 12) of a mounting flange (12) and/or one or more insert sleeves (11) attachable or attached to the mounting flange and configured to provide the different valve function- and construction configurations.
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.
Claims 6 and 7, as best understood, are rejected under 35 U.S.C. 103 as being unpatentable over Vlassof, as applied to claim 1 above, in view of US5525047 (“Sternenberg”).
Regarding claims 6 and 7, Vlassof discloses the bellows seal (126 & 134) comprises a fold-like structure (see corrugations in cross-section of fig. 5) having one or more bellows, wherein the bellows seal is configured to have a stroke (displacement of valve control element between fully closed and fully open positions), and the bellows seal produced from and/or comprises metal (see specification col. 3, lines 33-41).
Vlassof is silent to the stroke being in a range of 7.5 to 200 mm or 150 mm to 1200 mm.
However, Sternenberg teaches (see specification col. 5, line 65, to col. 6, line 3) adjusting a range of stroke of a bellows seal by increasing convolutions in the bellows seal, the bellows seal having a stroke range of 0 to 1 ½ inches or a stroke range of 5 to 6 inches.
It would have been obvious to one having ordinary skill in the art at the time of filing of the invention to modify the invention of Vlassof by configuring the bellows seal to have a stroke range of 7.5 to 200 mm or 150 mm to 1200 mm by configuring bellows seal with the necessary number of convolutions, as taught by Sternenberg, to effect a desired predetermined stroke of the valve and since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Furthermore, the instant application lacks the evidence to prove that the range, as claimed in the instant application, is critical. The applicant must prove the criticality of the claimed range, generally by showing that the claimed range achieves unexpected results relative to the prior art range.
Allowable Subject Matter
Claims 9, 10, 13-18 and 20-23 would be allowable if rewritten to overcome the claim objection(s) and/or rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 9, the closest prior art does not disclose or render obvious the pre-mountable control rod assembly, wherein the coupling structure is configured to receive the pre-mountable control rod assembly and attach between the valve housing and the housing cover of the control valve, and wherein the coupling structure comprises: a hollow-cylindrical base body with a through-opening, wherein: the through-opening has a varying internal cross-section that decreases at least sectionally in a direction of a housing cover sided end section of the hollow-cylindrical base body, and the hollow-cylindrical base body has at least one recess on an outside of a housing cover sided end face configured to receive a mounting element, in combination with the limitations of the base claim.
Claim 10 is allowable because it depends on allowable claim 9.
Regarding claim 19, the closest prior art does not disclose or render obvious the method, as best understood, the method including guiding a penetration opening of a mounting flange and/or one or more insert sleeves attachable or attached to the mounting flange through the pre-mountable control rod assembly; and placing a coupling structure on the pre-mountable control rod assembly, in combination with the remainder limitations of the claim and base claim.
Claims 20-22, as best understood, are allowable because they depend on allowable claim 19.
Regarding claim 23, the closest prior art does not disclose or render obvious the method, as best understood, the control valve further comprising: a coupling structure between the valve housing and the housing cover, wherein the coupling structure comprises a hollow-cylindrical base body with a through-opening having a varying internal cross-section that decreases at least sectionally in the direction of a housing cover sided end section of the hollow-cylindrical base body, wherein the hollow-cylindrical base body has at least one recess on an outside of a housing cover sided end face configured to receive a mounting element, in combination with the limitations of the base claim and any intervening claim(s).
Claims 13-18, as best understood, are allowable because they depend on allowable claim 23.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US4687017, US4995589 and US11655898 discloses a lift valve having a bellows seal.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hailey K. Do whose direct telephone number is (571)270-3458 and direct fax number is (571)270-4458. The examiner can normally be reached on Monday-Thursday (8:00AM-5:00PM ET) and Friday (8:00AM-12:00PM ET).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisors, Kenneth Rinehart at 571-272-4881, or Craig M. Schneider at 571-272-3607. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HAILEY K. DO/Primary Examiner, Art Unit 3753
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