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.
Response to Amendment
The Amendment filed on 17 June 2026 has been entered. Claims 1-10 remain pending in the application. Applicant’s amendments to the Claims overcome each and every objection and 112(b) rejection previously set forth in the Non-Final Office Action mailed 26 March 2026.
Specification
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “wherein the main rod and the drive rod are connected by nut-screw assemblies functioning as reversible fastening elements” from Claim 7 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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: “a threaded connection for secure attachment” in claim 2.
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 Objections
Claim 5 is objected to because of the following informalities:
In Claim 5, line 2 “holes arranged at its vertices” should likely read “holes arranged at the lower stabilizer plate’s vertices”.
In Claim 8, line 2 “the associated fastening rod” should likely read “an associated fastening rod”.
In Claim 9, line 2 “wherein the drive bushing is connected to the main rod to permit freedom of rotation around its axis” should likely read “wherein the drive bushing is connected to the main rod to permit freedom of rotation around the drive bushing’s axis”.
In Claim 10, line 1 “wherein the device is adapted to operate valves varying sizes and pressure ratings” should likely read “wherein the device is adapted to operate valves having varying sizes and pressure ratings”, or similar.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 7 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 7 recites the limitation “wherein the main rod and the drive rod are connected by nut-screw assemblies functioning as reversible fastening elements”. This amendment appears to lack support in the application as originally filed and therefore would qualify as new matter. ¶ 32 of the Specification discloses “Connection between the valve's main rod and the device's drive rod is made by means of a set of freely rotating bushings” with ¶ 35 of the Specification disclosing “a drive rod (6) fastened in the center of the upper stabilizing plate (5) by means of a reversible fastening element”.
Therefore, this limitation appears to lack support in the application as originally filed and therefore would qualify as new matter.
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 3-7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3 recites the limitation “wherein the connecting bushing is configured to connect to the drive bushing via a counter nut positioned above the connecting element”. This limitation is unclear because it is unclear if this is the same counter nut of Claim 1, line 17.
Claim 4 recites the limitation "the upper stabilizing plate" in line 2. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the upper stabilizing plate will be interpreted as referring to “an upper stabilizer plate” from Claim 1, line 3.
Claim 4 recites the limitation “wherein the drive rod is mounted to a central portion of the upper stabilizing plate via a reversible fastening element”. This limitation is unclear because it is unclear if the drive rod is mounted by a different reversible fastening element from the fastening element of Claim 1, or if the fastening elements are the same. Since Claim 1 recites “a drive rod fastened to a center of the upper stabilizer plate by means of a reversible fastening element”, the reversible fastening element will be interpreted as being the same.
Claim 5 recites the limitation "the lower stabilizing plate" in line 1. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the lower stabilizing plate will be interpreted as referring to “an lower stabilizer plate” from Claim 1, line 3.
Claim 5 recites the limitation "the upper stabilizing plate" in line 1. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the upper stabilizing plate will be interpreted as referring to “an upper stabilizer plate” from Claim 1, line 3.
Claim 6 recites the limitation "the lower stabilizing plate" in line 1. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the lower stabilizing plate will be interpreted as referring to “an lower stabilizer plate” from Claim 1, line 3.
Claim 6 recites the limitation "the upper stabilizing plate" in line 1. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, the upper stabilizing plate will be interpreted as referring to “an upper stabilizer plate” from Claim 1, line 3.
Claim 7 recites the limitation “wherein the main rod and the drive rod are connected by nut-screw assemblies functioning as reversible fastening elements”. This limitation is unclear because it is unclear how the main rod and the drive rod are connected by nut-screw assemblies as required by the Claim, but also connected via the drive bushing and connecting element as required by Claim 1. Therefore, this limitation is unclear.
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) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bonds et al (US 4436279) in view of Bales Jr et al (US 3448771).
Regarding Claim 1, Bonds et al disclose a device (the device generally in Figure 1 with the embodiment for the connection structure of Figures 6-7) for external actuation of valves with damaged bushing1 comprising:
at least two opposing stabilizer plates (see Annotated Figure A) comprising a lower stabilizer plate (see Annotated Figure A) and an upper stabilizer plate (see Annotated Figure A), wherein the lower stabilizer plate is fastened to the upper stabilizer plate (via the fastening rod of Annotated Figure A);
a plurality of fastening rods (see Annotated Figure A) connected by reversible fastening elements (see Annotated Figure A); and
a drive rod (see Annotated Figure B) fastened to a center of the upper stabilizer plate by means of a reversible fastening element (where piston 54 functions as a reversible fastening element by connecting to the top end of the drive shaft 42 as seen in Figure 1 to center the drive rod within both the chamber 58 and the upper stabilizer plate shown in Annotated Figure A), the drive rod (see Annotated Figure A) comprising an upper portion (upper in the orientation of Annotated Figure A) and a lower portion (see Annotated Figure B);
a main rod (see Annotated Figure B) of a valve (24);
a drive bushing (see Annotated Figure B) coupled to the main rod of the valve (see Annotated Figure B);
a connecting bushing (see Annotated Figure B) coupled to the drive bushing (see Annotated Figure B); and
a connecting element (see Annotated Figure B) coupling the drive rod (see Annotated Figure B) and the connecting bushing (see Annotated Figure B),
wherein the lower portion of the drive rod receives the connecting element between the drive rod and the connecting bushing (see Annotated Figure B),
wherein the drive bushing (see Annotated Figure B) is further coupled to the main rod of the valve via a counter nut (see Annotated Figure B) located above the connecting element (see Annotated Figure B; and via the interaction between 76 and 82),
but fails to expressly disclose where the fastening rods are a plurality of pairs of fastening rods, each pair of fastening rods comprising an adjusting lock.
Bales Jr et al teach a device (Figure 2) with a plurality of pairs of fastening rods (4 shown in Figure 3) where each pair of fastening rods comprising in an adjusting lock (56 and 57 which function to lock the tie rods in place by attachment to cables 57).
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 tie rods of Bonds et al with the adjusting lock as taught by Bales Jr et al for the advantage of providing additional support for the tie rods, as taught by Bales Jr et al (Col 3, lines 39-42).
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Annotated Figure A – Bonds et al
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Annotated Figure B – Bonds et al
Regarding Claim 2, Bonds et al disclose where the connecting element (see Annotated Figure B) between the main rod and the drive bushing comprises a threaded connection for secure attachment (see Annotated Figure B).
Regarding Claim 3, Bonds et al disclose where the connecting bushing (see Annotated Figure B) is configured to connect to the drive bushing via a counter nut positioned above the connecting element (see Annotated Figure B and via 76 and 82).
Regarding Claim 4, Bonds et al disclose where the drive rod (see Annotated Figure B) is mounted to a central portion of the upper stabilizing plate (see Annotated Figure A) via a reversible fastening element where piston 54 functions as a reversible fastening element by connecting to the top end of the drive shaft 42 as seen in Figure 1 to center the drive rod within both the chamber 58 and the upper stabilizer plate shown in Annotated Figure A).
Regarding Claim 5, Bonds et al disclose where the lower stabilizing plate (see Annotated Figure A) is fastened to the upper stabilizing plate through holes (see Annotated Figure A) arranged at its vertices (see Annotated Figure A).
Regarding Claim 6, Bonds et al disclose where the lower stabilizing plate (see Annotated Figure A) is fastened to the upper stabilizing plate (see Annotated Figure A) via the plurality of pairs of fastening rods (see Annotated Figure A with the plurality of pairs taught by Bales Jr et al).
Regarding Claim 7, Bonds et al disclose where the main rod and the drive rod are connected by nut-screw assemblies (74 and 80 which attach each the main rod and the drive rod to the drive bushing and connecting bushing with then connect the main rod to the drive rod) functioning as reversible fastening elements (see Annotated Figure B).
Regarding Claim 8, Bonds et al disclose all essential elements of the current invention as discussed above but fails to expressly disclose where each pair of fastening rods includes a regulating lock that is adjustable along a length of the associated fastening rod to accommodate different valve diameters.
Bales Jr et al teach a device (Figure 2) with a plurality of pairs of fastening rods (4 shown in Figure 3) where each pair of fastening rods includes a regulating lock (the bracket attached to shell 3) that is adjustable along a length of the associated fastening rod to accommodate different valve diameters (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 fastening rods of Bonds et al with the regulating lock as taught by Bales Jr et al for the advantage of providing additional support for the tie rods, as taught by Bales Jr et al (Col 3, lines 39-42).
Regarding Claim 9, Bonds et al disclose where the drive bushing (see Annotated Figure B) is connected to the main rod to permit freedom of rotation around its axis (see Annotated Figure B; where the main rod is permitted to rotated about the interaction of 218 and the drive bushing).
Regarding Claim 10, Bonds et al disclose where the device is adapted to2 operate valves varying sizes and pressure ratings.
Response to Arguments
Applicant's arguments filed 17 June 2026 have been fully considered but they are not persuasive.
Applicant amends Claim 1 and argues that the prior art fails to teach all limitations of the claim as amended. As discussed above, Bonds et al in view of King et al teach all essential elements of the current invention as discussed above.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a universal external device attachable to a range of valve; stabilizer plates and tie rods for external actuation; universal external operation of a damaged valves; the specific purpose of a universal, externally mountable actuation device with the safety and adjustability features required in oil and gas field contexts) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Therefore, these arguments are unpersuasive.
Conclusion
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 NICOLE GARDNER whose telephone number is (571)270-0144. The examiner can normally be reached Monday - Friday 8AM-4PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisors, KENNETH RINEHART (571-272-4881) or CRAIG SCHNEIDER (571-272-3607) can be reached by telephone. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICOLE GARDNER/
Examiner, Art Unit 3753
1 The recitation “for external actuation of valves with damaged bushing” has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
2 It has been held that the recitation that an element is "adapted to" perform a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense. In re Hutchison, 69 USPQ 138.
Prosecution Insights