Detailed Office Action
The communication dated 6/22/2026 has been entered and fully considered. Claims 22-39 and 41-58 are cancelled. Claims 21 and 40 are withdrawn from examination. Claims 1-21 and 40 remain 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 .
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-20) in the reply filed on 6/22/2026 is acknowledged. The traversal is on the ground(s) that in view of the new amendments of 6/22/2026, the cited prior art in the restriction requirement of 4/22/2026 does not disclose all the shared technical features of Groups I, II, and III. This is not found persuasive because as disclosed below in the 35 USC 103 section, these new technical features are disclosed by new prior arts. Thus, there is a lack of unity of invention between these groups. The requirement is still deemed proper and is therefore made FINAL. Claims 21 and 40 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Groups II and III, there being no allowable generic or linking claim.
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: valve element in claim15.
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 15 has the limitation “valve element”. The Examiner interprets this under 35 U.S.C. 112(f) because (A) the claim uses the placeholder term “element” and (B) the terms “element” is modified by the functional language “valve” and (C) the term “element” is not modified by sufficient structure for performing the function of valving. The Examiner interprets “valve element” as numeral 54 depicted in the instant FIG. 13 and described in [0062] and equivalents thereof.
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 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the dispensing valve" in line 4. There is insufficient antecedent basis for this limitation in the claim. Claims 2-20 are dependent on claim 1 and are rejected as well. For the purpose of examination, the Examiner replaces this limitation with “the dispensing valve unit” that is recited in claim 1, line 3.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over ZAMBRANA (WO-2022146864-A1; of record), hereinafter ZAMBRANA, in view of SMITH (US 5,747,102), hereinafter SMITH. Note that the italicized text below are the instant claims.
Regarding claim 1-4 and 13-17, ZAMBRANA discloses A polymer processing device {[abstract], [0003] note thermoplastic}, comprising:
an extruder unit configured to receive, melt, and mix an adhesive {[0003]-[0004] note thermoplastic reads on the adhesive, also note that adhesive or material worked upon by a device does not limit the device, see MPEP 2115, [abstract] note the screw performs the mixing}.
ZAMBRANA, however, is silent on a positive displacement valve unit that receives the melt. ZAMBRANA, instead, discloses a positive displacement pump unit {[0003]}.
In the same field of endeavor that is related to dispensing viscous material, SMITH discloses and a dispensing valve unit configured to dispense the adhesive onto a substrate {[abstract]},
the dispensing valve unit comprising a positive displacement type valve that provides discrete dispensing of the adhesive, a module body, and a valve stem mounted for movement within the module body {[C2, L65], [C12, L19-22] note drop or discrete, [FIG. 2] note stem or shaft 42 and module body 34/70; note stem 42 moves up or down within the body},
wherein the dispensing valve unit is configured to be implemented as a pneumatic valve, an electrically operated valve, a solenoid operated valve, and/or a hydraulically operated valve (claim 2), wherein the dispensing valve unit is implemented as a pneumatic valve (claim 13) {[C2, L64], [C10, L5-10] note operation of valve by air, thus pneumatic},
wherein the dispensing valve unit is configured to control a flow of the adhesive for dispensing of the adhesive generated by the extruder unit (claim 3), further comprising electrical connections configured to transfer power, data, control, and/or sensor information to or from one or more components of the dispensing valve unit and/or one or more components of the extruder unit (claim 17) {[C8, L27-41] note control mechanism for flow, [FIG. 1] note temperature controller that is a data controller and connection 106/104},
wherein the dispensing valve unit is configured to close and stop a flow of the adhesive generated by the extruder unit (claim 4) {[C8, L26] note closing the passageway},
wherein the dispensing valve unit comprises a supply chamber arranged in the module body (claim 14) {[FIG. 2] 31},
wherein: the dispensing valve unit comprises a valve seat and a valve element; and the valve stem is moved to provide open and closed conditions by a selective application of air pressure to a piston assembly (claim 15) {[FIG. 2] note valve seat 38 and clave element 92, [C10, L5-11] note selective application of air, [C18, L29-30] note air actuated piston},
further comprising an air supply valve configured to supply pressurized air to the dispensing valve unit (claim 16) {[C10, L6-8] note air solenoid or valve 128}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have substituted the positive displacement pump of ZAMBRANA, with the positive displacement valve of SMITH, since it has been held that a simple substitution of one known element for another to obtain predictable results is within the skill of an artisan {see MPEP 2143 (I)(B)}.
Predictable results are obtained because the objective of both SMITH {[C3, L16]} and ZAMBRANA {[0003]} is the precise dispensing of a viscous liquid/melt material on a substrate and the valve of SMITH can substitute the pump of ZAMBRANA for this purpose. Moreover, both SMITH and ZAMBRANA are analogous arts.
Regarding claim 5, modified ZAMBRANA discloses wherein the extruder unit comprises an extruder barrel and an extruder screw {[abstract]}.
Regarding claim 6, modified ZAMBRANA discloses further comprising a manifold comprising one or more conduits configured to guide the adhesive from an outlet of the extruder unit to the dispensing valve unit {[FIG. 7B] note the housing or manifold and the conduit between the barrel and melt pump that is replaced with the valve of SMITH}.
Regarding claim 7, modified ZAMBRANA discloses wherein the extruder unit comprises an outlet at a distal end of the extruder barrel {[FIG. 7B]}.
Regarding claim 8, modified ZAMBRANA discloses wherein the extruder unit comprises one or more heating elements configured to melt the adhesive during a dispensing operation {[FIG. 7A]}.
Regarding claim 9, modified ZAMBRANA discloses wherein the extruder unit comprises an inlet configured to receive the adhesive; and wherein the extruder screw, and/or the extruder barrel are configured to mix and melt the adhesive and provide the adhesive to the dispensing valve unit {[FIG. 7B]}.
Regarding claims 10-11, modified ZAMBRANA discloses wherein the extruder unit comprises a drive mechanism for rotating the extruder screw to move the adhesive through the extruder unit to the dispensing valve unit (claim 10), wherein the drive mechanism comprises a motor (claim 11) {[0009]}.
Regarding claim 11 remaining limitation of “a gearbox”, modified ZAMBRANA teaches using a gear mechanism for the melt pump {[0035]}. Modified ZAMBRANA, however, is silent on a gearbox for the screw motor and driving mechanism.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have used a gearbox or a gear mechanism for the screw driving mechanism of modified ZAMBRANA, since the same inventor teaches this mechanism for another pump.
Regarding claim 12, modified ZAMBRANA discloses wherein the manifold comprises one or more heating elements {[FIG. 7B] note heaters are in the manifold}.
Regarding claim 18, SMITH discloses further comprising a controller configured to provide drive signals to one or more components of the dispensing valve unit and/or one or more components of the extruder unit {[FIG. 1] note control mechanism 48 uses signals form a controller to drive stem or shaft 42 up or down}.
Regarding claims 19 limitation of “wherein the controller is configured to operate the extruder unit to begin operation of the drive mechanism prior to operation of the dispensing valve unit”, and claim 20 limitation of “wherein the controller is configured to operate the extruder unit to begin operation of the drive mechanism and after a time delay begin operation of the dispensing valve unit”, combination of ZAMBRANA and SMITH is explicitly silent on these limitations.
However, and at the effective filing date of instant invention, it would have been obvious to one of ordinary skill in the art to have started the operation of the extruder first, since in the modified device of ZAMBRANA, the pellet material is first sent to the extruder and the positive displacement valve is located downstream of the extruder {[FIG. 7A]} and therefore, it is obvious to start the valve after certain delay time that corresponds to the residence time of the material in the extruder since there is no point in starting the valve when no material is present at the inlet of the valve.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to S. BEHROOZ GHORISHI whose telephone number is (571)272-1373. The examiner can normally be reached Mon-(alt Fri) 7:30-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S. BEHROOZ GHORISHI/ Primary Examiner, Art Unit 1748
Prosecution Insights