DETAILED ACTION
This action is in response to the preliminary amendment dated 1/8/2025. Claims 1-52 and 54-100 have been canceled. Claims 101-118 are newly added. Presently, claims 53 and 101-118 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 .
Information Disclosure Statement
The information disclosure statement filed 1/8/2025 is acknowledged and has been considered by the examiner.
Drawings
The drawings were received on 1/8/2025. These drawings are acceptable.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 53 and 101-114 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5, 6 and 8-11 of U.S. Patent No. 12,222,039. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 2, 5, 6 and 8-11 of U.S. Patent No. 12,222,039 “anticipates” Application claims 53 and 101-114. Accordingly, Application claims 53 and 101-114 are not patentably distinct from U.S. Patent No. 12,222,039 claims 1, 2, 5, 6 and 8-11.
It is apparent that the more specific Patent claim 1 encompasses Application claim 53. Following the rationale of In re Goodman cited in the preceding paragraph, here applicant has once been granted a patent containing a claim for a specific or narrower invention, Applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer. Note that since Application claim 53 is anticipated by Patent claim 1 and since anticipation is the epitome of obviousness, then Application claim 53 is obvious over Patent claim 1.
Similarly, Application claims 101-114 are rejected on the grounds of non-statutory double patenting as being unpatentable over Patent claims 1, 2, 5, 6 and 8-11.
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) 53, 101-105, 108 and 114 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fukano et al. (US 7712484).
Regarding claim 53, the Fukano et al. reference discloses a valve assembly, the valve assembly comprising:
a body (considered the combination of 18 and 38), the body comprising an inlet (at the supply port 16) and an outlet (30), a flow path extending between the inlet and the outlet (it is considered that the flow path extends from the inlet to the outlet as depicted in figure 2);
a seat (52) located in the flow path;
a closure member (66) configured to engage the seat and obstruct the flow path (see figure 1 for the closure member 66 engaging the valve seat 52 to obstruct the flow path);
an actuator assembly (it is considered that the piston 62 and seal 78 constitute an actuator assembly) coupled to the closure member (through the stem 22) to move the closure member from a closed state (considered the position depicted in figure 1) which obstructs the flow path to an open state (considered the position depicted in figure 2) which permits fluid flow;
a radial flow guide (see “radial flow guide” in the annotated figure 1 below) located in the flow path; and
a longitudinal axis (see “longitudinal axis” in the annotated figure 1 below) extending through the seat, the closure member, and the radial flow guide.
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In regards to claim 101, the Fukano et al. reference discloses wherein the closure member comprises a diaphragm (96) and a needle (98).
In regards to claim 102, the Fukano et al. reference discloses wherein the closure member comprises a fixed portion (94) and a movable portion (100, 98), the fixed portion engaging the radial flow guide (see figure 1 for the fixed portion 94 contacting the top of the radial flow guide) and the movable portion engaging the seat (see figure 1 for the tip 98 engaging the valve seat 52).
In regards to claim 103, the Fukano et al. reference discloses wherein the flow path comprises a first volume (see “first volume” in the annotated figure 1 below) extending from the inlet of the body to the seat, the first volume defined by the body, the seat, and the closure member.
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In regards to claim 104, the Fukano et al. reference discloses wherein the flow path further comprises a second volume (see “second volume” in the annotated figure 1 above) extending from the seat to the outlet of the body, the second volume defined by the body, the seat, and the closure member.
In regards to claim 105, the Fukano et al. reference discloses wherein the radial flow guide divides the first volume into an outer chamber (see “outer chamber” in the annotated figure 1 above) and an inner chamber (see “inner chamber” in the annotated figure 1 above), a plurality of flow passages extending from the outer chamber to the inner chamber (it is considered that the various flow passages that lead from the outer chamber to the inner chamber through the openings of the radial flow guide constitutes a plurality of flow passages).
In regards to claim 108, the Fukano et al. reference discloses wherein the closure member comprises a fixed portion (94) and a movable portion (96, 98), the movable portion comprising a diaphragm (96) and a needle (98), the needle fixed to the diaphragm (see figure 1).
In regards to claim 114, the Fukano et al. reference discloses wherein the seat (52) is integral with the body (18).
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 non-obviousness.
Claim(s) 106 and 107 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukano et al. (US 7712484) in view of Zecchi et al. (US 7748401).
In regards to claim 106, the Fukano et al. reference does not expressly disclose wherein the plurality of flow passages are defined by the seat and a plurality of castellations formed into the radial flow guide.
However, the Zecchi et al. reference teaches a valve assembly having a valve seat (7) that is detachable from a radial flow guide (cylindrical liner 13) that defines a plurality of flow passages between the seat and a plurality of castellations (see “castellations” in the annotated figure 10 below) formed into the radial flow guide.
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The substitution of one known element (the plurality of flow passages being defined by the seat and a plurality of castellations as shown in Zecchi et al.) for another (the plurality of flow passages as shown in Fukano et al.) would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art since the substitution of the plurality of flow passages being defined by the seat and a plurality of castellations as shown in Zecchi et al. would have yielded predictable results, namely, a manner in which to replace the seat when desired without needing to replace the remaining structure defining the plurality of flow passages of Fukano et al.
In regards to claim 107, the Fukano et al. reference does not expressly disclose wherein the radial flow guide extends from an upper surface toa lower surface along the longitudinal axis of the valve assembly, the radial flow guide comprising a plurality of castellations formed in the lower surface.
However, the Zecchi et al. reference teaches a valve assembly having a valve seat (7) that is detachable from a radial flow guide (cylindrical liner 13) that extends from an upper surface (see “upper surface” in the annotated figure 10 below) and a lower surface (see “lower surface” in the annotated figure 10 below) along the longitudinal axis of the valve assembly, the radial flow guide comprising a plurality of castellations (see “castellations” in the annotated figure 10 below) formed in the lower surface.
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The substitution of one known element (the radial flow guide extends from an upper surface toa lower surface along the longitudinal axis of the valve assembly, the radial flow guide comprising a plurality of castellations formed in the lower surface as shown in Zecchi et al.) for another (the radial flow guide as shown in Fukano et al.) would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art since the substitution of the plurality of flow passages being defined by the seat and a plurality of castellations as shown in Zecchi et al. would have yielded predictable results, namely, a manner in which to replace the seat when desired without needing to replace the remaining structure defining the plurality of flow passages of Fukano et al.
Claim(s) 109-113 and 115-118 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fukano et al. (US 7712484) in view of Defenbaugh (US 2014314).
In regards to claim 109, the Fukano et al. reference discloses wherein the closure member comprises a diaphragm (96) and a needle (98), the needle having a top end (considered the end proximate the threads 90) and a bottom end (considered the end proximate the valve seat 52), the longitudinal axis of the valve assembly extending from the top end to the bottom end.
The Fukano et al. reference does not disclose wherein the needle comprises a cylindrical portion and a grooved portion, the grooved portion extending from the bottom end to the cylindrical portion, and the grooved portion comprising a plurality of grooves.
However, the Defenbaugh reference teaches a valve assembly having a needle (12) that includes a top end (at the end 18), a bottom end (it is considered that the bottom end faces toward the opening in the tube 9 as depicted in figure 1 ), a cylindrical portion (it is considered that the cylindrical portion extends from the tip of the groove 22 to the surface 18 as depicted in figure 1) and a grooved portion (considered the portion of the needle 12 that includes the grooves 22) wherein the grooved portion extends from the bottom end to the cylindrical portion (see figure 2) and wherein the grooved portion comprises a plurality of grooves (see the grooves at 22 as depicted in figure 2) in order to provide a means for readily adjusting the amount of restriction placed on the fluid so that the proper proportion may be delivered (page 1, lines 16-26).
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 design the needle of the Fukano et al. reference with a cylindrical portion and a grooved portion having a plurality of grooves as taught by Defenbaugh reference wherein the groove portion extends from the bottom portion to the cylindrical portion in order to provide a means for readily adjusting the amount of restriction placed on the fluid so that the proper proportion may be delivered through the valve assembly.
In regards to claim 110, the Defenbaugh reference of the combination of the Fukano et al. reference and the Defenbaugh reference discloses wherein the cylindrical portion comprises a first diameter and the grooved portion comprises a second diameter, the first and second diameters being equal (Defenbaugh: see figure 1 and figure 2).
In regards to claim 111, the Defenbaugh reference of the combination of the Fukano et al. reference and the Defenbaugh reference discloses wherein the plurality of grooves (Defenbaugh: 22) of the grooved portion are circumferentially spaced about the longitudinal axis (Defenbaugh: see figure 2 and figure 3).
In regards to claim 112, the Defenbaugh reference of the combination of the Fukano et al. reference and the Defenbaugh reference discloses wherein the plurality of grooves (Defenbaugh: 22) are equally spaced about the longitudinal axis (Defenbaugh: see figure 2 and figure 3).
In regards to claim 113, the Defenbaugh reference of the combination of the Fukano et al. reference and the Defenbaugh reference discloses wherein each of the plurality of grooves (Defenbaugh: 22) comprise a bottom surface (Defenbaugh: it is considered that the surface at the intersection of the sloped surfaces defining each groove 22 constitutes the bottom surface), the bottom surface having a radial distance from the longitudinal axis that increases with increasing distance from the bottom end of the needle (Defenbaugh: see figure 2).
Regarding claim 115, the Fukano et al. reference discloses a valve assembly, the valve assembly comprising:
a body (considered the combination of 18 and 38), comprising:
an inlet (at the supply port 16);
an outlet (30); and
a flow path extending between the inlet and the outlet (it is considered that the flow path extends from the inlet to the outlet as depicted in figure 2);
a seat (52) defining a part of the flow path;
a closure member (66), comprising:
a diaphragm (96); and
a needle (98) attached to the diaphragm, the needle comprising:
a top end (considered the end proximate the threads 90);
a bottom end (considered the end proximate the valve seat 52);
an actuator (it is considered that the piston 62 and seal 78 constitute an actuator) operable to move the closure member between a closed state (considered the position depicted in figure 1) in which the needle sealingly engages the seat and obstructs the flow path and an open state (considered the position depicted in figure 2) in which the needle is disengaged from the seat;
a radial flow guide (see “radial flow guide” in the annotated figure 1 below) comprising a plurality of radial openings that define a part of the flow path.
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The Fukano et al. reference does not disclose wherein the needle comprises an ungrooved portion and a grooved portion, a grooved portion intermediate the bottom end and the ungrooved portion, wherein the grooved portion comprising a plurality of grooves.
However, the Defenbaugh reference teaches a valve assembly having a needle (12) that includes a top end (at the end 18), a bottom end (it is considered that the bottom end faces toward the opening in the tube 9 as depicted in figure 1 ), an ungrooved portion (it is considered that the ungrooved portion extends from the tip of the groove 22 to the surface 18 as depicted in figure 1) and a grooved portion (considered the portion of the needle 12 that includes the grooves 22) wherein the grooved portion extends from the bottom end to the ungrooved portion (see figure 2) and wherein the grooved portion comprises a plurality of grooves (see the grooves at 22 as depicted in figure 2) in order to provide a means for readily adjusting the amount of restriction placed on the fluid so that the proper proportion may be delivered (page 1, lines 16-26).
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 design the needle of the Fukano et al. reference with an ungrooved portion and a grooved portion having a plurality of grooves as taught by Defenbaugh reference wherein the groove portion extends from the bottom portion to the ungrooved portion in order to provide a means for readily adjusting the amount of restriction placed on the fluid so that the proper proportion may be delivered through the valve assembly.
It is considered that the recitation of “for use with a system for processing articles” is a recitation of the intended use of the valve assembly. 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 116, the Fukano et al. reference of the combination of the Fukano et al. reference and the Defenbaugh reference discloses wherein the seat (Fukano et al.: 52) is integral with the body (Fukano et al.: 18).
Regarding claim 117, the Fukano et al. reference discloses a valve assembly, the valve assembly comprising:
a body (considered the combination of 18 and 38), comprising:
an inlet (at the supply port 16);
an outlet (30); and
a flow path extending between the inlet and the outlet (it is considered that the flow path extends from the inlet to the outlet as depicted in figure 2);
a seat (52) comprising a seat aperture that defines a part of the flow path;
a closure member (66), comprising:
a seal (diaphragm 96); and
a valve element (needle 98) extending from the seal (see figure 1);
an actuator (it is considered that the piston 62 and seal 78 constitute an actuator) operable to move the closure member between a closed state (considered the position depicted in figure 1) in which the valve element is sealingly engaged the seat and obstructs the flow path and an open state (considered the position depicted in figure 2) in which the valve element is positioned relative to the seat;
a radial flow guide (see “radial flow guide” in the annotated figure 1 below) comprising a plurality of radial openings that define a part of the flow path.
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The Fukano et al. reference does not disclose wherein valve element comprises a first portion and a grooved portion.
However, the Defenbaugh reference teaches a valve assembly having a valve element (12) that a first portion (it is considered that the first portion extends from the tip of the groove 22 to the surface 18 as depicted in figure 1) and a grooved portion (considered the portion of the needle 12 that includes the grooves 22) in order to provide a means for readily adjusting the amount of restriction placed on the fluid so that the proper proportion may be delivered (page 1, lines 16-26).
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 design the valve element of the Fukano et al. reference with a first portion and a grooved portion as taught by Defenbaugh reference in order to provide a means for readily adjusting the amount of restriction placed on the fluid so that the proper proportion may be delivered through the valve assembly.
It is considered that the recitation of “for use with a system for processing articles” is a recitation of the intended use of the valve assembly. 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.
It is considered that the recitation of “such that a gas can flow through the seat aperture” is a recitation of the intended fluid for the valve assembly.
It would have been obvious to one of ordinary skill in the art at the time the claimed invention was made to utilized a gas through the valve assembly, since the patented structure is capable of retaining such a fluid (i.e., a gas). Selecting a specific fluid to transmit through the valve assembly would amount to a recitation of the intended use of the patented invention, without resulting in any structural difference between the claimed invention and the structure disclosed by the combination of the Fukano et al. reference and the Defenbaugh reference, and therefore fails to patentably distinguish the claimed invention from the prior art. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458,459 (CCPA 1963).
In regards to claim 118, the Fukano et al. reference of the combination of the Fukano et al. reference and the Defenbaugh reference discloses wherein the seat (Fukano et al.: 52) is integral with the body (Fukano et al.: 18).
Conclusion
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 9:00 am to 5:30 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