DETAILED ACTION
Claims 16-35 were filed with the amendment dated 05/22/2026. Claims 1-15 were canceled.
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 .
Drawings
The drawings were received on 05/22/2026. These drawings are acceptable.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/06/2026 s in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Arguments
Applicant’s arguments, see Remarks and Amendments, filed 05/22/2026, with respect to the rejection(s) of claim(s) 16-22, 25, and 37-34 under 35 USC 102(a)(1) as being anticipated by U.S. Pat. No. 2,669,252 (“Farris”) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of U.S. Pat. No. 2,880,751 (“Tobis”) in view of GB 708265 (‘India Rubber”). Tobis discloses a disc guide with a disc guide aperture, as set forth below. The rejection is made FINAL.
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.
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 16, 17, 22, 24, 25, 27, 29, 30, 31, and 34 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. No. 2,880,751 (“Tobis”) in view of GB 708265 (“India Rubber”).
With regard to claim 16, Tobis discloses a method of retrofitting a valve (Fig 2) (method is inherent in apparatus disclosed in Fig 2), the method comprising: providing a diaphragm assembly including a disc guide (28, Fig 2, col. 4, lines 16-26), a bonnet adapter (62), and a (bellows 58), the disc guide (28) including a disc-guide aperture (56) to permit fluid communication through the disc guide (28) (see Fig 2); and installing the diaphragm assembly between a bonnet portion (4) and a valve body portion (2) of the valve by: clamping the bonnet adapter (62) between the (bellows 58) and the bonnet portion (4) (see fig 2); and clamping an outer edge of the bellows 58 between the disc guide (56) and the bonnet adapter (62) (see fig 2).
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Tobis discloses all the claimed features with the exception of disclosing a diaphragm. Tobis discloses a bellows (58).
India Rubber discloses a safety relief valve, similar to the safety relief valve of Tobis, and teaches that it is known in the art to replace a bellows with a diaphragm (see Abstract; “The bellows may be replaced by a diaphragm”).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to replace the bellows of Tobis with a diaphragm, such as taught by India Rubber, because the fluid control assemblies (diaphragm and bellows) are known equivalents and the use of which would be known to one of ordinary skill in the art (see India Rubber at Abstract).
With regard to claim 17, Tobis discloses arranging a disc holder (20) through a portion of the disc guide (28), the disc holder (20) being configured to move relative to an inlet nozzle (6) of the valve to permit or restrict flow from the inlet nozzle (6) to an outlet of the valve (see annotated Fig 2).
With regard to claim 22, Tobis (as modified above) discloses forming, via installation of the diaphragm assembly (bellows 58 replaced by diaphragm of India Rubber), a diaphragm chamber (chamber above bellows 58 in Tobis, see annotated fig 2) between the diaphragm (bellows 58) and the bonnet portion (4) of the valve (see annotated Fig 2).
With regard to claim 24, Tobis, as modified by India Rubber above, before installing the diaphragm assembly, removing a bellows from within the valve (bellows 58 of Tobis is substituted with diaphragm of India Rubber, see Abstract of India Rubber).
With regard to claim 25, Tobis (as modified above) discloses that the diaphragm (bellows 58 in Tobis) is installed on an opposite side of the disc guide (28) from an inlet nozzle (6) of the valve (diaphragm/bellows 58 is at top of disc guide 28, and inlet nozzle below/bottom of disc guide 28, see Fig 2).
With regard to claim 27, Tobis (as modified above) discloses that the diaphragm chamber (chamber above 58, see annotated Fig 2) is fluidly isolated from an inlet nozzle (6) of the valve (isolated by the bellows 58/diaphragm).
With regard to claim 29, Tobis discloses that the valve (Fig 2) is a pressure relief valve (col. 1, line 15).
With regard to claim 30, Tobis discloses diaphragm assembly (Fig 2) for retrofitting a valve. The phrase “for retrofitting a valve” is a statement of intended use and the preamble and not given patentable weight (intended use of an apparatus does not differentiate the apparatus claim from the prior art. See MPEP 2114). The diaphragm assembly comprises: a disc guide (28, Fig 2, col. 4, lines 16-26), the disc guide (28) including a disc-guide aperture (56) to permit fluid communication through the disc guide (28) (see Fig 2); a bonnet adapter (62); and a bellows (58); the diaphragm assembly configured to be installed between a bonnet portion (4) and a valve body portion (2) of the valve by: clamping the bonnet adapter (62) between the bellows (58) and the bonnet portion (4); and clamping an outer edge of the diaphragm (outer edge of bellows 58) between the disc guide (28) and the bonnet adapter (62) (see Fig 2).
Tobis discloses all the claimed features with the exception of disclosing a diaphragm. Tobis discloses a bellows (58).
India Rubber discloses a safety relief valve, similar to the safety relief valve of Tobis, and teaches that it is known in the art to replace a bellows with a diaphragm (see Abstract; “The bellows may be replaced by a diaphragm”).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to replace the bellows of Tobis with a diaphragm, such as taught by India Rubber, because the fluid control assemblies (diaphragm and bellows) are known equivalents and the use of which would be known to one of ordinary skill in the art (see India Rubber at Abstract).
With regard to claim 31, Tobis discloses a disc holder (20) arranged through a portion of the disc guide (28), the disc holder (20) being configured to move relative to an inlet nozzle (6) of the valve to permit or restrict flow from the inlet nozzle (6) to an outlet of the valve (see annotated Fig 2).
With regard to claim 34, Tobis (as modified above) discloses a diaphragm chamber (chamber above bellows 58) formed between the diaphragm (bellows 58 in Tobis) and the bonnet portion (4) of the valve (see annotated Fig 2).
Claims 18-21, 26, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. No. 2,880,751 (“Tobis”) in view of GB 708265 (“India Rubber”) as applied to claims 16 and 30 above, and further in view of U.S. Pat. No. 2,669,252 (“Farris”).
With regard to claim 18, Tobis (as modified by India Rubber) discloses all the claimed features with the exception of disclosing clamping a central portion of the diaphragm between a piston plate arranged around the disc holder and a spacer arranged around the disc holder.
Tobis (as modified by India Rubber to replace a bellows 58 with a diaphragm) discloses that a central portion of the diaphragm is arranged around the disc holder (20).
Farris teaches that it is known in the art to modify a diaphragm assembly with a diaphragm (20) and disc holder (27) to include a diaphragm attachment assembly that includes clamping a central portion of the diaphragm (20) between a piston plate (plate 36) arranged around the disc holder (27 and a spacer (37) arranged around the disc holder (28) (see col. 4, lines 16-24 and Fig 2 of Farris), along with a fastener (75).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to clamp a central portion of the diaphragm of (Tobis/India Rubber) between a piston plate and a spacer by utilizing a diaphragm attachment assembly such as taught by Farris for the purpose of providing a mechanism to secure the diaphragm to the disc holder so that the diaphragm and disc spacer move together (see Fig 2 of Farris and see also col. 4, lines 16-24).
With regard to claim 19, the combination of Tobis/India Rubber/Farris discloses advancing a fastener (nut 75; col. 5, lines 25-26 of Farris) along the disc holder (20 of Tobis, 27 of Farris)to urge the piston plate (36 of Farris) toward the spacer (37 of Farris); and clamping the central portion of the diaphragm (bellows 58 of Tobis, 20 of Farris) between the piston plate (36) and the spacer (37) to secure the central portion of the diaphragm to the disc holder (27 of Farris; see Fig 2 of Farris).
With regard to claim 20, the combination of Tobis/India Rubber/Farris discloses that the diaphragm (bellows 58 of Tobis, diaphragm 20 of India Rubber) is flexible and wherein the central portion of the diaphragm moves with the disc holder (20 of Tobis) (diaphragm must be flexible to move).
With regard to claim 21, the combination of Tobis/India Rubber/Farris discloses that the piston plate (36 of Farris) limits deformation of the central portion of the diaphragm (limits deformation because the plate 36 prevents deformation of the diaphragm at the location 36 is touching, see Fig 2 of Farris).
With regard to claim 26, the combination discloses all the claimed features with the exception of disclosing the piston plate (36 of Farris) has a diameter that is larger than a diameter of the spacer (37 of Farris).
It would have been obvious at the time the invention was made to a person having ordinary skill in the art to modify the diameter of the piston plate to be any suitable size, such as larger than a diameter of the spacer because a change in size is generally recognized as being within the level of ordinary skill in the art. The Federal Circuit has also held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (see MPEP 2144.04).
With regard to claim 32, Tobis (as modified by India Rubber) discloses all the claimed features with the exception of disclosing clamping a central portion of the diaphragm between a piston plate arranged around the disc holder and a spacer arranged around the disc holder.
Tobis (as modified by India Rubber to replace a bellows 58 with a diaphragm) discloses that a central portion of the diaphragm is arranged around the disc holder (20).
Farris teaches that it is known in the art to modify a diaphragm assembly with a diaphragm (20) and disc holder (27) to include a diaphragm attachment assembly that includes clamping a central portion of the diaphragm (20) between a piston plate (plate 36) arranged around the disc holder (27 and a spacer (37) arranged around the disc holder (28) (see col. 4, lines 16-24 and Fig 2 of Farris), along with a fastener (75).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to clamp a central portion of the diaphragm of (Tobis/India Rubber) between a piston plate and a spacer by utilizing a diaphragm attachment assembly such as taught by Farris for the purpose of providing a mechanism to secure the diaphragm to the disc holder so that the diaphragm and disc spacer move together (see Fig 2 of Farris and see also col. 4, lines 16-24).
Claims 23 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. No. 2,880,751 (“Tobis”) in view of GB 708265 (“India Rubber”) as applied to claims 22 and 34 above, and further in view of U.S. Pat. Pub. No. 2020/0271236 (“Meshaikhis”).
With regard to claim 23, the combination of Tobis and India Rubber discloses all the claimed features with the exception of disclosing installing a pressure sensor in fluid communication with the diaphragm chamber to monitor pressure in the diaphragm chamber.
Meshaikhis teaches that it is known in the art to modify a pressure relief valve, similar to that of Tobis, to include a pressure sensor (242 via vent 218) installed in fluid communication with a chamber (chamber above 226/234) to monitor the pressure in the chamber (see paras [0027] [0029]).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to add a pressure sensor, such as taught by Meshaikhis, in the diaphragm chamber of Tobis for the purpose of providing an indication of the status of the valve (see para [0027] of Meshaikhis) (see para [0027] of Meshaikhis: "The pressure at the bonnet vent 218 provides an indication of the status of the pressure relief valve").
With regard to claim 35, the combination of Tobis and India Rubber discloses all the claimed features with the exception of disclosing a pressure sensor in fluid communication with the diaphragm chamber to monitor pressure in the diaphragm chamber.
Meshaikhis teaches that it is known in the art to modify a pressure relief valve, similar to that of Farris, to include a pressure sensor (242 via vent 218) in fluid communication with a chamber (chamber above 226/234) to monitor pressure in the chamber (see paras [0027] [0029]).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to add a pressure sensor, such as taught by Meshaikhis, in the diaphragm chamber of Tobis, for the purpose of providing an indication of the status of the valve (see para [0027] of Meshaikhis: "The pressure at the bonnet vent 218 provides an indication of the status of the pressure relief valve").
Allowable Subject Matter
Claims 28 and 33 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including 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: the prior art fails to disclose or render obvious “the diaphragm includes an annular section that extends in an axial direction away from the disc guide and is positioned, in a radial direction, between the outer edge and a central portion of the diaphragm” (claim 28 and similarly in claim 33) in combination with the other limitations set forth in the independent claims.
The closest prior art of references of record are U.S. Pat. No. 2,880,751 (“Tobis”) and U.S. Pat. No. 2,669,252 (“Farris”).
Farris discloses a diaphragm assembly for a valve. However, Farris does not disclose a disc guide with a disc-guide aperture as claimed. It would not have been obvious to modify Farris to add a disc guide aperture without improperly changing the principle of operation of Farris or without improper hindsight reasoning.
Tobis discloses that the bellows follows the disc guide (28) in an axial direction. Modify the bellows to be a diaphragm would continue to have the diaphragm follow the disc guide in an axial direction. Thus, the diaphragm cannot have an annular section that extends in an axial direction away from the disc guide. It would not have been obvious to modify Tobis to arrive at the claimed invention without improperly changing the principle of operation of Tobis or without improper hindsight reasoning.
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 JESSICA CAHILL whose telephone number is (571)270-5219. The examiner can normally be reached Mon-Fri: 6:30 to 3:00.
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/JESSICA CAHILL/Primary Examiner, Art Unit 3753
