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
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 1/24/2025 was filed prior to the mailing date of the mailing of this action. The submission complies with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Drawings
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 valve element is formed of a resin” (proper cross-hatching must be shown, see MPEP 608.02, see 37 CFR 1.84(n) chart IX), must be shown or the feature(s) canceled from the claim(s). New corrected drawings in compliance with 37 CFR 1.84(h) (3) are required in this application because “hatching must be used to indicate section portions of an object...”, applicant' s drawings do not distinguish between material differences such as resin, rubber, and metal. 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 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) 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):
(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), 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 valve element”, in claim 1.
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 intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Objections
Claims 1-3 are objected to because of the following informalities: the limitations, in claim 1, “valve element formed of a material” should be changed to - -valve element comprising a material - -, in order to remove the question of the limitation “formed” as being a method step for the apparatus. In claim 2, “is formed” should be - -is located - -, in claim 3, “is formed of” should be - -comprises - -.
Appropriate correction is required.
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 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) 1-3 are rejected under 35 U.S.C. 102a1 as being anticipated by Wilson (US 1781771).
Regarding claim 1, Wilson discloses a check valve (preamble- see note below) comprising: a flow path member (1) having an upstream opening (the left threaded port), a downstream opening (the right threaded port), and an inner peripheral surface (the inner surface of 1) defining a fluid passage extending from the upstream opening to the downstream opening, the inner peripheral surface having a valve seat surface (surface of 5,5a) and a locking surface (at 5a) located upstream and radially inward of the valve seat surface; and
a valve element (18) disposed in the fluid passage so as to be displaceable between a closed position where the valve element is engaged with the valve seat surface to close the fluid passage and an open position where the valve element is separated from the valve seat surface toward a downstream side to open the fluid passage, the valve element formed of a material with lower rigidity than at least portions of the flow path member where the valve seat surface and the locking surface are formed, wherein the valve element is configured to be displaced, by receiving a force toward an upstream side, from the closed position to a position further upstream (page . 3, lns 66-70) of the closed position while deforming a portion (the outer portion of 18 contacting 5a at the lowered position) of the valve element that is engaged with the valve seat surface, and the valve element that has deformed is engaged with and supported by the locking surface (col. 3, 70-94, the shape of 18 has changed when it is in contact with surface 5a and is therefore considered as being deformed).
With regard to the preamble directed to “a check valve”, a preamble to a claim is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self- contained description of the structure not depending for completeness upon the introductory clause. Clearly, the pending claim 1 does not rely on the preamble for completeness.
See MPEP 2111.02, See also Catalina Mktg. Int’l, 289 F.3d at 808-09, 62 USPQ2d at 1785 ("[C]lear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.…Without such reliance, however, a preamble generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention." Consequently, "preamble language merely extolling benefits or features of the claimed invention does not limit the claim scope without clear reliance on those benefits or features as patentably significant.").
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Regarding claim 2, Wilson discloses that the valve seat surface and the locking surface are inclined radially inward toward the upstream side (toward the left side of the upstream opening), and a transition surface (the surface of the intersecting corner between 5 and 5a) parallel to a longitudinal axis of the fluid passage is formed between the valve seat surface and the locking surface.
Regarding claim 3, Wilson discloses that the valve element is formed of a resin material (“soft-rubber” is considered as being a resin material in the broadest reasonable interpretation in that it is a sticky organic flammable substance), and the flow path member is formed of a metallic material (2 is shown as being cross-hatched as a metal).
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.
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.
The following rejections are given in an alternative manner should the above rejections not be found persuasive.
Claim(s) 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Baranowski Jr (US 3698427) in view of Wilson (US 1781771).
Regarding claim 1, Baranowski Jr discloses a check valve (as shown in Fig. 1-3) comprising: a flow path member (the housing, not numbered, surrounding the valve element 2, as shown in Fig. 3) having an upstream opening (the port surrounding upper stem 1’), a downstream opening (the port, not shown but surrounding 5, col. 2, lns. 62-66, “having openings 5’ for the passage of a fluid”), and an inner peripheral surface (the inner surface of the flow path member) defining a fluid passage extending from the upstream opening to the downstream opening, the inner peripheral surface having a valve seat surface (surface of 6); and a valve element (2) disposed in the fluid passage so as to be displaceable between a closed position (as shown in the figures) where the valve element is engaged with the valve seat surface to close the fluid passage and an open position where the valve element is separated from the valve seat surface toward a downstream side to open the fluid passage, the valve element formed of a material (“PTFE”, col. 2, lns. 30-34) with lower rigidity than at least portions of the flow path member where the valve seat surface (the valve seat being shown as being a metal based on the cross-hatching) is formed, wherein the valve element is configured to be displaced, by receiving a force toward an upstream side (the valve is configured as such with the reaction to the spring 4), from the closed position to a position further upstream (as the valve element is compressed by the spring the valve element cold flows, col. 3, lns. 14-20, thereby being further positioned upstream) of the closed position while deforming a portion (the outer portion of 2 contacting 6) of the valve element that is engaged with the valve seat surface.
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Baranowski Jr is silent to having a locking surface located upstream and radially inward of the valve seat surface, and the valve element formed of a material with lower rigidity than at least portions of the flow path member where the locking surface is formed, and the valve element that has deformed is engaged with and supported by the locking surface.
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Wilson teaches the use of a locking surface (at 5a) located upstream and radially inward of the valve seat surface, and the valve element that has deformed is engaged with and supported by the locking surface (col. 3, 70-94, the shape of 18 has changed when it is in contact with surface 5a and is therefore considered as being deformed), and the valve element formed of a material with lower rigidity than at least portions of the flow path member where the locking surface is formed.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute a valve seat as taught by Wilson for the valve seat in Baranowski Jr.to have a locking surface located upstream and radially inward of the valve seat surface, and the valve element formed of a material with lower rigidity than at least portions of the flow path member where the locking surface is formed, and the valve element that has deformed is engaged with and supported by the locking surface, since it has been held, that an express suggestion to substitute one equivalent component (one valve seat for another where deformation of the valve occurs) or process for another is not necessary to render such substitution obvious. Additionally, the well-known expected outcome of providing a valve seat to effect a sealing surface with a valve that has deformed, would result from the combination.
Regarding claim 2, Wilson discloses that the valve seat surface and the locking surface are inclined radially inward toward the upstream side (toward the left side of the upstream opening), and a transition surface (the intersecting corner between 5 and 5a) parallel to a longitudinal axis of the fluid passage is formed between the valve seat surface and the locking surface.
Regarding claim 3, Baranowski Jr. discloses that the valve element is formed of a resin material (“PTFE” is considered as being a resin material in the broadest reasonable interpretation), and the flow path member is formed of a metallic material (the housing is shown as being cross-hatched as a metal).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Craig Price, whose telephone number is (571)272-2712 or via facsimile (571)273-2712. The examiner can normally be reached on Monday-Friday (8:00AM-4:30PM EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Craig Schneider, can be reached at telephone number 571-272-3607, 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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/CRAIG J PRICE/ Primary Examiner, Art Unit 3753