DETAILED ACTION
Claims 1 and 3 were filed on 06/04/2026. Claim 2 was 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 .
Response to Arguments
Applicant states that the drawing objection is overcome because claim 2 was canceled (see Remarks filed 06/04/2026 on page 3). However, the subject matter of claim 2 (i.e., the grounding line unit) was added into claim 1. Therefore, a drawing objection remains.
With regard to the 35 USC 112 rejection of claim 2, Applicant states that the rejection is overcome because claim 2 has been canceled. However, the subject matter of claim 2 has been added into claim 1, necessitating a new 35 USC 112 rejection.
With regard to the rejection of Claims 1-2 over JPH08-219325 (“Kitz Corp”) in view of JPS1128325 (“Panasonic”), Applicant contends that the amendment “wherein the stem unit is configured to connect to a grounding line unit to make the grounding of the static electricity generated in the flow passage possible” overcomes the rejection (see Remarks filed 06/04/2026 on pages 4-6). Applicant argues that the spring 10 between the ball 3 and stem 4 of Kitz Corp can partially remove static electricity (see Remarks at page 6). However, even some partial removal of static electricity meets the broad claim recitation of “to make the grounding of the static electricity generated in the flow passage possible.” Furthermore, Kitz Corp even states that since “static electricity is discharged in the ball valve body, combustible fluid flowing the in the ball valve body is not ignited” (see Abstract); thus making grounding in the flow passage possible. The rejection is maintained.
The rejection is made FINAL.
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 grounding line unit (claim 1) 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: grounding line unit 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.
The specification is silent as to the structure of the grounding line unit. The specification only states that the grounding line unit may be connected to the stem unit, but does not provide a description of the structure or show it in the drawings (see Specification at page 7, line 17: “grounding line unit (not illustrated)”).
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 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.
Claim limitation “grounding line unit” in claim 1 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification is silent as to the structure of the grounding line unit. The specification only states that the grounding line unit may be connected to the stem unit, but does not provide a description of the structure or show it in the drawings (Specification at page 7, line 17: “grounding line unit (not illustrated)”). Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
Claim 1 (as far as it is definite and understood) is rejected under 35 U.S.C. 103 as being unpatentable over JPH08-219325 (“Kitz Corp”) (cited on IDS dated 02/09/2026; Translation included) in view of JPS1-128325 (“Panasonic”) (cited on IDS dated 02/09/2026; Translation included).
With regard to claim 1, Kitz Corp discloses a ball valve (1) with an antistatic function (“anti-static ball valve” para [0001]), the ball valve comprising: a cap unit (2a) and a body unit (2b) coupled to each other (coupled together via bolt shown in Fig 1, but not labeled) to provide a flow passage of a fluid (see annotated Fig 1); a ball unit (3) provided on the flow passage of the fluid to control a flow of the fluid by rotation (“rotate a ball 3” para [0014]); a handle unit (9, para [0015]) providing an external force for the rotation of the ball unit (3); a stem unit (4) connecting the ball unit (3) and the handle unit (9) to transmit the external force provided by the handle unit (9) to the ball unit (3) (paras [0014] [0015]); and the ball unit (3) and the stem unit (4) are made of metal for grounding of the static electricity generated in the flow passage (“ball 3, and stem 4 are all made of metals” para [0019]). The phrase: “for grounding of the static electricity generated in the flow passage” is a statement of intended use and not given patentable weight (intended use of an apparatus does not differentiate the apparatus claim from the prior art. See MPEP 2114). Kitz Corp further discloses that the stem unit (4) is configured to connect to a grounding line unit (spring 10) connected to make the grounding of the static electricity generated in the flow passage possible (see para [0021]). Furthermore, Kitz Corp even states that since “static electricity is discharged in the ball valve body, combustible fluid flowing the in the ball valve body is not ignited” (see Abstract); thus making grounding in the flow passage possible).
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Kitz Corp discloses all the claimed features with the exception of disclosing a first lined unit provided on an inner surface of the cap unit to prevent the cap unit from coming into contact with the fluid and prevent oxidation of the cap unit due to the fluid; and a second lined unit provided on an inner surface of the body unit to prevent the body unit from coming into contact with the fluid and prevent oxidation of the body unit due to the fluid, wherein the first lined unit and the second lined unit are made of fluororesin to reduce generation of static electricity due to friction with the fluid.
Panasonic teaches that it is known in the art to modify a ball valve comprising a ball unit (2), handle unit (19), stem unit (6) and cap and body units (10, 10), similar to that of Kitz Corp, to include a first lined unit (11 on left 10) on an inner surface of the cap unit (left 10) to prevent the cap unit from coming into contact with the fluid and prevent oxidation of the cap unit due to the fluid, and a second lined unit (right 11 on right 10) provided on an inner surface of the body unit (right 10) to prevent the body unit from coming into contact with the fluid and prevent oxidation of the body unit (right 10) due to the fluid, wherein the first lined unit (left 11) and second lined unit (right 11) are made of fluororesin (see Translation at page 2, lines 9-10).
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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 first lined unit and second lined unit made of fluororesin, such as taught by Panasonic, to the body unit and cap unit of Kitz Corp, for the purpose of preventing unwanted corrosion (see Panasonic Translation at page 2, lines 9-10), which would also reduce generation of static electricity due to friction with the fluid as it makes for a smoother surface.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over PH08-219325 (“Kitz Corp”) (cited on IDS dated 02/09/2026; Translation included) in view of JPS1-128325 (“Panasonic”) (cited on IDS dated 02/09/2026; Translation included) as applied to claim 1 above, and further in view of JP 2019108953 (“Shirase”).
With regard to claim 3, Kitz Corp (as modified by Panasonic above) discloses a seat ring unit (5) provided between the ball unit (3) and the first lined unit (11 in Panasonic) to prevent the fluid from flowing toward the stem unit (4) in a case in which the fluid passes through a fluid hole of the ball unit (3).
Kitz Corp discloses all the claimed features with the exception of disclosing the seat ring unit provides a space due to non-contact between surfaces in contact with the ball unit to allow the fluid to reside in the space even when the fluid permeates through one of the surfaces.
Shirase teaches that it is known in the art to modify a ball valve to include a ball unit (40) and seat ring (20), similar to that of Kitz Corp, to include seat ring unit provides a space (“LLC” in Fig 3B) due to non-contact between surfaces (seat ring surface 22 and ball surface 42) in contact with the ball unit (40) to allow the fluid to reside in the space even when the fluid permeates through one of the surfaces (“possible to store LLC (fluid) in the clearance” – para [0025]).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to utilize a seat ring unit that provides a space, as taught by Shirase, in place of the seat ring unit of Kitz Corp since the seat ring units are known equivalents and the use of which would be known to one of ordinary skill in the art. Furthermore, Shirase teaches that the use of the seat ring unit with a space provides a more durable valve device that can withstand long term use (para [0031]).
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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.
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 supervisors can be reached by phone. Craig Schneider can be reached at 571-272-60073607 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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/JESSICA CAHILL/Primary Examiner, Art Unit 3753
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