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 .
Election/Restrictions
Applicant’s election without traverse of Invention I in the reply filed on 07/29/2026 is acknowledged.
Claims 14-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/29/2026.
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 2-13 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.
Regarding claim 2-13, the preamble “the valve” is unclear if applicant intended to further limit “the valve assembly” or the limitation “the valve” that was introduced in claim 1, it appears claims 2-13 are further limiting the disclosed valve assembly and not the claimed valve hence rendering the claims indefinite.
Regarding claim 7, the limitations “the first pocket” and “the second pocket” have insufficient antecedent basis for these limitations in the claim.
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) 1-8, 10, 12-13, and 18-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakano et al. (Pub. No. US 2020/0070069).
Regarding claim 1, Nakano et al. disclose a valve assembly (Figs. 1-13) for a transmission, the valve assembly (10) comprising: a valve body (20) having a bore (23) and a plurality of passages (10a, paragraph 27) fluidly coupled together via the bore (23); a valve (30) axially moveable within the bore (23), wherein moving the valve (30) changes which of the plurality of passages (paragraph 37) are fluidly coupled via the bore (23); a collar (80) positioned within the bore (23); an end stop (71) that retains (paragraph 56) the valve (30) and the collar (80) within the bore (23), wherein the collar (80) is positioned axially between the end stop (71) and the valve (30) to prevent the valve (30) from contacting the end stop (71) in use; and a spring (70) that biases the valve (30) axially away (paragraph 56) from the end stop (71).
Regarding claim 2, Nakano et al. disclose the valve (Figs. 1-13), wherein the collar (80) is axially movable (paragraph 40) within the bore when the valve (30) moves axially within the bore (23).
Regarding claim 3, Nakano et al. disclose the valve (Figs. 1-13), wherein the spring (70) biases the valve (30) away (paragraph 56) from the end stop (71) via the collar (80).
Regarding claim 4, Nakano et al. disclose the valve (Figs. 1-13), wherein the collar (80) extends axially from a first end to a second end (Fig. 3), and wherein the valve (30) is at least partially received (paragraph 44) within a pocket (80b) in the first end (Fig. 3).
Regarding claim 5, Nakano et al. disclose the valve (Figs. 1-13), wherein the spring (70) is at least partially received (paragraph 54) within a pocket (80a) in the second end (Fig. 3).
Regarding claim 6, Nakano et al. disclose the valve (Figs. 1-13), wherein the pocket (80b) in the first end (Fig. 3) has an inner diameter that is smaller (paragraph 48) than an inner diameter of the pocket (80a) in the second end (Fig. 3).
Regarding claim 7, Nakano et al. disclose the valve (Figs. 1-13), wherein the first pocket (80b) and the second pocket (80a) are separated at least partially by a floor (Fig. 3) therebetween, the spring (70) biasing the collar (80) by providing a force on the floor (Fig. 3).
Regarding claim 8, Nakano et al. disclose the valve (Figs. 1-13), wherein the collar (80) extends axially from a first end to a second end (Fig. 3), and wherein the spring (70) is at least partially received (paragraph 54) within a pocket (80a) in the second end (Fig. 3).
Regarding claim 10, Nakano et al. disclose the valve (Figs. 1-13), wherein the bore (23) has an inner diameter (Fig. 3), and wherein the collar (80) has an outer diameter (Fig. 3) that is approximately equal to the inner diameter (Fig. 3) of the bore (23).
Regarding claim 12, Nakano et al. disclose the valve (Figs. 1-13), wherein the end stop (71) is a retaining clip (paragraphs 52-53) receivable in a slot (22a) that extends into the valve body (20) perpendicularly (Fig. 3) to a central axis of the bore (23).
Regarding claim 13, Nakano et al. disclose the valve (Figs. 1-13), wherein the collar (80) prevents the spring (70) from contacting the valve (30).
Regarding claim 18, Nakano et al. disclose a kit for reworking a valve assembly (Figs. 1-13) for a transmission, the valve assembly (10) having a valve body (20) with a bore (23) and a plurality of passages (10a, paragraph 27) fluidly coupled together via the bore (23), the kit comprising: a valve (30) configured to be positioned within the bore (23) and to be axially moveable (paragraph 40) within the bore (23) to change which of the plurality of passages (paragraph 37) are fluidly coupled via the bore (23); a collar (80) and configured to be positioned within the bore (23) after the valve (30) is positioned therein; a spring (70) configured to be positioned (Fig. 3) within the bore (23); and an end stop (71) configured to retain (paragraph 56) the spring (70), the collar (80), and the valve (30) within the bore (23), wherein the spring (70) biases the valve (30) away from the end stop (71), and wherein the collar (80) is positioned axially (Fig. 3) between the end stop (71) and the valve (30) to prevent the valve (30) from contacting the end stop (71) in use.
Regarding claim 19, Nakano et al. disclose the kit (Figs. 1-13), wherein the collar (80) is positioned to receive the valve (30) at least partially therein (paragraph 44).
Regarding claim 20, Nakano et al. disclose the kit (Figs. 1-13), wherein the collar (80) is positioned to receive the spring (70) at least partially therein (paragraph 54).
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.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakano et al. (Pub. No. US 2020/0070069) in view of Bolaski (U.S. Patent No. 6,722,385).
Regarding claim 9, Nakano et al. disclose the essential features of the claimed invention but lack disclosure wherein the collar extends axially from a first end to a second end, and wherein a passage extends through the collar such that fluid may flow from the first end to the second end therethrough.
Bolaski teaches a valve assembly (Figs. 1-5B) comprising a valve body (110) having a bore (125) for receiving an axially movable valve (115), and a collar (10) positioned within the bore (125) in between the valve (115) and a spring (104) biased by an end stop (20), wherein the collar extend axially (Fig. 4A) and has a passage (14) extending through the collar (10).
It would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the collar of Nakano et al. to have a passage extending through the collar as taught by Bolaski, since applicant has not disclosed that the collar having a passage solves any stated problem or is for any particular purpose and it appears that the invention would perform equally well with the collar of Nakano et al.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakano et al. (Pub. No. US 2020/0070069).
Regarding claim 11, Nakano et al. disclose the valve (Figs. 1-13), wherein the collar (80) comprises a metal (paragraph 49), but lacks disclosure wherein the metal is steel.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the material of the collar of Nakano et al. to be steel, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Stafford (U.S. Patent No. 6,826,908) disclose a similar valve assembly having a valve body with a bore and a valve within the bore retained by a spring and collar.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Reinaldo Sanchez-Medina, telephone number 571-270-5168, fax number 571-270-6168. The examiner can normally be reached on Monday-Friday (7:30AM-4:00PM EST).
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/REINALDO SANCHEZ-MEDINA/Primary Examiner, Art Unit 3753
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