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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-17 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 19/075,073 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because.
Regarding claim 1, the reference application’s claims 1 and 10 disclose a shut-off nozzle for a molding machine, comprising
a fluid housing having at least one fluid channel, wherein the at least one fluid channel is designed to guide a - preferably liquid and/or plastic - fluid and
a valve element which is mounted rotationally about an axis of rotation relative to the fluid housing and which passes through the fluid channel and has at least one through-opening for the passage of the fluid, wherein a flow cross-section between the fluid channel and the through-opening can be varied by a rotational movement of the valve element and thus a flow rate of the fluid can be influenced,
wherein the valve element is mounted in a floating manner in the valve housing
Regarding claim 2, the reference application’s claim 11 discloses the valve element is arranged in a recess, preferably a bore, passing through the valve housing.
Regarding claim 3 and 4, the reference application’s claim 12 discloses the valve element is preloaded with respect to the valve housing by means of at least one spring element, preferably at least one disk spring.
Regarding claim 5, the reference application’s claim 14 discloses the valve element is sealed with respect to the valve housing by means of at least one sealing element, preferably at least one sealing ring.
Regarding claim 6, the reference application’s claim 15 discloses the valve element is connected in a rotationally movably locking manner to an actuating element, which actuating element is designed to rotate the valve element via a rotational movement between a closed position and an open position.
Regarding claim 7, the reference application’s claim 16 discloses the actuating elemen
Regarding claim 8, the reference application’s claim 17 discloses the valve element is mounted with respect to the valve housing and/or with respect to a bearing element of the valve housing along the axis of rotation with a play of 0.01 mm to 5 mm, preferably 0.03 mm to 2.5 mm, particularly preferably 0.05 mm to 1 mm.
Regarding claim 9, the reference application’s claim 5 discloses the valve element is rotationally symmetrical, preferably in the form of a bolt.
Regarding claim 10, the reference application claim 1 discloses the at least one through-opening has a cross-section in a plane orthogonal to its longitudinal extent through the valve element, which cross-section has a larger dimension along the axis of rotation of the valve element than perpendicular thereto.
Regarding claim 11, the reference application’s claim 1 discloses the at least one through-opening is designed as an oblong hole in cross-section in the plane orthogonal to the longitudinal extent of the at least one through-opening.
Regarding claim 12, the reference application’s claim 3 discloses the ratio between the dimension of the at least one through-opening in cross-section in the plane orthogonal to the longitudinal extent of the at least one through-opening along the axis of rotation
Regarding claim 13, the reference applications claim 4 discloses the value of the dimension of the at least one through-opening along the axis of rotation in cross-section in the plane orthogonal to the longitudinal extent of the at least one through-opening is in a range of plus/minus 20%, preferably plus/minus 10%, particularly preferably plus/minus 5%, of a diameter of the valve element in the region of the at least one through-opening.
Regarding claim 14, the reference application’s claim 7 discloses the at least one fluid channel of the valve housing has, in the flow direction of the fluid,- at an inlet point of the at least one fluid channel into the at least one through-opening of the valve element, and/or - at an outlet point of the at least one through-opening of the valve element into the at least one fluid channel, the same cross-sectional shape as the at least one through-opening.
Regarding claim 15, the reference application’s claim 8 discloses the at least one fluid channel merges, preferably continuously, into a circular cross-section along its longitudinal extent before the inlet point into the at least one through-opening and/or after the outlet point
Regarding claim 16, the reference application claim 7 discloses the at least one fluid channel and/or the at least one through-opening have a value, preferably the same value, of a cross-sectional area along their longitudinal extent.
Regarding claim 17, the reference application claims 1, 10 and 18 molding machine and/or an injection unit for a molding machine, comprising a shut-off nozzle according to claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-17 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance:
Claim 1 recites the broad recitation “designed to guide a… fluid”, and the claim also recites “- preferably liquid and/or plastic – “ which is the narrower statement of the range/limitation.
Claim 2 recites the broad recitation “arranged in a recess… passing through the valve housing”, and the claim also recites “preferably a bore“ which is the narrower statement of the range/limitation.
Claims 3 and 4 recite the broad recitation “means of at least one spring element”, and the claim also recites “preferably at least one disk spring” which is the narrower statement of the range/limitation.
Claim 5 recites the broad recitation “means of at least one sealing element…”, and the claim also recites “preferably at least one sealing ring” which is the narrower statement of the range/limitation.
Claim 8 recites the broad recitation “a play of 0.01 mm to 5 mm” and the claim also recites “preferably 0.03 mm to 2.5 mm” and “particularly preferably 0.05 mm to 1 mm” which is the narrower statement of the range/limitation.
Claim 9 recites the broad recitation “the valve element is rotationally symmetrical”, and the claim also recites “preferably in the form of a bolt” which is the narrower statement of the range/limitation.
Claim 12 recites the broad recitation “the ratio… is at least 1.5:1”, and the claim also recites “preferably 2:1” which is the narrower statement of the range/limitation.
Claim 13 recites the broad recitation “a range of plus/minus 20%” and the claim also recites “preferably plus/minus 10%” and “particularly preferably plus/minus 5%, which is the narrower statement of the range/limitation.
Claim 15 recites the broad recitation “the at least one fluid channel merges… into a circular cross-section”, and the claim also recites “preferably continuously” which is the narrower statement of the range/limitation.
Claim 16 recites the broad recitation “the at least one fluid channel and/or the at least one through-opening have a value…of a cross-sectional area”, and the claim also recites “preferably the same value” which is the narrower statement of the range/limitation.
The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 7 recites the limitation "the actuating element" in line 1. There is insufficient antecedent basis for this limitation 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.
Claims 1-2, 5-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nosaka et al. (EP 3 381 643 A1).
Regarding claim 1, Nosaka discloses a valve for a injection molding machine (title/abstract), comprising
a valve casing 860, equated with the claimed fluid housing, having ports 862, 863, equated with the claimed at least one fluid channel, wherein the at least one fluid channel is designed to guide a plastic fluid (FIG. 6; ¶ 112) and
a valve body/element 870 which is mounted rotationally about an axis of rotation relative to the fluid housing 860 and which passes through the fluid channel and has at least one flow path through-opening (871A-B, 871A-C) for the passage of the fluid, wherein a flow cross-section between the fluid channel and the through-opening can be varied by a rotational movement of the valve element and thus a flow rate of the fluid can be influenced (FIG. 5; ¶¶ 108+),
wherein the valve element is mounted in a floating manner in the valve housing along the axis of rotation (FIG. 3-9; ¶¶ 108+).
Regarding claim 2, Nosaka discloses the valve element is arranged in a recess, preferably a bore, passing through the valve housing (FIG. 6).
Regarding claim 5, Nosaka discloses the valve element is sealed with respect to the valve housing by means of at least one sealing element, preferably at least one sealing ring (FIG. 5).
Regarding claim 6, Nosaka discloses the valve element is connected in a rotationally movably locking manner to an actuating element, which actuating element is designed to rotate the valve element via a rotational movement between a closed position and an open position (FIG. 3-9).
Regarding claim 7, Nosaka discloses the actuating element is designed as a fork element which is connected on both sides to the valve element passing through the valve housing in a rotational movably locked manner (FIG. 3-9).
Regarding claim 8, Nosaka discloses the valve element is mounted with respect to the valve housing and/or with respect to a bearing element of the valve housing along the axis of rotation with a play of 0.01 mm to 5 mm, preferably 0.03 mm to 2.5 mm, particularly preferably 0.05 mm to 1 mm (FIG. 3-9).
Regarding claim 9, Nosaka discloses the valve element is rotationally symmetrical, preferably in the form of a bolt (FIG. 5).
Regarding claim 10, Nosaka discloses the at least one through-opening has a cross-section in a plane orthogonal to its longitudinal extent through the valve element, which cross-section has a larger dimension along the axis of rotation of the valve element than perpendicular thereto (FIG. 5; ¶ 117).
Regarding claim 11, Nosaka discloses the at least one through-opening is designed as an oblong hole in cross-section in the plane orthogonal to the longitudinal extent of the at least one through-opening (FIG. 5; ¶ 117).
Regarding claim 12, Nosaka discloses the ratio between the dimension of the at least one through-opening in cross-section in the plane orthogonal to the longitudinal extent of the at least one through-opening along the axis of rotation and a height dimension perpendicular thereto is at least 1.5:1, preferably 2:1 (FIG. 5; ¶ 117).
Regarding claim 13, Nosaka discloses the value of the dimension of the at least one through-opening along the axis of rotation in cross-section in the plane orthogonal to the longitudinal extent of the at least one through-opening is in a range of plus/minus 20%, preferably plus/minus 10%, particularly preferably plus/minus 5%, of a diameter of the valve element in the region of the at least one through-opening (FIG. 5; ¶ 117).
Regarding claim 14, Nosaka discloses the at least one fluid channel of the valve housing has, in the flow direction of the fluid,- at an inlet point of the at least one fluid channel into the at least one through-opening of the valve element, and/or - at an outlet point of the at least one through-opening of the valve element into the at least one fluid channel, the same cross-sectional shape as the at least one through-opening (FIG. 5-6, ¶¶ 116-119).
Regarding claim 15, Nosaka discloses the at least one fluid channel merges, preferably continuously, into a circular cross-section along its longitudinal extent before the inlet point into the at least one through-opening and/or after the outlet point from the at least one through-opening (FIG. 6; ¶¶ 116+).
Regarding claim 16, Nosaka discloses the at least one fluid channel and/or the at least one through-opening have a value, preferably the same value, of a cross-sectional area along their longitudinal extent (FIG. 5-6; ¶¶ 116+).
Regarding claim 17, Nosaka discloses a molding machine and/or an injection unit for a molding machine, comprising a shut-off nozzle according to claim 1 (FIG. 3-9).
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 nonobviousness.
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.
Alternatively, claims 8, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Nosaka et al. (EP 3 381 643 A1).
Nosaka does not appear to explicitly disclose the amount of play, the ratio of the through-opening, or the through opening’s percentage of the valve diameter.
However, at the time of invention, it would have been prima facie obvious to one of ordinary skill in the art to modify the valve of Nosaka to include the claimed dimensions as such values are result effective variables and would prevent leaking (amount of play) or control flow rate through the valve in a desired manner, i.e. without increasing sliding resistance of the valve (¶ 115).
Claims 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Nosaka et al. (EP 3 381 643 A1) as applied to claim 1 or 2 above, further in view of Condo (US 7,614,871 B2).
Regarding claims 3-4, Nosaka does not appear to expressly disclose a disk spring.
However, Condo discloses a similar valve (title/abstract) which includes a disk spring for preloading and improving sealing (FIG. 14; 6:29+)
At the time of invention, it would have been prima facie obvious to one of ordinary skill in the art to modify the valve of Nosaka to include the spring of Condo, in order to improve sealing of the valve.
Regarding claim 5, Nosaka does not appear to explicitly disclose seals, although grooves in the valve body are shown (FIG. 5). However, Condo discloses plural sealing piston rings for sealing the valves (FIG. 9-11; 5:19+)
Alternatively, claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Nosaka et al. (EP 3 381 643 A1) as applied to claim 1 above, further in view of Duncan (AU 2010274995 B2).
Nosaka does not appear to explicitly disclose the amount of play.
However, Duncan discloses a similar valve (title/abstract) with sufficiently tight tolerances to be substantially self-sealing.
Therefore, at the time of invention, it would have been prima facie obvious to one of ordinary skill in the art to modify the tolerance or amount of play of Nosaka’s valve within the claimed range, because such tolerances are result effective variable that control the self-sealing of the valves without increasing the valve actuation resistance.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kjar; Steven R.
US 9481477 B2
Schad; Robert D. et al.
US 9090011 B2
Yuwaki; Kohei
US 11420372 B2
KLAMMER; Guenther et al.
US 20250289171 A1
Nosaka Hiromichi
EP 3173207 A1
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Benjamin A Schiffman whose telephone number is (571)270-7626. The examiner can normally be reached M-F 9a-530p EST.
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 supervisor, Christina Johnson can be reached at (571)272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BENJAMIN A SCHIFFMAN/Primary Examiner, Art Unit 1742
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