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 .
DETAILED ACTION
This is responsive to the claims filed 9/9/2025. Claims 1 – 15 are pending in this application.
Information Disclosure Statement
The information disclosure statement filed 9/9/2025 is acknowledged by the examiner.
Specification
A substitute specification excluding the claims is required pursuant to 37 CFR 1.125(a) because the specification is incomprehensible as to preclude a reasonable search of the prior art by the examiner. The specification is replete with run-on sentences, handwritten reference numbers on drawings that are incomprehensible. For example, the following items are not understood: “An operating device is arranged on the control spindle 81 at the end, which comprises a handle 1 in which an adapter piece 2 is axially movably arranged, which accommodates a control cylinder 3, with which it is in threaded engagement, which is provided with a limiting sleeve 4 at the end and in which a control piston 5 is axially movably arranged, which is provided with a driving piece 6 at the end and which has a receptacle for the interlocking connection to the non-circular connecting portion 82 of the control spindle 81 of a valve upper part 8”, it is not clear the element referred to by the several instances of the term “which”. The disclosure comprises two embodiments, the specification refers to reference numbers with no corresponding figures. The reference numbers are located in one of the fifteen figures describing each embodiment.
This office action is based on the best understanding of the specification. The ENTIRE specification with proper idiomatic English and in compliance with 37 CFR 1.52(a) and (b) is required.
A substitute specification must not contain new matter. The substitute specification must be submitted with markings showing all the changes relative to the immediate prior version of the specification of record. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. An accompanying clean version (without markings) and a statement that the substitute specification contains no new matter must also be supplied. Numbering the paragraphs of the specification of record is not considered a change that must be shown.
Drawings
The drawings are objected to for the handwritten reference numbers that are incomprehensible. The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 12 – adjusting sleeve (page 10, line 32), element 141, compression spring 59. Further element 12 refers to both adjusting sleeve and threaded bore. 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. 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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 – 15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Regarding claim 1, the claim is drafted in the alternative – “the adapter piece (2) has an internal thread (24), which is in engagement with an external thread of the control spindle or with a component connected to the control spindle (81)”. The first alternative requires the adapter piece internal thread to be in direct contact with the external thread of the control spindle. Applicant discloses two embodiments figures 1- 15 and figures 16 – 30. Both embodiments disclose a component connected to control spindle threadably connected to the adapter piece. Applicant has not disclosed an embodiment adapter piece directly connected to the control spindle.
An analysis of the Wands factors reveals that the following factors weigh against enablement:
The amount of direction provided by inventor.
The existence of working examples.
The quantity of experimentation.
In re Wands, 858 F.2d 731 (Fed. Cir. 1988); MPEP § 2164.01 (a). It is noted that the determination of undue experimentation is reached by weighing all the factors and that no single factor is dispositive (MPEP 2164.01 (a)).
Applicant' s disclosure do not provide a person having ordinary skill in the art enough direction regarding adapter piece directly connected to the control spindle to make and use the claimed subject matter. Applicant does not provide sufficient direction as to how this embodiment is assembled. The amount of experimentation required by a person having ordinary skill in the art to arrive at the claimed subject matter would be significant.
Upon the weight of all of these factors, one of ordinary skill in the art would not have been enabled by the originally filed disclosure to make and/or use the claimed invention without undue experimentation and therefore claims 1 - 15 are not enabled for this alternative.
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 13 is 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.
Claim 13, the phrase “preferably” renders the claim indefinite because it is unclear whether the “detachably connected to the control spindle (81), is arranged on the control piston” is required. The phrase “preferably” makes it unclear whether the claim is being limited to the preferred embodiment. Therefore, the use of the phrase “preferably” renders the claim indefinite.
Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made. See MPEP 2173.05(d).
Claim Rejections - 35 USC § 102
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, 14 – 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by European Patent to Thurau et al. (EP 3366958).
Regarding claim 1, Thurau et al. disclose a valve upper part with a head piece (1, Fig. 1a), which is axially penetrated by a control spindle (2, Fig. 1a), by means of which a valve body (5, Fig. 1b) arranged in the head piece is actuatable and which is connected to an operating part comprising a handle (7, Fig. 1a), wherein the handle (7, Fig. 1a) is movable relative to the head piece (1, Fig. 1a) coaxially to the control spindle (2, Fig. 1a), wherein the handle (7, Fig. 1a) is connected to the control spindle (2, Fig. 1a) via an adapter piece (6, Fig. 1a) fastened to this the control spindle (2, Fig. 1a) for conjoint rotation, wherein the adapter piece (6, Fig. 1a) has an internal thread, which is in engagement with an external thread of the control spindle – examiner is interpreting element 3 to be part of the control spindle by means of which an axial position of the adapter piece (6, Fig. 1a) relative to the control spindle (2, Fig. 1a) is changeable by means of rotation.
Regarding claims 14 – 15, Thurau et al. disclose the assembly is for a sanitary valve upper part.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US patent to Peng (11,067,198) and US Patent to Diel both disclosing sliding valves with detents.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to UMASHANKAR VENKATESAN whose telephone number is (571)270-5602. The examiner can normally be reached Monday - Friday 9:30 AM - 6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner' s supervisors Craig Schneider can be reached at (571) 272-3607 or Ken 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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/UMASHANKAR VENKATESAN/
Primary Examiner, Art Unit 3753
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