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 .
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 feature(s):
“at least one inlet valve, in each case with an associated valve opening which can be selectively opened or closed by a reed valve assembly”. (Claim 18).
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 examiner notes that the language “a captive-retention means for the fastener” in claim 11 does not invoke §112(f). This is because the non-structural language a captive-retention means is not modified by function.--.
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) 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.
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:
the captive-retention means in claim 14.
is designed to hold the screw in the opening.
the captive-retention means in claim 20.
holding the fastener by the captive-retention means;
The captive-retention means corresponds to the claws 6 which extend inward into the interior of the opening 8, and the claws “dig into” the thread of the screw or are in engagement therewith, Fig 10, (Page 5 line 12, Page 8 line 21-Page 9 line 2).
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 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 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.
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.
Claims 18-19 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 18: Line 1-4 states: “A radial piston compressor, comprising:
at least one inlet valve and/or outlet valve, in each case with an associated valve opening, which can be selectively opened or closed by a reed valve assembly; and
a reed valve assembly as claimed in claim 11.”.
It is unclear the exact limitations the applicant is introducing here, specifically Line 4 of claim 18 requires a reed valve assembly as recited in claim 11 & Line 2-3 of claim 18 also requires a reed valve assembly.
Additionally since the reed valve assembly of claim 11 (which has a fastener for fastening the reed valve assembly to the radial piston compressor) appears to be directed to outlet valve 24 described in the SPEC. This is because the SPEC does not use either the language inlet valve OR inlet to describe the as filed invention. Thus, it follows that the reed valve assembly recited in Line 4 of claim 18 is directed to the outlet valve 24 described in the SPEC.
Further, since the language of Line 2-3 states that at least one inlet valve and/or outlet valve, in each case with an associated valve opening, which can be selectively opened or closed by a reed valve assembly – the claim as written requires the associated opening of the inlet valve/outlet valve to be selectively closed by a reed valve assembly – meaning that the associated opening would be opened/closed by both the inlet valve/outlet valve and the reed valve assembly – however such a feature is not shown in the Figures. Because Applicant does not appear to disclose any structure that is consistent with the particular language recited in the claim, there is a conflict between the claimed subject matter and the specification disclosure which renders the scope of the claims uncertain. Therefore because the specification does not support the claims at issue, the claim is indefinite when read in light of the specification. See in Re Paul G. Anderson, John A. Mcmennamy, Andrew P. Burke and Thomas A. Rak, 106 F.3d 425 (Fed. Cir. 1997) (Because appellants show no structure in their specification consistent with this claim language, [the claim] is indefinite). Also see MPEP §2173.03. For the purpose of examination the claim language in question will be examined as: -- A radial piston compressor, comprising:
at least one inlet valve
a reed valve assembly as claimed in claim 11.--.
Regarding Claim 19: Line 1-3 states: “wherein the radial piston compressor is equipped with at least one threaded hole for screwing in a screw of the reed valve assembly.”. It is unclear the exact limitations the applicant is introducing here, specifically it is unclear if the language a screw of the reed valve assembly recited in Line 2-3 is the same as the fastener recited in Line 2 of claim 11 or if it is a different structural element? Since it appears that the screw of claim 19 and the fastener of claim 11 are directed to the same structural feature, for the purpose of examination the language in question will be read as: --wherein the radial piston compressor is equipped with at least one threaded hole for screwing in the fastener of the reed valve assembly.--.
Finally; depending claim(s) inherit deficiencies from the parent claim(s). Appropriate correction is required.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 11-12 and 18-19 is/are rejected under 35 U.S.C. 102(a)(1) and/or 35 U.S.C. 102(a)(2) as being anticipated by JP-H06147106. Examiners Note: For the purposes of examining the instant application, the examiners submitted English translation of JP-H06147106, submitted with this office action, is referenced hereinafter.
Regarding Claim 11: JP-H06147106 does disclose the limitations: A reed valve assembly (the reed valve assembly is defined by the sum of its parts and includes discharge valve 26, Line 223-230) for a radial piston compressor (abstract, radial piston compressor illustrated in Fig 1, Line 307-308), comprising:
a fastener (i.e. fastener illustrated in Fig 1 which connects reed check valve 26 to the part of the cylinder 17 having port 25 in it, Line 179-193, 225-230) for fastening the reed valve assembly to the radial piston compressor (as understood from Fig 1 the fastener fixes the check valve 26 to the part of the cylinder 17 having port 25 in it); and a captive-retention means (i.e. threaded hole in the cylinder 17 that the fastener shown in Fig 1 engages with to secure the reed check valve 26 in place; since the fastener is received in a blind hole – the fastener is inherently received in a threaded hole) for the fastener (the fastener inherently engages the captive-retention means/threaded hole in Fig 1 to fasten element 26 as desired).
Regarding Claim 12: JP-H06147106 does disclose the limitations: wherein the reed valve assembly includes a valve reed (as known in the art, discharge valve 26 is a valve reed given its plate like structure which is used to open/close a port, Line 223-230).
Regarding Claim 18: JP-H06147106 does disclose the limitations: A radial piston compressor (abstract, radial piston compressor illustrated in Fig 1, Line 307-308), comprising: at least one inlet valve (i.e. inlet valve 23, Line 218-224), with an associated valve opening (valve opening = first port 22), which can be selectively opened or closed (i.e. selectively opened or closed by check valve 23); and a reed valve assembly as claimed in claim 11 (as seen in Fig 1 the compressor includes the outlet valve 26 and fastener of the reed valve assembly claimed in claim 11).
Regarding Claim 19: JP-H06147106 does disclose the limitations: wherein the radial piston compressor is equipped with at least one threaded hole (i.e. threaded hole in the cylinder 17 that the fastener shown in Fig 1 engages with to secure the reed check valve 26 in place) for screwing in the fastener of the reed valve assembly (it is, as explained above).
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.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP-H06147106 in view of Ishijima USPN 4628963.
Regarding Claim 13: JP-H06147106 discloses the limitations: wherein the reed valve assembly includes a valve reed (as known in the art, discharge valve 26 is a valve reed given its plate like structure which is used to open/close a port, Line 223-230). JP-H06147106 is silent regarding the limitations: a valve stop. The prior art of Ishijima USPN 4628963 which is directed to an outlet valve for a compressor like JP-H06147106, is noted.
However, Ishijima USPN 4628963 does disclose the limitations: a discharge valve for a compressor (title, abstract, Figs 1-2, Figs 5-6), wherein the discharge valve (the discharge valve is defined by the sum of its parts and corresponds to the claimed reed valve assembly) includes a fastener (12, Column 1 Line 25-33) for fastening a reed valve (as known in the art, discharge valve 9 is a valve reed given its plate like structure which is used to open/close a port, Column 2 Line 30-54) and a valve stop (valve stop = 10,11, Column 2 Line 30-54), the fastener fastening the reed valve and valve stop to the compressor (as understood from Figs 1-7C the fastener 12 fastens to the threaded hole shown in bearing end plate 7a of the compressor which has discharge port 8 in it; bearing end plate 7a of Ishijima USPN 4628963 corresponds to cylinder 17 having port 25 shown in Fig 1 & 3 of JP-H06147106); and a threaded hole for the fastener (as seen in Fig 4 and Fig 6 the threaded fastener is received in a threaded hole in bearing end plate 7a of the compressor which has discharge port 8 in it).
Hence 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 valve reed 26 of JP-H06147106 with the valve stop (valve stop 9,10) of Ishijima USPN 4628963 in order to vary the compressed flow of gas discharged based on the load from the compressed gas, thereby reducing opening pressure overshoot and noise resulting from flow of gas through the discharge port (Column 2 Line 34-54, Column 3 Line 1-20).
Claim(s) 14-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP-H06147106 in view of Ishijima USPN 4628963, and further in view of McMaster-Carr.
It is noted that since claim 14 requires interpretation under §112(f), and thus a different interpretation for some of the already recited claim language, claims 11 &13-14 are rejected together.
Regarding Claims 11 & 13-14: JP-H06147106 discloses the limitations:
A reed valve assembly (the reed valve assembly is defined by the sum of its parts and includes discharge valve 26, Line 223-230) for a radial piston compressor (abstract, radial piston compressor illustrated in Fig 1, Line 307-308), comprising:
a fastener (i.e. fastener illustrated in Fig 1 which connects reed check valve 26 to the part of the cylinder 17 having port 25 in it, Line 179-193, 225-230) for fastening the reed valve assembly to the radial piston compressor (as understood from Fig 1 the fastener fixes the check valve 26 to the part of the cylinder 17 having port 25 in it); and
wherein the reed valve assembly includes a valve reed (as known in the art, discharge valve 26 is a valve reed given its plate like structure which is used to open/close a port, Line 223-230) ;
wherein the fastener is configured as a screw (the fastener illustrated by JP ‘106 is equivalent to a screw), wherein the reed valve assembly is equipped with an opening to receive the screw (as seen in Fig 1 fastener/screw passes through the valve reed of JP ‘106 – thus the valve reed of the valve reed assembly inherently has an opening in it to receive the fastener/screw as claimed). JP-H06147106 is silent regarding the limitations: a valve stop. The prior art of Ishijima USPN 4628963 which is directed to an outlet valve for a compressor like JP-H06147106, is noted.
However, Ishijima USPN 4628963 does disclose the limitations: a discharge valve for a compressor (title, abstract, Figs 1-2, Figs 5-6), wherein the discharge valve (the discharge valve is defined by the sum of its parts and corresponds to the claimed reed valve assembly) includes a fastener (12, Column 1 Line 25-33) for fastening a valve reed (as known in the art, discharge valve 9 is a valve reed given its plate like structure which is used to open/close a port, Column 2 Line 30-54) and a valve stop (valve stop = 10,11, Column 2 Line 30-54), the fastener fastening the reed valve and valve stop to the compressor (as understood from Figs 1-7C the fastener 12 fastens to the threaded hole shown in bearing end plate 7a of the compressor which has discharge port 8 in it; bearing end plate 7a of Ishijima USPN 4628963 corresponds to cylinder 17 having port 25 shown in Fig 1 & 3 of JP-H06147106); and a threaded hole for the fastener (as seen in Fig 4 and Fig 6 the threaded fastener is received in a threaded hole in bearing end plate 7a of the compressor which has discharge port 8).
Hence 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 valve reed 26 of JP-H06147106 with the valve stop (valve stop 9,10) of Ishijima USPN 4628963 in order to vary the compressed flow of gas discharged based on the load from the compressed gas, thereby reducing opening pressure overshoot and noise resulting from flow of gas through the discharge port (Column 2 Line 34-54, Column 3 Line 1-20).
JP-H06147106 is silent regarding the limitations: a captive-retention means for the fastener, wherein the captive-retention means is designed to hold the screw in the opening. The prior art of McMaster-Carr which is directed to hardware used to connect various parts together (e.g. like the valve reed 26 to the surface of the cylinder 17 as shown in Fig 1 & Fig 3 of JP ‘106) in a pressurized environment (i.e. like the discharge side of the compressor as shown in Fig 1 of JP ‘106) like JP-H06147106, is noted.
However, McMaster-Carr discloses the limitations: a captive-retention means (i.e. molded rubber material which forms the generally hexagonal shape inside the pressure sealing washer seen on Page 3170; it is noted that since the molded rubber material appears to have the same structure as the “claws 6” in Fig 10 of the instant application – which correspond to the claimed captive-retention means, and the molded rubber material is disclosed as compressing and forming a seal around the fastener shank (i.e. engaging/digging into the thread of the screw) as seen in the figure on Page 3170 – it is understood that the molded rubber material is equivalent to the captive retention means being claimed) for the screw (i.e. for the threaded portion of the fastener/threaded rod seen in the figure on page 3170 – the fastener/threaded rod is equivalent to a screw), an opening to receive the screw (opening = the space inside the zinc plated steel washer where the molded rubber material extends from and the fastener passes through), wherein the captive-retention means is designed to hold the screw in the opening (given that the captive-retention means/molded rubber material is disclosed as compressing and forming a seal around the shank – it is understood that the captive-retention means in the prior art of McMaster would inherently hold/engage with the threads of the screw).
Hence 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 opening of JP-H06147106 with the captive-retention means/molded rubber material as taught by McMaster-Carr in order to create a reliable pressure seal about the fastener (McMaster – Page 3170).
Regarding Claim 15: McMaster-Carr does disclose the limitations: wherein the captive-retention means includes claws (given that the structure of McMaster illustrated on Page 3170 is the same as the “claws 6” illustrated in Fig 10 of the instant application – it is understood that the molded rubber material of McMaster illustrated on Page 3170 corresponds to the claws being claimed) which project into the opening (as seen in the figure illustrated on Page 3170 the molded rubber material extends/projects into the void/opening inside the zinc plated steel washer; accordingly in the combination of prior art, the molded rubber material of McMaster would project/extend into the opening inside the valve reed 26 – that the fastener/screw passes through of JP ‘106 so as to hold/engage with the threads of the screw of JP ‘106).
Regarding Claim 16: McMaster-Carr does disclose the limitations: wherein the claws are in engagement with a thread (as seen in the figure on Page 3170 in the assembled state the claws/molded rubber material are in engagement with a thread as claimed – and they form a seal about the thread).
Additionally Regarding Claim 16: JP-H06147106 as modified by Ishijima USPN 4628963 and McMaster-Carr discloses the claimed limitations except for: “wherein the screw is a screw with a continuous threaded shaft”. It would have been an obvious matter of design choice to --design the screw to be a screw with a continuous threaded shaft--, since no stated problem is solved or unexpected results obtained in having a screw with a continuous threaded shaft versus the design taught by JP-H06147106 as modified by Ishijima USPN 4628963 and McMaster-Carr. Applicant has not disclosed why it is important/critical that the screw is a screw with a continuous threaded shaft and has not demonstrated that this feature solves any stated problem or is for any particular purpose. Specifically, Page 9 Line 10-14 of the SPEC indicates that the screw is used to connect the valve to the compressor (e.g. like the fastener/screw taught by JP-H06147106 which connects the valve to the compressor). Thus, when the screw is designed to be a screw with a continuous threaded shaft the fastener/screw of JP-H06147106 will also meet Applicant’s disclosed functional limitation of connecting the valve to the compressor.
Regarding Claim 17: JP-H06147106 as modified by Ishijima USPN 4628963 and McMaster-Carr does disclose the limitations: wherein the valve reed includes an opening (it does, as explained above in the combination of prior art the valve reed 26 of JP ‘106 includes an opening having the captive-retention means taught by McMaster), and the valve stop includes an opening (Ishijima – an opening = opening in element 11 and 10 that the fastener/screw 12 passes through in Figs 5-7B), wherein the openings are in alignment (they are, the opening in valve reed 9 of Ishijima that the fastener/screw 12 passes through corresponds to the opening in the valve reed taught by JP ‘106 as modified by McMaster; the openings would inherently be aligned in order to allow the fastener/screw to pass through the openings - as seen in Figs 5-7B of Ishijima the openings are aligned to allow the fastener/screw to pass through the openings) and form the opening of the reed valve assembly (it does, the opening of the reed valve assembly is the passage that the fastener/screw extends through to fix the reed valve assembly to the compressor- as seen in Figs 5-7B of Ishijima the openings are aligned to allow the fastener/screw to pass through the openings so as to fix the reed valve assembly to the compressor).
Claim(s) 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP-H06147106 in view of McMaster-Carr.
Regarding Claim 20: JP-H06147106 discloses the limitations: A method for mounting a reed valve assembly (MPEP §2112.02 I Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986); the reed valve assembly is defined by the sum of its parts and includes discharge valve 26, Line 223-230) on a radial piston compressor (i.e. on the radial piston compressor illustrated in Fig 1, Line 307-308), the method comprising:
a fastener (i.e. fastener illustrated in Fig 1 which connects reed check valve 26 to the part of the cylinder 17 having port 25 in it, Line 179-193, 225-230) for fastening the reed valve assembly to the radial piston compressor (as understood from Fig 1 the fastener fixes the check valve 26 to the part of the cylinder 17 having port 25 in it); and
arranging the fastener in the reed valve assembly (as understood from Fig 1 & Fig 3 the fastener extends through discharge valve 26 (i.e. the fastener is arranged in an opening of the reed valve assembly) – thus it is arranged in the reed valve assembly as claimed); and
mounting the reed valve assembly on the radial piston compressor (as understood from Fig 1 & Fig 3 the fastener fixes the check valve 26 to the part of the cylinder 17 having port 25 in it). JP-H06147106 is silent regarding the limitations: a captive-retention means for the fastener; and holding the fastener by the captive-retention means. The prior art of McMaster-Carr which is directed to hardware used to connect various parts together (e.g. like the valve reed 26 to the surface of the cylinder 17 as shown in Fig 1 & Fig 3 of JP ‘106) in a pressurized environment (i.e. like the discharge side of the compressor as shown in Fig 1 of JP ‘106) like JP-H06147106, is noted.
However, McMaster-Carr does disclose the limitations: a captive-retention means (i.e. molded rubber material which forms the generally hexagonal shape inside the pressure sealing washer seen on Page 3170; it is noted that since the molded rubber material appears to have the same structure as the “claws 6” in Fig 10 of the instant application – which correspond to the claimed captive-retention means, and the molded rubber material is disclosed as compressing and forming a seal around the fastener shank (i.e. engaging/digging into the thread of the screw) as seen in the figure on Page 3170 – it is understood that the molded rubber material is equivalent to the captive retention means being claimed) for the fastener (i.e. for the threaded portion of the fastener seen in the figure on page 3170); and holding the fastener by the captive-retention means (given that the molded rubber material is disclosed as compressing and forming a seal around the shank – it is understood that the captive-retention means in the prior art of McMaster would inherently hold/engage with the threads of the fastener).
Hence 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 opening of JP-H06147106 with the captive-retention means/molded rubber material as taught by McMaster-Carr in order to create a reliable pressure seal about the fastener (McMaster – Page 3170).
Further Regarding Claim 20: following the combination of prior art explained above, in the assembled state the reed valve assembly, having the captive-retention means would be mounted on the radial piston compressor, in the same manner as valve 26 is shown as being mounted in Fig 1 & 3 of JP-H06147106.
Regarding Claim 21: JP-H06147106 does disclose the limitations: wherein the fastener is a screw (the fastener of JP ‘106 is equivalent to a screw) and mounting the reed valve assembly on the radial piston compressor includes screwing the screw into a threaded hole (given that the fastener/screw of JP ‘106 is received in a blind hole – the blind hole would inherently have to be a threaded hole in order for the fastener/screw to be able to fix the valve to the piston compressor as shown in Fig 1 & Fig 3).
Examiner's Note: The Examiner respectfully requests of the Applicant in preparing responses, to fully consider the entirety of the references as potentially teaching all or part of the claimed invention.
It is noted, REFERENCES ARE RELEVANT AS PRIOR ART FOR ALL THEY CONTAIN. “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments (see MPEP § 2123).
Additionally the origin of the drawing is immaterial. For instance, drawings in a design patent can anticipate or make obvious the claimed invention, as can drawings in utility patents. When the reference is a utility patent, it does not matter that the feature shown is unintended or unexplained in the specification. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979). (See MPEP § 2125).
The Examiner has cited particular locations in the reference(s) as applied to the claims above for the convenience of the Applicant. Although the specified citations are representative of the teachings of the art and are applied to the specific limitations within the individual claims, typically other passages and figures will apply as well.
Furthermore: with respect to the prior art and the determination of obviousness, it has been held that Prior art is not limited just to the references being applied, but includes the understanding of one of ordinary skill in the art. The "mere existence of differences (i.e. a gap) between the prior art and an invention DOES NOT ESTABLISH the inventions nonobviousness." Dann v. Johnston, 425 U.S. 219, 230, 189 USPQ 257, 261 (1976). Rather, in determining obviousness the proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts. And factors other than the disclosures of the cited prior art may provide a basis for concluding that it would have been obvious to one of ordinary skill in the art to bridge the gap. (See MPEP § 2141).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
GB 1560365 – discloses a screw fixing an outlet valve to a valve seat 3.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH S HERRMANN whose telephone number is (571)270-3291. The examiner can normally be reached 8:00 AM - 5:00 PM EST.
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/CHARLES G FREAY/Primary Examiner, Art Unit 3746
/JOSEPH S. HERRMANN/ Examiner, Art Unit 3746
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