DETAILED ACTION
Claim(s) 14-33 are pending for consideration following applicant’s amendment filed 8/31/2026.
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 .
Claim Objections
Claim 14 is objected to because of the following informalities: “wherein injection passage” (line 3) should be “wherein the injection passage”. Appropriate correction is required.
Claim 18 is objected to because of the following informalities: “a second recess is by the shell” (line 1) should be “a second recess is formed by the shell”. Appropriate correction is required.
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 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.
Claims 14-19, 21-26, and 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishimitsu (US Patent 8,479,692) in view of Evans (US Patent 10,125,875).
Regarding Claim 14, Ishimitsu discloses a device capable of operating as a needle for a choke valve assembly (it is noted that the term “needle for a choke valve assembly” is merely the name given to the claimed apparatus in the preamble of the claim and therefore is not accorded patentable weight), comprising (Figure 4A especially): a core (including 36 and 21b) having an injection passage 37 extending internally through a material of the core 36 (as shown in Figure 4A) between an inlet 37a and an outlet (outlet of 21f), wherein injection passage 37 comprises an inlet passage (the axial passage 37) and at least one distribution passage (the radial passage through 21f) extending from the inlet passage (as shown in Figure 4A); and a shell 21 disposed about the core 36, wherein the inlet passage has the inlet 37a extending through a first exterior surface of the core 36 outside of the shell 21 (as shown in Figure 4A, the inlet 37a extends through the exterior surface of 36 at the upper end thereof outside of the shell 21), the at least one distribution passage (through 21f) has the outlet (outlet of 21f) extending through a second exterior surface of the core (radially facing exterior surface of portion 21b) inside of the shell 21 (as shown in Figure 4A), wherein the at least one distribution passage (through 21f) is configured to direct a liquid from the inlet 37a, through the injection passage 37, and out of the outlet (as shown by the arrows in Figure 4A) to a cavity (region at 21a) formed between the core 36 and the shell 21 to couple the shell to the core (the limitation of the passage “configured to direct a liquid…to couple the shell to the core” is a limitation of intended use only and the valve of Ishimitsu is capable of handling any desired fluid; furthermore, recitations of particular fluids handled by an apparatus in an apparatus claim are not accorded patentable weight as per MPEP 2115).
Ishimitsu does not disclose the shell is formed from a superhard material (as set forth in applicant’s specification as filed, such that a superhard material is defined as “a material having a hardness of greater than or equal to 20 GPa based on Vickers hardness testing, and/or a material having a hardness of greater than or equal to 4500 Hardness Brinell (B) on the Brinell scale”).
Evans teaches a valve head and further teaches a shell 52 formed from a superhard material (col. 4, lines 47-52; the superhard material includes a hardness value exceeding 20 GPa based on the Vickers hardness test as described in col. 3, lines 40-47).
It would have been obvious to one of ordinary skill in the art before the application was effectively filed to modify the device of Ishimitsu such that the shell is formed from a superhard material as taught by Evans for the purpose of utilizing a valve head material known in the art to reduce erosion.
Regarding Claim 15, Ishimitsu is seen as further disclosing the liquid comprises a molten metal or alloy configured to solidify at least in the cavity 21a formed between the core and the shell to couple the shell to the core (as described above, Ishimitsu is capable of handling any desired fluid, including a molten metal or alloy configured to solidify at least in the cavity formed between the core and the shell to couple the shell to the core; as described above recitations of particular fluids handled by an apparatus in an apparatus claim are not accorded patentable weight as per MPEP 2115).
Regarding Claim 16, Ishimitsu further discloses the inlet passage (the axial passage 37) extends along a longitudinal axis of the needle (as shown in Figure 4A) internally through the material of the core 36 from the inlet 37a in the first exterior surface to the at least one distribution passage (passage through 21f), and the at least one distribution passage extends along a radial axis of the needle (as shown in Figure 4A, the distribution passage extends through 21f along a radial axis) internally through the material of the core (36, 21b) from the inlet passage to the outlet in the second exterior surface (as described above).
Regarding Claim 17, Ishimitsu is seen as further disclosing a first recess is formed by the core (a recess is formed in the center of 21b as shown in Figures 4A and 4B), and the at least one distribution passage (through 21f) extends to the first recess (as shown in Figure 4A).
Regarding Claim 18, Ishimitsu is seen as further disclosing a second recess is by the shell (a second recess is formed within the enlarged portion of 21d as shown in Figure 4A, this portion forms a portion of the cavity in the same manner as achieved by applicant’s second recess), and the second recess is aligned with the first recess along a longitudinal axis of the needle (the first and second recess are provided at the same axial locations).
Regarding Claim 19, Ishimitsu in view of Evans is seen as further disclosing the core (36 of Ishimitsu) is formed from a non-superhard material (the core is formed of titanium alloy as disclosed by Ishimitsu rather than a superhard material; this is achieved in the same manner as taught by Evans in which portion 54 is formed of a non-superhard material).
Regarding Claim 21, Ishimitsu is seen as further disclosing the inlet passage (the axial passage 37) extends through opposite first and second axial ends of the core (the axial passage 37 extends through the upper axial end of the core and through the lower axial end of portion 36 of the core), the first axial end of the core (upper end) is outside of the shell 21 and includes the inlet 37a through the first exterior surface, and the second axial end (lower end) of the core is inside of the shell 21.
Regarding Claim 22, Ishimitsu further discloses the at least one distribution passage (through 21f) extends over a radial distance outwardly from the inlet passage to the outlet in the second exterior surface (as described above).
Regarding Claim 23, Ishimitsu further discloses the inlet passage (the axial passage 37) extends over an axial distance between the inlet 37a and the at least one distribution passage (through 21f).
Regarding Claim 24, Ishimitsu further discloses the inlet passage (the axial passage 37) extends directly along a longitudinal axis of the needle (as shown in Figure 4A).
Regarding Claim 25, Ishimitsu further discloses the at least one distribution passage (through 21f) comprises a plurality of distribution passages (a plurality of holes 21f) coupled to the inlet passage.
Regarding Claim 26, Ishimitsu further discloses the plurality of distribution passages (through the plurality of holes 21f) extend outwardly from the inlet passage to the second exterior surface at a plurality of circumferential positions about a longitudinal axis of the needle (as best shown in Figure 4B).
Regarding Claim 32, Ishimitsu further discloses the second exterior surface of the core (radially facing exterior surface of portion 21b) is tapered along a longitudinal axis of the needle (at least at the upper end of 21b as shown in Figures 4A and 4B; i.e. this portion includes a chamfered surface defining a taper as claimed).
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishimitsu (US Patent 8,479,692) in view of Evans (US Patent 10,125,875) as applied to claim 14 above, and further in view of Weber et al. (US Patent 10,851,913).
Regarding Claim 20, Ishimitsu does not disclose the shell is formed from a plurality of circumferential elements coupled to one another.
Weber teaches a valve head and further teaches the head assembly includes a plurality of circumferential elements 106a and 106b coupled to one another.
It would have been obvious to one of ordinary skill in the art before the application was effectively filed to modify the device of Ishimitsu such that the shell includes a plurality of circumferential elements coupled to one another as taught by Weber for the purpose of forming the shell from a plurality of components, thereby allowing for replacement of only a portion of the assembly in the event that a portion becomes damaged. It is noted that such a modification requires a mere change of making a single element from a plurality of components and it has been generally held that mere changes to make a single element separable are within the level of ordinary skill in the art (MPEP 2144.04).
Claim(s) 27 and 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishimitsu (US Patent 8,479,692) in view of Evans (US Patent 10,125,875) as applied to claim 25 above, and further in view of Kuhn (US Patent 3,945,356).
Regarding Claim 27, Ishimitsu does not disclose the plurality of distribution passages extend outwardly from the inlet passage to the second exterior surface at a plurality of axial positions relative to a longitudinal axis of the needle.
Kuhn teaches a valve device with a core 111 (Figure 4 especially) including a plurality of distribution passages 109 and 110 extending outward to an exterior surface at a plurality of axial positions relative to a longitudinal axis of the valve (as shown in Figure 4, ports 109 and 110 are provided at different axial positions).
It would have been obvious to one of ordinary skill in the art before the application was effectively filed to modify the device of Ishimitsu such that the distribution passages extend outwardly at a plurality of axial positions as taught by Kuhn for the purpose of providing greater distribution of the oil along the axis of the valve to thereby improve cooling.
Regarding Claim 28, Ishimitsu in view of Kuhn does not disclose the plurality of axial positions include at least three axial positions. However, a modification of providing the distribution passages at three axial positions rather than at two axial positions as taught by Ishimitsu in view of Kuhn requires a mere duplication of parts and it has been generally held that a mere duplication of parts is within the level of ordinary skill in the art (MPEP 2144.04),
Therefore, it would have been obvious to one of ordinary skill in the art before the application was effectively filed to modify the device of Ishimitsu in view of Kuhn such that the plurality of axial positions includes any number of axial positions, including at least three axial positions, for the purpose of providing greater distribution of the oil along the axis of the valve to thereby improve cooling.
Allowable Subject Matter
Claims 29-31 and 33 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments with respect to claim(s) 14 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Specifically, applicant argues that the previously applied art fails to teach the new limitations of the injection passage extending through a first exterior surface outside of the shell and a second exterior surface inside of the shell. However, as described above, newly applied Ishimitsu teaches an injection passage extending through a first exterior surface outside of a shell 21 (via inlet 37a) and a second exterior surface inside of the shell 21 (via holes 21f).
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.
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/KEVIN F MURPHY/Primary Examiner, Art Unit 3753
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