DETAILED ACTION
This action is in response to the initial filing dated 7/28/2025. Claims 1-19 are pending.
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 .
Information Disclosure Statement
The information disclosure statement filed 9/30/2025 is acknowledged and has been considered by the examiner.
Drawings
The drawings were received on 7/28/2025. These drawings are acceptable.
Claim Interpretation
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 following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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: “a first sealing element” in claim 1, line 19 and “a second sealing element” in claim 1, line 21.
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 1 recites the limitation “a first sealing element” in line 19. The recitation of “a first sealing element” is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. A review of the originally filed disclosure dated 7/28/2025 indicates that the recitation of “a first sealing element” includes “a bellows” and equivalents thereof (see at least paragraph [0044]).
Claim 1 recites the limitation “a second sealing element” in line 21. The recitation of “a second sealing element” is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. A review of the originally filed disclosure dated 7/28/2025 indicates that the recitation of “a second sealing element” includes “a bellows” and equivalents thereof (see at least paragraph [0045]).
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 8 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 8 of prior U.S. Patent No. 12,398,808. This is a statutory double patenting rejection.
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 1-7 and 9-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 9-19 of U.S. Patent No. 12,398,808. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-7 and 9-19 of U.S. Patent No. 12,398,808 “anticipates” Application claims 1-7 and 9-19. Accordingly, Application claim 1-7 and 9-19 are not patentably distinct from U.S. Patent No. 12,398,808 claims 1-7 and 9-19.
It is apparent that the more specific Patent claim 1 encompasses Application
claim 1. Following the rationale of In re Goodman cited in the preceding paragraph,
here applicant has once been granted a patent containing a claim for a specific or
narrower invention, Applicant may not then obtain a second patent with a claim for the
generic or broader invention without first submitting an appropriate terminal disclaimer.
Note that since Application claim 1 is anticipated by Patent claim 1 and since
anticipation is the epitome of obviousness, then Application claim 1 is obvious over
Patent claim 1.
Similarly, Application claims 2-7 and 9-19 are rejected on the grounds of nonstatutory double patenting as being unpatentable over Patent claims 2-7 and 9-19.
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) 1-3 and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Richards (US 2,376,383).
Regarding claim 1, the Richards reference discloses a valve assembly having:
a first fixed plate (4) at a first end of the valve, the first fixed plate having a first side (considered the side of the plate 4 facing to the left in the orientation depicted in the figure) and a second side (considered the side of the plate 4 facing to the right in the orientation depicted in the figure) defining a first fixed plate thickness, the first plate having an opening (it is considered that the valve member 24 is slidable within the opening) extending through the first fixed plate;
a second fixed plate (3) at a second end of the valve, the second fixed plate having a first side (considered the side of the plate 3 facing to the left in the orientation depicted in the figure) and a second side (considered the side of the plate 3 facing to the right in the orientation depicted in the figure) defining a second fixed plate thickness, the second fixed plate having an opening (it is considered that element 9 is received within the opening) extending through the second fixed plate thickness, the first side of the second fixed plate facing and spaced from the second side of the first fixed plate (see the figure);
a movable plate (it is considered that the combination of 17 and 18 define a movable plate) positioned between the first fixed plate and the second fixed plate (see the figure), the movable plate having a first side (considered the side of the plate 17 facing to the left in the orientation depicted in the figure) and a second side (considered the side of the plate 18 facing to the right in the orientation depicted in the figure) defining a movable plate thickness, the first side of the movable plate facing the second side of the first fixed plate and the second side of the movable plate facing the first side of the second fixed plate, the movable plate having a needle (it is considered that the portion of the plate 17 that surrounds the chamber 15 constitutes a needle) extending from the first side of the movable plate, the needle having a needle end sized to fit within the opening in the first fixed plate (see the figure), the movable plate having at least one opening (it is considered that the combination of the opening 16, chamber 15 and the opening through which the stem 8 extends constitutes at least one opening) extending through the movable plate thickness adjacent the needle;
a first sealing element (it is considered that the bellows 20 constitutes a first sealing element) between the first fixed plate and the movable plate; and
a second sealing element (it is considered that the bellows 19 constitutes a second sealing element) between the second fixed plate and the movable plate.
In regards to claim 2, the Richards reference discloses a first conduit (2) extending from the first side of the first fixed plate (4).
In regards to claim 3, the Richards reference discloses a second conduit (1) extending from the second side of the second fixed plate (3).
In regards to claim 9, the Richards reference discloses wherein each of the first sealing member (20) and the second sealing member (19) comprises bellows (see at least the figure).
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.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Richards (US 2,376,383) in view of Baik (US Pre-Grant Publication 2018/0356036).
In regards to claim 10, the Richards reference does not expressly disclose wherein the bellows comprises a high temperature material.
However, the Baik reference teaches a valve assembly having a valve needle (34) that is movable relative to an opening in a first member (40) wherein a bellows (32) is provided within the valve assembly wherein the bellows is made is made of stainless material that is able to be heated up by high temperature gas (see paragraph [0044]).
Therefore, it would have been obvious to a person having ordinary skill in the art before effective filing date of the claimed invention to have made the bellows in the device disclosed by Richards using a high temperature material as taught by the Baik reference since it has been held that selecting a particular known material is within the general skill of a worker in the art on the basis of its suitability for the intended as a material of obvious engineering choice use based upon particular application requirements.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Russell (US 6378841) discloses a valve assembly having a rotary valve wherein an actuator includes: an actuator ring (50), the actuator ring having a plurality of inwardly directed engagement elements (52) on an inside surface thereof; at least two rotary elements (76) within the actuator ring, each of the rotary elements having a plurality of outwardly directed engagement elements on an outside surface thereof, each of the outward directed engagement elements configured to cooperatively interact with the inwardly directed engagement elements of the actuator ring.
Mizuno et al. (US 5,881,957) discloses a valve assembly having a needle that includes a conical tip (25a) that is a non-linear taper.
Regueiro (US 5,353,992), Iwata (US 4,413,781), and Murray (US 4,196,886) disclose various valve assemblies that include a needle that include conical tips having a linear taper.
Satoh et al. (US 4948091), Trimble (US 4240610), Lin et al. (US 20220049788), Pohjola (US 20210139349) and Choi (US 20160273660) disclose various valve assemblies having a movable plate that is operated to translate a needle valve relative to an opening in a fixed housing member.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andrew J. Rost whose telephone number is (571) 272-2711. The examiner can normally be reached on Monday-Friday from 8:00 am to 4:30 pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Craig Schneider can be reached at 571-272-3607 or Kenneth 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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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) Form at https://www.uspto.gov/patents/uspto-automated-interview-request-air-form.
/ANDREW J ROST/Examiner, Art Unit 3753
/CRAIG M SCHNEIDER/Supervisory Patent Examiner, Art Unit 3753
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