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 .
Election/Restrictions
Applicant’s election without traverse of Species I (Claims 1-3) in the reply filed on 08/06/2026 is acknowledged.
Claims 4-6 have been canceled.
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 “wherein the poppet valve is located on the rod end side and is operable to be opened by the pressure of the hydraulic fluid from the rod end hydraulic chamber to permit the flow of hydraulic fluid through the poppet valve and is operable to close by increasing the pressure of the hydraulic fluid from the rod end hydraulic fluid chamber” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The poppet valve as disclosed and seen in applicant’s Species I (Fig. 2, 8, 16-19 in which the poppet is located on the rod side of the piston) does not appear to be operable to close by increasing the pressure of the hydraulic fluid from the rod end hydraulic fluid chamber. An increase in pressure of the rod end hydraulic fluid chamber appears to cause the poppet valve to open as seen in applicant’s Fig. 18. It is unclear how the poppet valve can be both opened and closed with pressure from the rod end fluid chamber.
Applicant’s paragraph [0047] discloses that the poppet valve 41 is closed in Fig. 19, however, Fig. 19 does not appear to show the poppet valve closed in a manner consistent with Figs. 17-18. Figs. 17-18 show the poppet valve being in the open position and this same position is seen in Fig. 19 when it is supposedly closed.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “21” has been used to designate both "the piston bypass assembly" in paragraph [0041], [0046]-[0047] and also a "rod end inlet" in paragraph [0039].
Applicant's drawings do not appear to use "21" to point to a piston by pass assembly.
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.
Specification
The disclosure is objected to because of the following informalities:
The specification does not appear to support the claimed limitation of:
“wherein the poppet valve is located on the rod end side and is operable to be opened by the pressure of the hydraulic fluid from the rod end hydraulic chamber to permit the flow of hydraulic fluid through the poppet valve and is operable to close by increasing the pressure of the hydraulic fluid from the rod end hydraulic fluid chamber”
The poppet valve as disclosed and seen in applicant’s Species I (Fig. 2, 8, 16-19 in which the poppet is located on the rod side of the piston) does not appear to be operable to close by increasing the pressure of the hydraulic fluid from the rod end hydraulic fluid chamber. An increase in pressure of the rod end hydraulic fluid chamber appears to cause the poppet valve to open as seen in applicant’s Fig. 18. It is unclear how the poppet valve can be both opened and closed with pressure from the rod end fluid chamber.
Appropriate correction is required.
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 1-3 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant’s disclosure does not appear to support the limitation of:
“wherein the poppet valve is located on the rod end side and is operable to be opened by the pressure of the hydraulic fluid from the rod end hydraulic chamber to permit the flow of hydraulic fluid through the poppet valve and is operable to close by increasing the pressure of the hydraulic fluid from the rod end hydraulic fluid chamber”
The poppet valve as disclosed and seen in applicant’s Species I (Fig. 2, 8, 16-19 in which the poppet is located on the rod side of the piston) does not appear to be operable to close by increasing the pressure of the hydraulic fluid from the rod end hydraulic fluid chamber. An increase in pressure of the rod end hydraulic fluid chamber appears to cause the poppet valve to open as seen in applicant’s Fig. 18. It is unclear how the poppet valve can be both opened and closed with pressure from the rod end fluid chamber.
Please point to where the bolded imitation is supported in the disclosure with respect to the elected species I.
Claims 1-3 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 claims(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.
Claims 1-3 are nonenabling because one having ordinary skill in the art could not make or use the invention from the disclosure coupled with information known in the art without undue experimentation. An analysis of the Wands factors reveals that the following factors weigh against enablement:
Wands factors
C. The state of the prior art.
The prior art does not appear to disclose the claimed invention in the manner claimed having the function of: “wherein the poppet valve is located on the rod end side and is operable to be opened by the pressure of the hydraulic fluid from the rod end hydraulic chamber to permit the flow of hydraulic fluid through the poppet valve and is operable to close by increasing the pressure of the hydraulic fluid from the rod end hydraulic fluid chamber”
D. The level of one of ordinary skill.
One of ordinary skill would not know how to make and use the invention as claimed because the claimed function appears to contradict conventional understanding of fluid pressure cylinders and valve actuation. One of ordinary skill in the art would not know how the rod side pressure is able to open and close the poppet valve when the pressure acts only in one direction on the poppet valve.
E. The level of predictability in the art.
The level of predictability in the art is fairly predictable, as hydraulic fluid principles are known and can be expected to follow the laws of fluid dynamics. It is expected that an increase in pressure of the rod end hydraulic fluid chamber appears to cause the poppet valve to close. Please point to where the bolded imitation is supported in the disclosure with respect to the elected species I.
F. The amount of direction provided by inventor.
The disclosure does not appear to discuss the claimed function of: “wherein the poppet valve is located on the rod end side and is operable to be opened by the pressure of the hydraulic fluid from the rod end hydraulic chamber to permit the flow of hydraulic fluid through the poppet valve and is operable to close by increasing the pressure of the hydraulic fluid from the rod end hydraulic fluid chamber”
G. The existence of working examples.
There do not appear to be any working examples of the device as claimed by applicant. “wherein the poppet valve is located on the rod end side and is operable to be opened by the pressure of the hydraulic fluid from the rod end hydraulic chamber to permit the flow of hydraulic fluid through the poppet valve and is operable to close by increasing the pressure of the hydraulic fluid from the rod end hydraulic fluid chamber”
H. The quantity of experimentation.
An undue amount of experimentation appears to be required to make and use the claimed invention because the claims recite a function that does not appear to be physically possible with applicant's disclosed invention. The poppet valve as disclosed and seen in applicant’s Species I (Fig. 2, 8, 16-19 in which the poppet is located on the rod side of the piston) does not appear to be operable to close by increasing the pressure of the hydraulic fluid from the rod end hydraulic fluid chamber. An increase in pressure of the rod end hydraulic fluid chamber appears to cause the poppet valve to open as seen in applicant’s Fig. 18. It is unclear how the poppet valve can be both opened and closed with pressure from the rod end fluid chamber.
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)).
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 1-3 are not enabled.
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 1-3 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 1 recites “wherein the poppet valve is located on the rod end side and is operable to be opened by the pressure of the hydraulic fluid from the rod end hydraulic chamber to permit the flow of hydraulic fluid through the poppet valve and is operable to close by increasing the pressure of the hydraulic fluid from the rod end hydraulic fluid chamber”. It is not understood how the poppet valve can be opened and closed by the pressure of the hydraulic fluid from the rod end hydraulic chamber. It is unclear whether there is a typo in the claims or this is the intended limitation.
The poppet valve as disclosed and seen in applicant’s Species I (Fig. 2, 8, 16-19 in which the poppet is located on the rod side of the piston) does not appear to be operable to close by increasing the pressure of the hydraulic fluid from the rod end hydraulic fluid chamber. An increase in pressure of the rod end hydraulic fluid chamber appears to cause the poppet valve to open as seen in applicant’s Fig. 18. It is unclear how the poppet valve can be both opened and closed with pressure from the rod end fluid chamber.
Dependent claims 2-3 are indefinite because they depend from indefinite claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sifri et al. (US 3654831), Tetrick (US 10746202), Noble (US 7739941), Liebert (US 4023363), Spiers (US 4860646), Massaccesi et al. (US 7168360), Foster (US 8683910), Hoover (US 4337687), Hillier (US 4729283) Mauritz (US 6170383), Mauritz (US 5425305), Neilan (US 3182563) , Wilson (US 3587407), Foster (US 9010234) all disclose pertinent hydraulic cylinders structures including various configurations of valves through the piston similar to the present application
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Dustin T Nguyen whose telephone number is (571)270-0163. The examiner can normally be reached M - F: 8:00am - 4:30pm.
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/DUSTIN T NGUYEN/Primary Examiner, Art Unit 3745 August 20, 2026
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