0)
`
`m EPA/EPO/OEB
`
`D-80298Milnchen
`
`+49 89 2399-0
`if
`523 656 epmu d
`TX
`FAX +49 89 2399-4465
`
`Europaisches
`
`European
`
`Office européen
`
`Patentamt
`
`Generaldlrektion 2
`
`Patent Office
`
`Directorate General 2
`
`des brevets
`
`Direction Generale 2
`
`Harrison, David Christopher
`M EWBU RN ELLIS
`YOi‘k HOUSE
`23 Kingsway
`London WC2B 6HP
`ROYAU M E—U NI
`
`7
`
`Telephone numbers:
`
`Primary Examiner
`(substantive examination)
`Formalities Officer /Assistant
`(Formalities and other matters)
`
`+49 89 2399-7280
`
`+49 89 239972698
`
`
`
`
`
`Application No.
`01 309 671.4 - 2422
`
`Applicant
`G.W. Lisk Company, Inc.
`
`Ref.
`DCH/FP5968615
`
`Date
`31.03.2004
`
`Communication pursuant to Article 96(2) EPC
`
`The examination of the above-identified application has revealed that it does not meet the requirements
`of the European Patent Convention for the reasons enclosed herewith. If the deficiencies indicated are
`not rectified the application may be refused pursuant to Article 97(1) EPC.
`
`You are invited to file your observations and insofar as the deficiencies are such as to be rectifiable, to
`correct the indicated deficiencies within a period
`
`of
`
`4 months
`
`from the notification of this communication, this period being computed in accordance with Rules 78(2)
`and 83(2) and (4) EPC.
`
`One set of amendments to the description, claims and drawings is to be filed within the said period on
`separate sheets (Rule 36(1) EPC).
`
`Failure to comply with this invitation in due time will result in the application being deemed to be
`withdrawn (Article 96(3) EPC).
`
`‘2
`
`a"
`
`39
`g
`
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`$8
`4L:
`
`.
`
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`B '
`
`””79 3:39“)
`
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`
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`‘3
`°‘
`’00
`99
`
`RUSAN U |
`Primary Examiner
`for the Examining Division
`
`Enclosure(s):
`
`5 page/s reasons (Form 2906)
`
`Registered Letter
`EPO Form 2001 07.02CSX
`
`PP0001
`
`PPNA
`
`Exhibit 1008
`
`PP0001
`
`

`

`
`
`
`
`I (Annexe) escheid/Protokoll (Anlage) Communication/Minutes (Annex) Notification/Proces-verba
`
`
`
`Datum
`Date
`Date
`
`Blatt
`Sheet
`31.03.2004
`Feuille
`
`1
`
`Anmelde-Nr.:
`
`Application No.:
`01 309 671.4
`Demande n°:
`
`IB
`
`
`
`
`
`
`
`
`
`The examination is being carried out on the following application documents:
`
`Text for the Contracting States:
`
`
`
`
`AT BE CH CY DE DK ES Fl FR GB GR IE IT LU MC NL PT SE TR LI
`
`
`
`Description, pages:
`
`1-11
`
`as originally filed
`
`
`
`Claims, No.:
`
`1-22
`
`as originally filed
`
`
`
`Drawings, sheets:
`
`1/3-3/3 as originally filed
`
`The following documents are referred to in this communication; the numbering will be ad­
`
`
`
`
`
`hered to in the rest of the procedure: DE 1 268 494 (01 ), US 4 133 250 (02) and FR 2 748
`785 (03).
`
`
`
`1. Independent claims 1 and 20 -lack of conciseness
`
`
`
`Claims 1 and 20 have been drafted as separate independent claims. Under Article 84 in
`
`
`
`
`
`
`
`
`combination with Rule 29(2) EPC an application may contain more than one independent
`
`
`
`
`
`
`claim in a particular category only if the subject matter claimed falls within one or more of
`
`
`
`
`
`the exceptional situations set out in paragraphs (a), (b) or (c) of Rule 29(2) EPC. This is
`
`
`
`
`
`not the case in the present application however, because there is not a plurality of itner­
`
`related products.
`
`
`
`2. Independent claims 1, 12 and 20 -lack of novelty
`
`2.1 The document 01 discloses (the references applying to this document, see figure 1 ):
`
`
`
`
`
`
`
`
`
`
`
`
`a two-stage proportional control valve assembly comprising: a flow-regulating valve 2 that
`
`
`
`
`
`
`regulates a flow of a first fluid; a double-acting actuator 6 powered by a second fluid for
`
`
`
`
`moving the flow-regulating valve 2 in different open and closed directions for
`
`EPO Form 2906 01.91 CSX
`
`PP0002
`
`

`

`
`
`
`
`I (Annexe) escheid/Protokoll (Anlage) Communication/Minutes (Annex) Notification/Proces-verba
`
`
`
`IB
`
`Datum
`Date
`Date
`
`Blatt
`Sheet
`31.03.2004
`Feuille
`
`2
`
`Anmelde-Nr.:
`
`Application No.:
`01 309 671.4
`Demande n°:
`
`
`
`
`
`the directional valve 16 being movable under influence of the electrical actuator 15
`
`correspondingly opening and closing the flow-regulating valve 2; a directional valve 16 that
`
`
`
`
`
`
`
`
`
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`controls a flow of the second fluid to the double-acting actuator 6; an electrical actuator 15
`
`
`
`
`
`that converts a control signal into a force acting on the directional valve 16 for adjusting a
`
`
`
`position of the double-acting actuator 6 in accordance with the control signal; the
`
`
`double-acting actuator 6 having
`(a)a first surface (of the piston 5) arranged for exposure to fluid pressure of the second
`
`
`
`
`
`
`
`
`fluid for moving the flow-regulating valve 2 in the open direction and
`
`
`
`
`
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`(b)a second surface arranged for exposure to fluid pressure of the second fluid for moving
`
`
`
`the flow-regulating valve 2 in the closed direction; and
`
`
`
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`between
`
`
`
`
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`double-acting actuator 6 and
`
`
`
`
`
`
`
`double-acting actuator 6 (see column 3, lines 44-53).
`
`
`
`
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`(a)a first position that directs a flow of the second fluid to the first surface of the
`
`
`
`(b)a second position that directs a flow of the second fluid to the second surface of the
`
`
`
`
`
`
`
`The subject-matter of claim 1 is therefore not new (Article 54(1) and (2) EPC).
`
`2.2 Document 01 also discloses the corresponding method applied to claim 1: a method
`
`
`
`
`
`
`
`
`
`
`
`of controlling flow rates of a first fluid utilizing fluid pressure supplied by a second fluid
`
`comprising the steps of:
`directional valve 16 thate into a force imparted to a
`
`
`
`
`
`-converting an electrical signal x
`
`
`
`controls a flow of the second fluid to a double-acting actuator 6;
`
`
`
`
`
`
`- moving the directional valve 16 in response to the force converted from the electrical
`
`
`
`
`
`
`signal between a first position that directs a flow of the second fluid to a first surface (see
`
`
`
`
`piston 5) of the double-acting actuator 6 and a second position that directs a flow of the
`
`
`
`
`
`second fluid to a second surface of the double-acting actuator 6;
`- providing feedback between the double-acting actuator 6 and the directional valve 16 (via
`
`
`
`
`
`
`
`
`
`arm 4) that overcomes the force imparted to the directional valve 16 and restores the
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`
`
`
`
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`directional valve 16 to a neutral position at which differential flows of the second fluid to
`
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`the first and second surfaces are blocked;
`-moving the double-acting actuator 6 through a range of positions corresponding to
`
`
`
`
`
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`different amounts of the feedback between the double-acting actuator and the directional
`
`
`
`valve at the neutral position of the directional valve; and
`- linking movement of the double-acting actuator to movement of a flow-regulating valve
`
`
`
`
`
`
`
`
`that controls flow rates of the first fluid for changing flow rates of the first fluid through the
`
`
`
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`flow-regulating valve in response to changes in the electrical signal.
`
`EPO Form 2906 01.91 CSX
`
`PP0003
`
`

`

`I Bescheid/Protokoll (Anlage)
`
`Datum
`Date
`Date
`
`31.03.2004
`
`Communication/Minutes (Annex)
`
`Notification/Proces-verba I (Annexe)
`
`Blatt
`Sheet
`Feuille
`
`3
`
`Anmelde-Nr.:
`Application No.: 01 309 671.4
`Demande n°:
`
`The subject-matter of claim 12 is therefore not new (Article 54(1) and (2) EPC).
`
`2.3 The document 02 discloses (the references applying to this document - see figure 1 ):
`a proportional control valve for regulating movement of a device comprising: a
`double-acting actuator 6 movable under the influence of fluid power; the double-acting
`actuator 6 being connected to the device (via output rod 10) for imparting corresponding
`movements to the device; the double-acting actuator 6 having (see piston 5)
`(a) a first surface arranged for exposure to fluid pressure for imparting movement to the
`double-acting actuator in a first direction and
`(b) a second surface arranged for exposure to fluid pressure for imparting movement to the
`double-acting actuator in a second direction;
`a directional valve 24 that regulates flows of fluid to and from the first and second surfaces
`of the double-acting actuator 6; an electrical actuator 14 that converts a control signal xi
`into a force acting on the directional valve 24; the directional valve 24 being movable under
`influence of the electrical actuator 14 between (see column 4, lines 18-44)
`(a) a first position that directs flows of fluid to the first surface of the double-acting actuator
`and away from the second surface of the double-acting actuator for moving the
`double-acting actuator in the first direction,
`(b) a second position that directs flows of fluid to the second surface of the double-acting
`actuator and from the first surface of the double-acting actuator for moving the
`double-acting actuator in the second direction, and
`(c) a neutral position (column 4, lines 21-25) that blocks differential flows of fluid to and
`from the first and second surfaces of the double-acting actuator for preventing further
`movement of the double-acting actuator in the first and second directions; a feedback
`mechanism 2 (including lever 44) connecting the double-acting actuator to the directional
`valve for imparting a feedback force in response to movement of the double-acting actuator
`that restores the directional valve to a neutral position; a spacing between the
`double-acting actuator and the directional valve being related to the feedback force; and
`the feedback force being related to the force converted from the electrical signal for
`regulating movement of the device in accordance with the control signal.
`
`The subject-matter of claim 20 is therefore not new (Article 54(1) and (2) EPC).
`
`3. Dependent claims
`
`These claims contain a plurality of features which relate to further developments of the
`subject matter of independent claims which do not meet the requirements of Article 52(1)
`EPC.
`
`EPO Form 2906 01.91 CSX
`
`PP0004
`
`

`

`
`
`ApplicationNo.: O]. 309 671.4
`4
`Sheet
`31. 03.2004
`Date
`
`Date Demande n°: Feuille
`
`
`Com munication/Minutes (Annex)
`
`Blatt
`
`Bescheid/Protokoll (An lage)
`
`0)) Datum
`
`Notification/Procés-verbaI (Annexe)
`
`AnmeldeeNr;
`
`It is, at this stage of the procedure, not possible to foresee which combination of features
`
`can be considered as involving an inventive step, in particular because the features of
`
`several of these claims are known, or made obvious by the prior art documents cited in the
`
`search report (see, for example, D3 - disclosing the feedback spring 14 connecting the
`
`spool 9 to the double-acting actuator 3 and all the features derived from that).
`
`4. Further prosecution
`
`4.1 It is not at present apparent which part of the application could serve as a basis for a
`
`new, allowable claim. Should the applicant nevertheless regard some particular matter as
`
`patentable, an independent claim should be filed taking account of Rule 29(1) EPC. The
`
`applicant should also indicate in the letter of reply the difference of the subject-matter of
`
`the new claim vis-a-vis the state of the art and the significance thereof.
`
`4.2 The claim relating to the method of controlling flow rates should be properly defined,
`
`according to the Guidelines for Examination, Part C-lll 3.7a.
`
`4.3 The features of the claims should be provided with reference signs placed in
`
`parentheses to increase the intelligibility of the claims (Rule 29(7) EPC). This applies to
`
`both the preamble and characterising portion (see the Guidelines, C-lll, 4.11).
`
`4.4 To meet the requirements of Rule 27(1)(b) EPC, the documents D1-D3 should be
`
`identified in the description and the relevant background art disclosed therein should be
`
`briefly discussed.
`
`4.5 When filing amended claims the applicant should at the same time bring the
`
`description into conformity with the amended claims. Care should be taken during revision,
`
`especially of the introductory portion and any statements of problem or advantage, not to
`
`add subject-matter which extends beyond the content of the application as originally filed
`
`(Article 123(2) EPC).
`
`4.6 In order to facilitate the examination of the conformity of the amended application with
`
`the requirements of Article 123(2) EPC, the applicant is requested to clearly identify the
`
`amendments carried out, irrespective of whether they concern amendments by addition,
`
`replacement or deletion, and to indicate the passages of the application as filed on which
`these amendments are based.
`
`If
`
`the applicant regards it as appropriate these indications could be submitted in
`
`EPO Form 2906 01 .9fCSX
`
`PP0005
`
`PP0005
`
`

`

`
`
`Bescheid/Protokoll (An Iage)
`
`Com munication/Minutes (Annex)
`
`Notification/Procés-verbaI (Annexe)
`
`0)
`
`Datum
`
`ApplicationNo.: O]. 309 671.4
`5
`Sheet
`31. 03.2004
`Date
`
`Date Demande n°: Feuilie
`
`
`Blatt
`
`AnmeldeeNr;
`
`handwritten form on a copy of the relevant parts of the application as filed.
`
`EPO Form 2906 01‘91CSX
`
`PP0006
`
`PP0006
`
`