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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03 October 2025 has been entered.
Response to Arguments
Applicant's arguments filed 03 October 2025 have been fully considered but they are not persuasive. Applicant argues that the claim limitations of “doughnut-shape form factor,” and its ability to “generate a self-cleaning stream pattern” as well as “the filtered fluid is free from the separated particulate material” is enabled by the instant filed disclosure. The Examiner respectfully disagrees. The Applicant makes arguments that the applied Wands factors (F, G and H) by the Examiner, respectively as 1. Amount of Guidance Provided; 2. Presence or Absence of Working Examiners and 3. Quantity of Experimentation Necessary. As to Wands factor 1. Amount of Guidance Provided in the Specification, Applicant argues that inlet diameters values, cavity internal diameter value and volumetric flow rate values, allegedly “collectively define the acceleration nozzle geometry and the doughnut-shaped cavity,” and that these dimensional values allegedly enable a skilled artisan to construct and operate the unit using standard fluid dynamics principles. The Examiner respectfully disagrees. The inlet diameter values and flow rate values do not define or provide any guidance to determining/forming the recited cavity’s “doughnut-shaped form factor.” Although claim 1 now recites: “an internal diameter of the cavity is in a range of 15 mm to 17 mm,” it is unclear as to what dimensional/diameter aspect of the cavity is being limited. The limitation “internal diameter” does not appear in the instant specification. A doughnut-shaped cavity (i.e. a toroid, wherein amended instant independent claim 1 now recites: “wherein the doughnut-shape form factor is an annular cavity having a toroidal configuration,” however, the instant filed specification does not include the terms “annular cavity” and “toroidal configuration”) exhibits at least four dimensional types of “diameters,” being an outer diameter D1, an inner diameter D2, a major diameter D3 value indicating a central diameter between the outer and the inner diameters, as well as a minor diameter value D4 relating to a cross-section of the doughnut-shaped/toroidal cavity, as depicted below.
[AltContent: ]
[AltContent: textbox (D4)][AltContent: arrow][AltContent: ][AltContent: ]
[AltContent: ][AltContent: arrow][AltContent: arrow][AltContent: ]
[AltContent: textbox (D1)]
[AltContent: textbox (D3)][AltContent: arrow]
[AltContent: textbox (D2)]
As such, it is unclear as to which of these four diameters related to a toroid the claim limitation “internal diameter” is referring, which fails to provide any further definition or guidance for one of ordinary skill in the art to determine the “form factor” of the doughnut-shaped/toroidal cavity.
As to 2. Presence or Absence of Working Examples, Applicant admits that the specification does not include physical prototypes, and, allegedly, the amended claims now serve as a constructive working example, and quotes paras 0065 and 0070 provide a reproducible framework for implementation. The Examiner respectfully disagrees. Para 0065 states “a diameter D3 of a maximum aperture (which is assumed to correspond to D1 in the Figure above), but the amended claim only recites “internal diameter,” not “maximum aperture.” There is no further constructive working example created by the claims, since the other diameters/dimensional aspects (D2 to D4) of the doughnut-shaped/toroidal cavity provided, thus the ”form factor” cannot be produced by one of ordinary skill in the art based solely on the instant disclosure.
As to 3. Quantity of Experimentation Necessary, Applicant argues that the quantity of experimentation is minimal and routine, and alleges the claim’s specificity ensures that the invention can be practiced without undue trial-and-error, since functional outcomes, such as prevention of particulate deposition and effective outflow of separated material, being cause-and-effect relationships allegedly confirms that the invention is fully enabled. The Examiner respectfully disagrees. At a fundamental level, the “form factor” geometry of the doughnut-shaped/toroidal cavity is essentially the critical and/or fundamental “cause” of any outcomes recited in the claims, based on the instant filed specification, which is clearly not provided, as pointed out above in regards to the provided Figure. The instant filed specification states in para 0038: “In this regard and in accordance with various example embodiments described herein, the particle separating zone of the filter-less particle separation unit includes at least one cavity of a defined form factor (emphasis added). In this example aspect, the at least one cavity, because of its form factor and geometry, is operable to generate a self-cleaning stream pattern of the fluid and separate out particulate material from the fluid (emphasis added). The instant specification additionally states in para 0065: ” The at least one cavity 358 of the particle separation unit 314, due to its form factor (emphasis added), is operable to generate the self-cleaning stream pattern of fluid flow that prevents any deposition of particulate material on an internal surface of the particle separation unit 314 (emphasis added). The instant specification additionally states in para 0083: “The cavity of the filter-less particle separation unit 702 due to its unique form factor (emphasis added), facilitates separation of the particulate material, like dust particles from the fluid based on its size and inertia, in a similar manner, as described in reference to FIG. 4. As such, the “unique” and “defined” form factor geometry is the essential, critical and fundamental “cause” of the recited “effects” or results of functional outcomes regarding a self-cleaning stream pattern, creation of a turbulent flow and wherein the filtered fluid is free from the separated particulate material is not provided by the instant disclosure, thus requiring an undue amount of experimentation required to achieve the required unique/defined form factor.
Additional evidence of the existence of a required, yet undisclosed, unique/defined form factor geometry of the doughnut-shaped/toroidal cavity is suggested by the instant filed Figures, which is indicated by a portion of instant Fig. 4 which is reproduced below, emphasizing the outer cross-sectional shape of the doughnut-shaped/toroidal cavity. Based on the instant filed Figures, in particular Figs. 3 and 4, the doughnut-shaped cavity form factor is toroidal, but not a torus, which is formed specifically by rotating a circle around an external axis, but appears to depict the required/necessary shape/geometry in cross-section, including undefined curved portions and flat portions, although it is wholly unclear, since the instant specification fails to state that instant filed Figs. 3 and 4 are to scale and the Figures are simply general illustrations of the doughnut-shaped/toroidal cavity form factor geometry, thus failing to provide any concrete or specific limitations (i.e. dimensional aspects, geometry, shape, etc.) of the doughnut-shaped/toroidal cavity form factor oof the instant invention.
[AltContent: textbox (undefined curved portion)]
[AltContent: arrow][AltContent: arrow]
[AltContent: arrow][AltContent: arrow][AltContent: textbox (flat portion)][AltContent: arrow]
PNG
media_image1.png
408
804
media_image1.png
Greyscale
[AltContent: textbox (flat portion)]
As such, based on the Applicant’s filed disclosure, there exists an undisclosed, undefined, yet required form factor geometry of the doughnut-shaped/toroidal cavity, that gives rise to the resulting recited flow and particle separation behavior, thus the claimed invention is not enabled, or adequately defined/disclosed and the rejections under 35 U.S.C. 112(a) are maintained.
Applicant then argues that the rejections of claims 1, 5-8 and 10 under 35 U.S.C. 112(b) in regards to the claim limitations of “doughnut-shape” and “form factor” are allegedly overcome due to amendments of the claimed invention and definiteness is provided by the instant filed specification paras 0046 and 0064 allegedly providing mathematical precision, in regards to limitations of “extends outwardly in a direction perpendicular to the inlet 102” and “extends out from the acceleration nozzle 355 and protrudes further at two ends” in conjunction within instant Fig. 4. There is no “mathematical precision” provided by these specification paragraphs, just a general indefinite description of some aspects of the cavity, that is, no actual definition/description of the overall form factor geometry defining the ”doughnut-shape” being “toroidal” or the required “form factor” geometry. As pointed out previously, instant Fig. 4 is just an general depiction of the doughnut-shaped cavity and associated form factor geometry, and provides no definiteness, since the Figure is not to scale, thus provides no further definiteness to the exact geometry required of the cavity and the doughnut-shape. Applicant argues that other dimensional aspects regarding inlet-to-nozzle and cavity-to-nozzle ratios provide definiteness, however, these ratios do not define the required geometry of the doughnut-shaped cavity itself, only other structure related to the doughnut-shaped cavity. As such, the rejections of claims 1, 5-8 and 10 under 35 U.S.C. 112(b) are maintained.
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, 5-8 and 10 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 claim(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. Instant independent claim 1 recites the limitations: “a cavity having a form factor defined by a doughnut shape of the cavity” and resulting in “the filtered fluid is free from the separated particulate material” and “wherein the cavity of the particle separation zone is operable to generate a self-cleaning stream pattern of the fluid to separate the particulate material present in the fluid based on at least one of: an inertia or a size of the particulate material,” as well as other claimed results. The instant disclosure fails to provide sufficient detailed geometrical aspects of the “doughnut-shape” (i.e. specific cross-sectional dimensions/sizes and overall specific geometry, except for an undefined/indefinite limitation of “an internal diameter of the cavity is in the range of 15mm to 17 mm”) which allegedly is tied to the desired result of: “operable to generate a self-cleaning stream pattern,” and resulting in “the filtered fluid is free from the separated particulate matter,” or any specific guidance and/or instructions in determining the “form factor” (i.e. geometry, which is recited in both instant independent claim 1 and instant dependent claim 10) which defines the “doughnut shape,” thus failing to enable one of ordinary skill in the art to make and/or use the instant claimed invention. Based on instant filed specification paras 0038, 0065 and 0083, a required “unique” and “defined” doughnut-shaped cavity form factor geometry exists to provide the resulting claimed limitations of “self-cleaning pattern” and “filtered fluid is free from the separated particulate material.” The limitation “doughnut-shape” is not defined within the instant specification, nor are there sufficient details/definitions of the overall required geometry of the cavity provided in regards to the “form factor” of the cavity (i.e. the entire required specific geometry, size, dimensional aspects, etc.) which defines the “doughnut-shape.” While the instant filed Figures appear to illustrate a general shape of cavity, the instant filed specification does not state that the instant filed Figures are to scale, but appear to disclose a required form factor/shape/geometry, and thus fail to provide any guidance to one having ordinary skill in the art to make and/or use the instant invention. Applying the Wands factors (see In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), Wands factor (F), being the amount of direction provided by the inventor, it is clear the instant disclosure fails to provide sufficient direction and/or instructional details in determining the required “form factor” (i.e. geometry, which recited in both instant independent claim 1 and instant dependent claim 10) of the “doughnut shape” to provide the desired claimed operational results of a “self-cleaning stream pattern,” and resulting in “the filtered fluid is free from the separated particulate material.” Wands factor (G), being the existence of working examples, the instant disclosure fails to disclose any details of any working examples of appropriate “form factors” of the “doughnut shape” to provide a “self-cleaning stream pattern,” and resulting in “the filtered fluid is free from the separated particulate material.” Wands factor (H), being the quantity of experimentation needed to make or use the invention based on the content of the disclosure, the instant disclosure, as pointed out previously, does not provide sufficient directions, instructions or geometrical aspects to determine the “form factor” of the “doughnut shape” cavity to provide a “self-cleaning stream pattern” and resulting in “the filtered fluid is free from the separated particulate matter,” and, as such, there would be an undue quantity of experimentation of various geometries, shapes, sizes, etc. that must be performed by one of ordinary skill in the art in attempting to determine an appropriate “form factor” of the “doughnut-shape” to provide a “self-cleaning stream pattern” and resulting in “the filtered fluid is free from the separated particulate matter,” with no clear expectation of success, rendering claim 1 and its dependents failing to enable of ordinary skill in the art to make and/or use the instant claimed invention. All other claims are rejected due to their dependency from instant independent claim 1.
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, 5-8 and 10 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.
The limitations of: “doughnut-shape” and its “form factor” in regards to the “cavity” and the in claim 1 are relative terms which renders the claim indefinite. The limitations of “doughnut-shape” and the associated “form factor” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The limitation “doughnut-shaped” and its “form factor” are not defined by the instant specification, i.e. mathematically and/or descriptively (i.e. specific geometry, dimensions, etc.). It is unclear as to the metes and bounds of the limitations “doughnut shaped” and its associated “form factor” since it is not defined by the instant specification, and can potentially have many different types of meanings and/or definitions and associated “shape” variations in regards to doughnut-shaped and toroidal. For example, U.S. 2020/0384803 to Osetek et al. states: “The gasket of the present invention is a flat doughnut-shaped disc” (see para 0014). U.S. 9,086,033 to Dushku et al. state: “a fuel chamber 42 is purely or substantially toroidal-shaped, which includes not perfect toroidal shapes, such as square-donut shapes, rectangle-donut shapes (these may include rounded edges and/or straight edges and/or straight sides and/or edges, and other such semi-toroidal shapes.” (see col. 9, line 63 to col. 10, line 1). U.S. 2011/0203931 to Novosselov et al. disclose a particle separation device and states: “Out-flowing jet streamlines (321) bend at the bottom, involuting as a frustoconical ‘U’ shaped squarish toroid (333) where contacting the surface (4)” (see para 0126). U.S. 2014/0116256 to Yamasaki et al. discloses a particle separation unit (see Fig. 2) wherein “wherein gas that flow in from an inlet is caused to swirl in a doughnut-shaped annular space that is formed between the inner wall and the outer wall of the gas exhaust tube” (see para 0027). U.S. 4,670,410 to Baillie discloses a particle separation unit (see Fig 4) wherein “The upper and lower annular plates 86, 87 define an annular or doughnut shaped space within the chamber 63.” Thus, as evidenced by these references, the term “doughnut shape” having an associated “form factor” can vary extensively and have many associated “shape” and “form factor” aspects, rendering the recited limitation of “doughnut shape” its associated “form factor” unclear and thus indefinite. As such, the term “doughnut shape” and its associated “form factor” and the claim limitations of “a cavity having a doughnut shape form factor” are not clearly defined, as to the specific metes-and-bounds, rendering the claim and its dependents indefinite.
Furthermore, instant independent claim 1 employs the limitation “internal diameter,” however, the instant filed specification does not employ this limitation, and it is unclear as to what “diameter” of the doughnut-shaped cavity is being limited, since there are multiple “diameter” aspects of a doughnut-shape/toroidal cavity, rendering the claim and its dependents indefinite. In addition, the instant independent claim 1 now recites: “substantially reduced deposition of the separated particulate material on an internal surface of the cavity,” however, does not provided a prerequisite amount of deposition relative to zero deposition and some unknown level of deposition to be considered “substantially reduced,” further rendering claim 1 and its dependents indefinite.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Applicant is invited to review PTO form 892 accompanying this Office Action listing Prior Art relevant to the instant invention cited by the Examiner.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Primary Examiner John Fitzgerald whose telephone number is (571) 272-2843. The examiner can normally be reached on Monday-Friday from 7:00 AM to 3:30 PM E.S.T. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor John Breene, can be reached at telephone number (571) 272-4107. 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) at http://www.uspto.gov/interviewpractice. The central fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN FITZGERALD/Primary Examiner, Art Unit 2855