FINAL 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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Arguments
Applicant's arguments filed 14 August 2025 have been fully considered but they are not persuasive.
In response to Applicant’s argument that “[b]ecause Nilsson discloses spot welding, Nilsson does not disclose or suggest that ‘the at least two spacer are connected to the base body without a gap’ as recited in amended independent claim 27” (page 8, Remarks), the examiner respectfully disagrees. Nilsson explicitly discloses that “spacing members 4 and 5 are formed in one piece with the (metal) material of the separation disc 1” (para. [0036]). A one-piece structure necessarily has no physical gap between the spacer and the base body. Applicant’s assertion that “spacers attached by spot welding are prone to gaps between the spacers and the base body” does not mean that the spacers taught by Nilsson must have gaps with the base body, and this argument is considered to be a speculative attorney’s argument unsupported by objective technical evidence on the issue. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). MPEP 716.01(c).
In response to Applicant’s argument that “[i]t should be noted that this only applies ‘[i]f the product in the product-by-process claim is the same as or obvious from a product of the prior art’” (page 8, Remarks), the examiner points out that the claim defines no structural difference between spacers formed by 3D printing and those formed by spot welding. The mere recitation of a 3D-printing process does not impart a distinct structural difference, and the “without a gap” limitation is deemed met by Nilsson which teaches that the spacing member are formed in one piece with the base body, as discussed above, and therefore anticipates or at least inherently possesses a gap-free connection.
Nevertheless, in the interest of compact prosecution and to streamline the issues for consideration, the rejection of 27, 31-33, 35, 40, and 41 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nilsson is withdrawn, and the same subject matter is addressed under 35 U.S.C. 103 in view of Nilsson in combination with Mengle and the other references of record.
Applicant argues that “[f]urther, there is nothing in the record to support that the person of ordinary skill in the art would have found it obvious to use Mengle’s 3D printing to print spacers on the base body of Nilsson formed by casting. Instead, the person of ordinary skill in the art would have recognized that Nilsson and Mengle both disclose using similar materials for the base body and the spacers, whereas the claimed base body is formed from a blank in a forming process and the at least two spacers are applied using a 3D printing process, which the person of ordinary skill in the art would have understood as involving different materials” (page 9, Remarks). Applicant asserts that the base body and the spacers are made of different materials, but the current claim language does not have any limitation that requires different materials for the base body and the spacers.
In response to Applicant’s argument that “[f]urther, in view of the long list of advantages of 3D printing disclosed by Mengle, the person of ordinary skill in the art would have found it obvious to modify Nilsson so that the entire separator disc is formed by a 3D printing process and would not have found it obvious to form a separator disc using two different types of processes, which produces a device having a different structure than in Nilsson which discloses spot-welding, which is prone to gaps, and in Mengle, which discloses the it is advantageous for the entirety of the separator disc be formed by 3D printing” (page 9, Remarks), the examiner respectfully disagrees. Even if some embodiments 3D-print the entire separator disc, Mengle’s general teaching of additive manufacturing for metallic centrifuge elements would reasonably suggest partial or hybrid fabrication. For example, Mengle teaches “direct metal laser sintering can directly ‘build’ on stainless steel and titanium, among other metals” (para. [0021]). Mengle also teaches “various metals (and alloys, compounds, etc.) may also be worked in an additive manufacturing process, allowing for ‘metal printing’ to provide centrifuges of increased strength (with respect to polymers)” (para. [0027]). From these teachings, a person of ordinary skill in the art would understand this as disclosing additive deposition of metal onto an existing metallic substrate. Therefore, Mengle teaches or at least suggests forming functional elements on a pre-formed metal base by additive manufacturing and would have motivated one of ordinary skill in the art before the effective filing date of the claimed invention to print the spacers on Nilsson’s separation disc body as a simple application of a known technique within the scope of Mengle’s teachings.
The rejection over Nilsson in view of Mengle is therefore still deemed proper and is maintained.
Drawings
The drawings were received on 13 May 2022. These drawings are acceptable.
Claim Rejections - 35 USC § 112
In light of the claim amendments filed on 14 August 2025, the rejections under 35 U.S.C. 112(b) have been withdrawn.
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 (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 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.
Claims 27, 31-37, 40-43, and 46 are rejected under 35 U.S.C. 103 as being unpatentable over Nilsson in view of Mengle (U.S. Patent Application Pub. No. 2018/0008990).
Regarding claim 27, Nilsson discloses a separator disc (1, Fig. 1) for a centrifuge (para. [0035]), the separator disc comprising: a frustoconical shell-like base body created from a blank in a forming process and having an inner surface and an outer surface (para. [0042]), wherein at least one functional element is applied to the inner or outer surface (para. [0010], [0042]), and wherein the separation disc is configured to be arranged in a separator disc stack in a drum interior of a drum of the centrifuge for separating a mixture of substances (para. [0010]), wherein the at least one functional element has at least two spacers (spacing members 4, 5 and/or 8, Fig. 2-5), wherein the at least two spacers are connected to the base body without a gap (para. [0036]; spacing members 4 and 5 are formed in one piece with the material of the separation disc), but does not specifically teach wherein the at least one functional element is produced by an additive manufacturing process, wherein the additive manufacturing process is a 3D printing process.
The process by which the at least one functional element is produced (additive manufacturing process/3D printing process), which recites no further structure, is noted. The patentability of a product or apparatus, however, does not depend on its method of production. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972); In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, (CCPA 1969). MPEP 2113. As held in In re Thorpe, supra, “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113. Nilsson et al. discloses all of the recited structure irrespective of the process by which the at least one functional element is produced.
Mengle teaches wherein the at least one functional element is produced by an additive manufacturing process; wherein the additive manufacturing process is a 3D printing process (para. [0007] and [0024]). The substitution of the flow forming or spot welding technique to produce the at least one functional element in Nilsson with the additive manufacturing process of Mengle is no more than the application of a known technique to a piece of prior art ready for improvement. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the separator disc of Nilsson with the at least one functional element produced by an additive manufacturing process as taught by Mengle for the purpose of providing a desired spacing between adjacent disks, as well as a desired fluid flow effect (para. [0024], Mengle).
Regarding claim 31, the combination of Nilsson and Mengle discloses wherein the at least two spacers are arranged on the outer or inner surface of the base body (para. [0040]-[0041]; spacing members 4 on the inner surface of the separation disc; spacing members 8 on the outer surface of the separation disc, Nilsson).
Regarding claim 32, the combination of Nilsson and Mengle discloses wherein a geometry of the at least two spacers (spacing members 4, 5 and/or 8, Fig. 2-5, Nilsson) on the separator disc varies so that not all spacers of the at least two spacers on the separator disc have a same geometry (Fig. 2-5, Nilsson).
Regarding claim 33, the combination of Nilsson and Mengle discloses wherein the length and width dimensions of the at least two spacers (spacing members 4, 5 and/or 8, Fig. 2-5, Nilsson) on a separator disc vary (para. [0037] and [0041], Nilsson).
Regarding claim 34, the combination of Nilsson and Mengle discloses the separator disc of claim 27. Nilsson further discloses wherein the at least two spacers have a form of respective elongated tabs (spacing members 5 and/or 8, Fig. 2-5), but does not specifically disclose the elongated tabs arranged symmetrically with respect to and along a generatrix or parallel to the generatrix.
Mengle further discloses elongated tabs 46 arranged symmetrically with respect to and along a generatrix or parallel to the generatrix (Fig. 3, claim 7). It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the separator disc of modified Nilsson with the elongated tabs configuration taught by Mengle for the purpose of providing a desired spacing between adjacent disks, as well as a desired fluid flow effect (para. [0024], Mengle).
Regarding claim 35, the combination of Nilsson and Mengle discloses wherein the at least two spacers 4 and/or 8 have a form of point-shaped or circular tabs (para. [0037] and [0041], Nilsson).
Regarding claim 36, the combination of Nilsson and Mengle discloses wherein the elongated tabs 5 are spaced apart by gaps of equal length between each of the elongated tabs (Fig. 2, Nilsson).
Regarding claim 37, the combination of Nilsson and Mengle discloses wherein the elongated tabs 4, 5 and/or 8 are of different lengths, gaps between each of the elongated tabs have different lengths, or the gaps between each of the elongated tabs are of different sizes from tab to tab (Fig. 2, 3, and 5, Nilsson).
Regarding claim 40, the combination of Nilsson and Mengle discloses wherein the separator disc has, at a smaller diameter of the frustoconical base body, a driver geometry geometrically corresponding with a distributor shaft of the centrifuge (see annotated Fig. 2 below, Nilsson).
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Regarding claim 41, Nilsson discloses a centrifuge (“centrifugal separator”, para. [0010]), comprising: a drum (“centrifugal rotor”, para. [0010]) having a drum interior; and a separator disc stack (“stack of se-partition discs”, para. [0010]) arranged in the drum interior, wherein the separator disc stack comprises a plurality of separator discs (1, Fig. 1) stacked on one another, wherein each of the plurality of separator discs comprises a frustoconical shell-like base body (Fig. 1) created from a blank in a forming process and having an inner surface and an outer surface, wherein at least one functional element is applied to the inner or outer surface (para. [0010] and [0042]), wherein the at least one functional element has at least two spacers (spacing members 4, 5 and/or 8, Fig. 2-5), wherein the at least two spacers are connected to the base body without a gap (para. [0036]; spacing members 4 and 5 are formed in one piece with the material of the separation disc), but does not specifically teach wherein the at least one functional element is produced by an additive manufacturing process, wherein the additive manufacturing process is a 3D printing process.
The process by which the at least one functional element is produced (additive manufacturing process/3D printing process), which recites no further structure, is noted. The patentability of a product or apparatus, however, does not depend on its method of production. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972); In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, (CCPA 1969). MPEP 2113. As held in In re Thorpe, supra, “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113. Nilsson discloses all of the recited structure irrespective of the process by which the at least one functional element is produced.
Mengle teaches wherein the at least one functional element is produced by an additive manufacturing process; wherein the additive manufacturing process is a 3D printing process (para. [0007] and [0024]). The substitution of the flow forming or spot welding technique to produce the at least one functional element in Nilsson with the additive manufacturing process of Mengle is no more than the application of a known technique to a piece of prior art ready for improvement. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the centrifuge of Nilsson with the at least one functional element produced by an additive manufacturing process as taught by Mengle for the purpose of providing a desired spacing between adjacent disks, as well as a desired fluid flow effect (para. [0024], Mengle).
Regarding claim 42, Nilsson discloses a method for producing a separator disc, the method comprising: a) providing a blank for a base body of the separator disc, a forming machine (para. [0042]); b) forming the blank into the base body on the forming machine, wherein the base body is a frustoconical shell-like base body having an inner surface and an outer surface; (para. [0010] and [0042]), wherein the at least one functional element has at least two spacers (spacing members 4, 5 and/or 8, Fig. 2-5), wherein the at least two spacers are connected to the base body without a gap (para. [0036]; spacing members 4 and 5 are formed in one piece with the material of the separation disc), but does not disclose a 3D printing unit configured to perform a 3D printing process as an additive manufacturing process; and producing, by the 3D printing unit using the 3D printing process, at least one functional element on the interior or exterior surface of the frustoconical shell-like base body.
Mengle discloses a 3D printing unit configured to perform a 3D printing process as an additive manufacturing process; and producing, by the 3D printing unit using the 3D printing process, at least one functional element on the interior or exterior surface of the frustoconical shell-like base body (para. [0020], [0021], [0024]). The substitution of the flow forming or spot welding technique to produce the at least one functional element in Nilsson with the 3D printing process of Mengle is no more than the application of a known technique to a piece of prior art ready for improvement. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the method of Nilsson with the 3D printing process taught by Mengle for the purpose of providing a desired spacing between adjacent disks, as well as a desired fluid flow effect (para. [0024], Mengle).
Regarding claim 43, the combination of Nilsson and Mengle discloses wherein the forming machine is a spinning machine (para. [0042], Nilsson).
Regarding claim 46, the combination of Nilsson and Mengle discloses wherein the at least one functional element is made of a metallic or non-metallic material (para. [0036], Nilsson).
Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over Nilsson in view of Mengle, as applied to claim 27, and further in view of SU 341512.
Regarding claim 38, the combination of Nilsson and Mengle does not disclose wherein the at least one functional element is a hydrophilic layer.
SU 341512 discloses making separator discs from hydrophilic material (Abstract). It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the separator disc of the combination of Nilsson and Mengle with the at least one functional element, as a part of the separator disc made out of hydrophilic material, as taught by SU 341512, for the purpose of collecting moisture in the separator (Abstract, SU 341512).
Claim 39 is rejected under 35 U.S.C. 103 as being unpatentable over Nilsson in view of Mengle, as applied to claim 27, and further in view of KR 2018009355 (Cho et al., hereinafter Cho).
Regarding claim 39, the combination of Nilsson and Mengle does not disclose wherein the at least one functional element is a lipophilic layer.
Cho discloses making separator discs from lipophilic material (page 4 lines 1-15 of machine translation). It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the separator disc of the combination of Nilsson and Mengle with the at least one functional element, as a part of the separator disc made out of lipophilic material, as taught by Cho, for the purpose of adsorbing oil components (page 2 lines 1-6; page 4 lines 1-15 of machine translation).
Claim 45 is rejected under 35 U.S.C. 103 as being unpatentable Nilsson in view of Mengle, as applied to claim 42, and further in view of Becker (U.S. Patent Application Pub. No. 2016/0176115).
Regarding claim 45, the combination of Nilsson and Mengle does not specifically disclose wherein the 3D printing unit is mounted to a tool center point of an industrial robot.
Becker discloses wherein the 3D printing unit is mounted to a tool center point of an industrial robot (Abstract, para. [0010]-[0024]). It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the method of the combination of Nilsson and Mengle with the industrial robot of Becker for the purpose of using an industrial robot’s large operational range as manipulator for carrying the printing unit along the predetermined movement path (para. [0011], Becker).
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHUYI S LIU whose telephone number is (571)272-0496. The examiner can normally be reached MON - FRI 9:30AM - 2:30PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Claire Wang can be reached at 571-270-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Shuyi S. Liu/Examiner, Art Unit 1774
/CLAIRE X WANG/Supervisory Patent Examiner, Art Unit 1774