DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Product by Process Limitations
Initially, and with respect to claim(s) 1 note that a "product by process" claim is directed to the product per se, no matter how actually made. See In re Thorpe et ah, 227 USPQ 964 (CAFC, 1985) and the related case law cited therein which makes it clear that it is the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that, as here, an old or obvious product produced by a new method is not patentable as a product, whether claimed in "product by process" claims or not. As stated in Thorpe, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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, 147 (CCPA 1969); Buono v. Yankee Maid Dress Corp., 77 F.2d 274, 279, 26 USPQ 57, 61 (2d. Cir. 1935).
Note that Applicant has burden of proof in such cases as the above case law makes clear.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/2/26 has been entered.
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, 3-4 and 7-8 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.
Regarding claim 1:
The limitation “an anti-rotation coupling configured to transmit torque, the coupling defined by at least one non-annular tab formed on each of the rotation shafts engaging a corresponding non-annular recess formed in each of the propellers, wherein engagement between the at least one tab and the corresponding recess prevents relative rotation between the shafts and the propellers” in lines 22-28 is new matter. There is nothing in the original disclosure indicating that the rotation shafts include an anti-rotation coupling further including a non-annular tab and non-annular recess. These structure are not mentioned in the specification and have not been identified in the figures. The applicant has referred to figures 5a-5b (see page 5 of the remarks) to support the limitation however it is not clear from the figures that these structures are anti-rotation couplings that further include tabs and recess. Further, its not clear from the figures that these structures are non-annular and that they correspond to each other. Also, as mentioned before, these structures are not identified in the originally filed figures or specification. For this reason, the limitation is rejected as new matter.
Claims 3-4 and 7-8 are rejected due to their dependence on claim 1.
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.
Claim(s) 1, 3-4 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Korean patent document KR 20070106856 A to Lee (see English language machine translation attached to this or a previous office action) in view of US 3,467,300 to Schibbye, EP 2532895 A1 to Dirscherl et al. (Dirscherl)(see English language machine translation attached to this or a previous office action), WO 2010142003 A1 to Nachtergaele et al. (Nachtergaele) and WO 0036303 A1 to Onoue et al. (Onoue)(see English language machine translation attached to this or a previous office action) as evidenced by US 2016/0123327 to Collins et al. (Collins).
Regarding claim 1:
Lee discloses:
A screw compressor (figure 8) comprising: a male rotor (110 and 115) and a female rotor (120 and 125) configured to engage (see figure 8) the male rotor (110 and 115), whereby the male rotor (110 and 115) and the female rotor (120 and 125) are enclosed in a casing (130) inside which the male (110 and 115) and female (120 and 125) rotors counter-rotate (inherent function of the rotors since they need to counter-rotate in order to function), to drive the male rotor (110 and 115) from a motor (“driving motor”, see translation page 5, ¶11), a gas (“refrigerant”, see translation page 2, ¶2 and 3) passes through an intake duct (131) and a rotation closes the intake duct (131) at an intake (inherent due to the shape of the male and female rotors which create compression chambers between them closing the intake duct as they rotate) and a compressed gas is pushed towards a delivery (outlet 132),
the male (110 and 115) and female (120 and 125) rotors include a rotation shaft (115 and 125) which rotates in the casing (130) due to bearings (141 and 151) and is surrounded by propellers (110 and 120) which engage each other (see figure 8), the propellers (110 and 120) being made to reduce progressively a space between the male (110 and 115) and female (120 and 125) rotors and the casing (130) (inherent structure of the screw 110 and 120 since the space between the rotors must reduce in order to compress the fluid between), so that the gas sucked in by the intake duct (131) compresses in a direction of delivery (132)(translation page 5, ¶3),
wherein the propellers (110 and 120) are made of a polymeric material (translation, page 6, ¶2 and 3; “Here, the male rotor 110 and the female rotor 120 are made of a high-strength plastic material such as polyether ether ketone (PEEK)”) and the propellers (110 and 120) are made by 3D molding using fused deposition modeling (this is considered a product by process limitation (see the above paragraph 3) since it describes how to manufacture the structure already taught in the claim 1 rejection above and since the Lee reference teaches the structure of the product claim 1 the Lee reference reads on this claim as well).
Lee fails to disclose:
A male rotor having a plurality of convex lobes and a female rotor having a plurality of concave cavities configured to engage with the plurality of convex lobes of the male rotor, whereby the male rotor and the female rotor are enclosed in a casing inside which the male and female rotors counter-rotate;
the propellers defined by the plurality of convex lobes and the plurality of concave cavities;
wherein the shaft and external projections are subsequently connected to polymeric helical parts,
wherein the screw compressor comprises locking means configured for locking relative axial displacement between the propellers and the rotation shafts, said locking means comprising a projection on each of the rotation shafts which fits a groove made in each of the propellers and having a second diameter that is larger than the first diameter around a circumference of each of the male and female rotors, and an anti-rotation coupling configured to transmit torque, the coupling defined by at least one non-annular tab formed on each of the rotation shafts engaging a corresponding non-annular recess formed in each of the propellers, wherein engagement between the at least one tab and the corresponding recess prevents relative rotation between the shafts and the propellers; and a locking ring disposed on each of the male and female rotors.
Schibbye teaches:
A screw compressor (figures 1 and 3) that includes male (40) and female (42) rotors and an outer casing (10). The male rotor is mounted on a shaft (48) and the female rotor is mounted on another shaft (see figure 1). The male rotor has convex lobes (see the concave lobe A in figure 1 below) and the female rotor has concave lobes (see the concave lobe B in figure 1 below).
Dirscherl teaches:
A screw compressor/pump (figure 1) that includes rotors (5 and 5’) and shafts (6). The reference teaches the rotor and rotor shaft can be made from PEEK (translation, page 7, ¶4) or that the rotor can be made from PEEK and the shaft can be made from high-strength material (indicating a material stronger than PEEK which indicates are made from a more bending resistant material) such as aluminum, titanium, nickel alloys and steel alloys (translation, page 7, ¶4). Further, the reference teaches the shaft can include external projections such as bearing surfaces (28 and 28’/29 and 29’) to support the shaft.
Nachtergaele teaches:
A rotor (figure 2) for a screw pump including a shaft (6) and a rotor body (2). The shaft further includes locking means including a locking ring (12/15) received on groove/threads (17) of the shaft and a projection (11; page 12, lines 5-10 “A first tension element 11 is provided in the shape of an increase of the diameter of the shaft 6 ' so as to form a collar 13”) with a second diameter greater than the shaft (as shown in figure 2 by “d” and “D”). The addition of the locking means to the shaft aid in retention of the rotor body to the shaft (page 5, lines 15-25).
Onoue teaches:
A pump (figure 2) with a rotor (24) and a shaft (21). Further, the shaft and rotor include an anti-rotation coupling that includes a tab (23) located on the shaft and a recess (25) located on the rotor. The addition of the anti-rotation coupling allows for torque to be transferred from the shaft to the rotor (see translation, page 3, ¶14).
Regarding the limitation “A male rotor having a plurality of convex lobes and a female rotor having a plurality of concave cavities configured to engage with the plurality of convex lobes of the male rotor, whereby the male rotor and the female rotor are enclosed in a casing inside which the male and female rotors counter-rotate; the propellers defined by the plurality of convex lobes and the plurality of concave cavities”:
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Lee to replace the male and female surfaces on the male and female rotors in Lee with the convex and concave lobes respectively as taught by Schibbye. This is a simple substitution of one known element (male and female surfaces on the male and female rotors of Lee) for another (concave and convex lobes as taught by Schibbye) to obtain predictable results (to compress fluid in the pump/compressor of Lee).
Regarding the propellers/female and male rotors made by a 3D molding using fused deposition modeling process, even if the applicant was to argue that the fused deposition modeling provides a unique structure to the rotors and overcome the product by process argument above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Lee to manufacture the male and female rotors from this process (fused deposition modeling/3D modeling) since the male and female rotors are parts with complex shapes that are difficult or expensive to manufacture through traditional methods. This is further evidenced by US 2016/0123327 to Collins which demonstrates that male and female rotors can be made by a fused deposition modeling process (see ¶0055 of Collins).
Regarding the limitation “wherein the shaft and external projections are subsequently connected to polymeric helical parts”:
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Lee to include the shaft made from high-strength material (indicating a material stronger than PEEK which indicates are made from a more bending resistant material) such as aluminum, titanium, nickel alloys and steel alloys and external projections such as bearing surface as taught by Dirscherl to improve the bending and wear resistance (Dirscherl, translation, page 7, ¶4) and to support the shaft during operation/rotation. Further, with the Lee reference already teaching the rotor made of PEEK this combination would result in the shaft made out of high-strength material (indicating a material stronger than PEEK which indicates are made from a more bending resistant material) such as aluminum, titanium, nickel alloys and steel alloys with Dirscherl teaches is stronger than PEEK (Dirscherl, translation, page 7, ¶4) which indicates the shaft is made from a more resistant material (resistant to bending and wear).
Also, the applicant should note that the shaft being made from more resistant material than the material of the shaft is well known in the prior art and alluded to in the Lee reference. The reference teaches in the Lee translation, page 6, ¶2 and 3 “Here, the male rotor 110 and the female rotor 120 are made of a high-strength plastic material such as polyether ether ketone (PEEK)” which suggests the shafts 115 and 120 are made of another material. Typically, in the prior art the structures are arranged in this manner because the shaft is more wear resistant and bend resistant than the plastic material and is why the shaft is made from higher strength material. Further, this is not only well known in the pump art but in a variety of arts where only a portion of a structure requires high strength while anther portion of the structure can be made from other materials due to costs, manufacturing or other physical requirements. This includes machining tools, cutlery and toys.
Regarding the limitation “wherein the screw compressor comprises locking means configured for locking relative axial displacement between the propellers and the rotation shafts, said locking means comprising a projection on each of the rotation shafts which fits a groove made in each of the propellers and having a second diameter that is larger than the first diameter around a circumference of each of the male and female rotors, and a locking ring disposed on each of the male and female rotors”:
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Lee to replace the coupling currently in Lee ((see translation page 4 final paragraph, “The male rotor 110 has a spiral protrusion 111 formed on an outer circumferential surface thereof, and a driving shaft 115 is coupled to the center thereof” and page 5 first paragraph “The 121 and the driven shaft 125 is coupled to the center”) with the locking means including a projection with a second diameter and a locking ring to the shaft in Lee (including the projection on the shaft and a locking ring on the shaft) as taught by Nachtergaele which would secure the propeller/rotor to the shaft (Nachtergaele, page 5, lines 15-25). Further, this modification is a simple substitution of one known element (coupling of Lee) for another (coupling including the projection, groove and locking ring of Nachtergaele) to obtain predictable results (secure the rotation shaft to the propeller). The addition of the locking means would include the locking ring and a projection with a second diameter larger than the diameter of the shaft and located on one side of the shaft/rotor.
Regarding the limitation “an anti-rotation coupling configured to transmit torque, the coupling defined by at least one non-annular tab formed on each of the rotation shafts engaging a corresponding non-annular recess formed in each of the propellers, wherein engagement between the at least one tab and the corresponding recess prevents relative rotation between the shafts and the propellers”:
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Lee to further include an anti-rotation coupling that includes tabs and recesses on the shaft and rotor as taught by Onoue to allow for a better transmission of torque from shafts to the rotors (Onoue, see translation, page 3, ¶14)
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Figure 1 – figure 3 of Schibbye, annotated by the examiner
Regarding claim 3:
Lee discloses:
The screw compressor according to claim 1, wherein the rotation shafts (115 and 125) are mechanically connected (“coupled”, translation page 4, final paragraph) to the respective propellers (110 and 120) in order to transmit torque of an engine (engine/motor, “driving motor”, see translation page 5, ¶11) through a suitable locking system (“coupled” of translation page 4 final paragraph indicating the propeller 110 is attached/locked to the shaft 115).
Regarding claim 4:
Lee discloses:
The screw compressor according to claim 1, wherein said polymeric material of the propellers is PEEK (translation. Page 6, ¶2 and 3; “Here, the male rotor 110 and the female rotor 120 are made of a high-strength plastic material such as polyether ether ketone (PEEK)”).
Regarding claim 8:
Lee discloses:
The screw compressor according to claim 1, further comprising bearings (151), gears (116 and 126), or seals (152 and 142).
Lee fails to disclose:
Further comprising lubrication channels, accessible from outside, which carry lubricant to gears, seals or the bearings.
Schibbye teaches:
A screw compressor including male and female rotors (40 and 42) mounted on shafts (48). The shafts are supported by bearings (column 5, lines 20-35) which support the shaft. The bearings are supplied for lubricant (column 5, lines 20-35) via channels (82) that are accessible from outside of the housing/stator (see figure 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Lee to further include a channel for supply lubricant to the bearings (151 in Lee) accessible from the outside of the housing or stator (15 of Lee) as taught by Schibbye to lubricate the bearing and reduce wear and further to remove heat from the compressor (Schibbye, column 5, lines 20-45).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee, Schibbye, Dirscherl, Nachtergaele and Onoue as applied to claim 1 above, and further in view of Japanese patent document JP 2003176795 A to Suman et al. (Suman)(see attached English language machine translations).
Regarding claim 7:
Lee, Schibbye, Dirscherl, Nachtergaele and Onoue fail to disclose:
The screw compressor according to claim 1, whereby internal stator bodies are coated with an abradable polymeric film.
Suman teaches:
A screw compressor (figure 7; ¶0002) that includes rotors (35 and 36) that are mounted on shafts (37 and 41) that are with a stator/housing (15). Further, the reference teaches the rotors exterior surface and internal surfaces (23 and 25) of the stator can be coated with an abradable coating/film (61). Also, the reference teaches the abradable coating/film (61) can be a polymeric resin (translation, ¶0016 or page 4 ¶1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Lee, Schibbye, Dirscherl and Nachtergaele to further include an abradable polymeric film to the interior surface of the stator/housing (130, 170, 140 of Lee) as taught by Suman to improve the volumetric efficiency of the compressor (Suman, translation, ¶0016 or page 3).
Response to Arguments
Applicant’s arguments, see remarks, filed 4/2/26, with respect to the rejection(s) of claim(s) 1, 3, 4, 7 and 8 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Lee, Schibbye, Dirscherl, Nachtergaele and Onoue.
Regarding the 35 USC 112(b) claim rejections:
The applicant’s amendments to the claims are persuasive and for this reason the previous rejections have been withdrawn.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WESLEY HARRIS whose telephone number is (571)272-3665. The examiner can normally be reached M to F, 9am-5pm.
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/WESLEY G HARRIS/Examiner, Art Unit 3783
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