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 .
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.
Election/Restrictions
Newly submitted claim 20 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Claim 20 directed a motor vehicle gearbox.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 20 has withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Interpretation
The phrase of “for a gearbox of a motor vehicle” is understood as being directed to and further reciting the purpose or intended use of the claimed invention which does not result in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art do not limit the claim and do not distinguish over the prior art apparatus (or process). See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the claimed invention, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) and cases cited therein, as it has been held that the recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). See also MPEP § 2111.02 and § 2112 - § 2112.02.
In this view, the ‘gearbox’ and the ‘motor vehicle’ are neither claimed nor required by the claimed invention. Accordingly, at least claim 1 is interpreted as follows:
“A machine housing ventilator comprising: an oil separator mechanism which has a media inlet and a media outlet; an air-permeable ventilation mechanism formed as a ventilator cap, comprising at least one bore or recess in fluid communication with an environment external to the ventilator cap and oil separator mechanism, wherein the media outlet is covered by the air-permeable ventilation mechanism or is fluidically connected thereto, wherein the oil separator mechanism further comprises: an oil separator housing in which the media inlet is arranged, wherein the media inlet allows a gaseous medium to enter the oil separator housing as intended, and to escape through the media outlet and through the ventilator cap into the environment external to the ventilator cap and oil separator mechanism; and a labyrinth ventilator mechanism for deflecting medium flowing through the machine housing ventilator, wherein an imaginary rectilinear flow direction through the oil separator housing is defined as a ventilation direction from the media inlet to the media outlet, and the labyrinth ventilator mechanism is surrounded by the oil separator housing, at least in part, in a circumferential direction, in relation to the ventilation direction, and is configured as a separate component in relation to the oil separator housing.”
Claim Rejections - 35 USC § 112
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.
Claim 16 is 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 word "substantially" renders the claim indefinite because it is unclear whether the limitation following the word "substantially" is a required by the Applicant as part of the claimed invention or not.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 6, 12 and 27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DE 102015002320 (hereinafter DE ‘320).
As regarding claim 6, DE ‘320 discloses the claimed invention for a machine housing ventilator comprising: an oil separator mechanism which has a media inlet and a media outlet; an air-permeable ventilation mechanism formed as a ventilator cap, comprising at least one bore or recess in fluid communication with an environment external to the ventilator cap and oil separator mechanism, wherein the media outlet is covered by the air-permeable ventilation mechanism or is fluidically connected thereto, wherein the oil separator mechanism further comprises: an oil separator housing in which the media inlet is arranged, wherein the media inlet allows a gaseous medium to enter the oil separator housing as intended, and to escape through the media outlet and through the ventilator cap into the environment external to the ventilator cap and oil separator mechanism; and a labyrinth ventilator mechanism for deflecting medium flowing through the machine housing ventilator, wherein an imaginary rectilinear flow direction through the oil separator housing is defined as a ventilation direction from the media inlet to the media outlet, and the labyrinth ventilator mechanism is surrounded by the oil separator housing, at least in part, in a circumferential direction, in relation to the ventilation direction, and is configured as a separate component in relation to the oil separator housing (annotated fig. 3 and [0041]-[0044]); wherein the gaseous medium is configured to escape through the media outlet and through the ventilator cap (annotated fig. 3) into the environment external to the ventilator cap and oil separator mechanism, without the gaseous medium passing through a membrane.
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As regarding claim 12, DE ‘320 discloses all of limitations as set forth above. DE ‘320 discloses the claimed invention for wherein the labyrinth ventilator mechanism is connected to the ventilator cap (annotated fig. 3).
Regarding limitations recited in claim 27 which pertains to the manner in which a material of article is worked upon, it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. Further, it has been held that process limitations do not have patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states “Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.”
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.
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.
Claim(s) 7-9, 16-19, and 23-26 are rejected under 35 U.S.C. 103 as being unpatentable over DE 102015002320 (hereinafter DE ‘320) in view of Bratek et al (US 20170326487; hereinafter Bratek).
As regarding claim 7, DE ‘320 discloses all of limitations as set forth above. DE ‘320 discloses the claimed invention except for wherein the labyrinth ventilator mechanism has a first and at least a second deflector wall, and the first and the at least second deflector wall are connected to one another via a center web and spaced apart from one another by the web, the first and the at least second deflector wall are arranged downstream of the media inlet and upstream of the media outlet, in the ventilation direction, in the oil separator housing, the first deflector wall closes off the oil separator housing except for at least a first flow-through region which can be flowed through, and the second deflector wall closes off the oil separator housing except for at least a second flow-through region which can be flowed through, and the first deflector wall constricts an area that can be flowed through in the oil separator housing to 40% or less of a total cross-sectional area of the oil separator housing, relative to the location at which the first deflector wall is arranged, and the second deflector wall constricts the area that can be flowed through in the oil separator housing to 40% or less of the total cross-sectional area of the oil separator housing, relative to the location at which the second deflector wall is arranged (annotated fig. 5).
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Both DE ‘320 and Bratek are directed to oil separator. It would have obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide wherein the labyrinth ventilator mechanism has a first and at least a second deflector wall, and the first and the at least second deflector wall are connected to one another via a center web and spaced apart from one another by the web, the first and the at least second deflector wall are arranged downstream of the media inlet and upstream of the media outlet, in the ventilation direction, in the oil separator housing, the first deflector wall closes off the oil separator housing except for at least a first flow-through region which can be flowed through, and the second deflector wall closes off the oil separator housing except for at least a second flow-through region which can be flowed through, and the first deflector wall constricts an area that can be flowed through in the oil separator housing to 40% or less of a total cross-sectional area of the oil separator housing, relative to the location at which the first deflector wall is arranged, and the second deflector wall constricts the area that can be flowed through in the oil separator housing to 40% or less of the total cross-sectional area of the oil separator housing, relative to the location at which the second deflector wall is arranged as taught by Bratek in order to enhance motor vehicle performance.
As regarding claim 8, DE ‘320 as modified discloses all of limitations as set forth above. DE ‘320 as modified discloses the claimed invention for wherein the first and the at least a second deflector wall are arranged in the oil separator housing such that: the first and the second flow-through regions are offset in relation to one another, so that a rectilinear flow in the ventilation direction through the oil separator housing is prevented by the first and the at least a second deflector wall (Bratek - annotated fig. 5).
As regarding claim 9, DE ‘320 as modified discloses all of limitations as set forth above. DE ‘320 as modified discloses the claimed invention for wherein the labyrinth ventilator mechanism has an end wall which comprises at least an outlet region which can be freely flowed through, the oil separator housing has a limit stop, the end wall is in contact with the oil separator housing at the limit stop in an axial direction, and the at least one outlet region which can be freely flowed through forms the media outlet in the end wall (Bratek - annotated fig. 5).
As regarding claim 16, DE ‘320 as modified discloses all of limitations as set forth above. DE ‘320 as modified discloses the claimed invention for wherein the first and the at least second deflector wall are arranged at least substantially parallel to one another (Bratek - annotated fig. 5).
As regarding claims 17-18, DE ‘320 as modified discloses all of limitations as set forth above. DE ‘320 as modified discloses the claimed invention for wherein the first deflector wall constricts the area that can be flowed through in the oil separator housing to 20% or less (Bratek - annotated fig. 5) of the total cross-sectional area of the oil separator housing, relative to the location at which the first deflector wall is arranged.
Alternatively, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide wherein the first deflector wall constricts the area that can be flowed through in the oil separator housing to 20% or less (or 10% or less) of the total cross-sectional area of the oil separator housing, relative to the location at which the first deflector wall is arranged in order to enhance ventilator performance, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
As regarding claim 19, DE ‘320 as modified discloses all of limitations as set forth above. DE ‘320 as modified discloses the claimed invention for wherein the labyrinth ventilator mechanism further comprises at least a third deflector wall spaced apart from the second deflector wall by a further center web, the third deflector wall closing off the oil separator housing except for at least a third flow-through region which can be flowed through (Bratek - annotated fig. 5).
As regarding claim 23, DE ‘320 as modified discloses all of limitations as set forth above. DE ‘320 as modified discloses the claimed invention for wherein the deflector walls have a plate-shaped design (Bratek - annotated fig. 5).
As regarding claim 24, DE ‘320 as modified discloses all of limitations as set forth above. DE ‘320 as modified discloses the claimed invention for wherein the first and the second flow-through regions are arranged at opposite points in relation to one another (Bratek - annotated fig. 5).
As regarding claim 25, DE ‘320 as modified discloses all of limitations as set forth above. DE ‘320 as modified discloses the claimed invention for wherein the end wall rests against the limit stop (Bratek - annotated fig. 6) for axial positioning of the labyrinth ventilator mechanism in the oil separator housing.
As regarding claim 26, DE ‘320 as modified discloses all of limitations as set forth above. DE ‘320 as modified discloses the claimed invention except for wherein the labyrinth ventilator mechanism is configured to be inserted into the oil separator housing. It would have obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide wherein the labyrinth ventilator mechanism is configured to be inserted into the oil separator housing in order to enhance ventilator performance, since it was known in the art as shown in Bratek (annotated figs. 5-6).
Claim(s) 14-15, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over DE 102015002320 (hereinafter DE ‘320), as applied supra.
As regarding claims 14-15 and 22, DE ‘320 discloses all of limitations as set forth above. DE ‘320 discloses the claimed invention except for wherein the oil separator housing is formed from a metal material; wherein the labyrinth ventilator mechanism is formed from a plastic material; and wherein the oil separator housing comprises an aluminum material. It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to provide wherein the oil separator housing is formed from a metal material; wherein the labyrinth ventilator mechanism is formed from a plastic material; and wherein the oil separator housing comprises an aluminum material in order to enhance ventilator performance, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
As regarding claim 21, DE ‘320 discloses all of limitations as set forth above. DE ‘320 discloses the claimed invention except for wherein the oil separator housing has a hollow cylindrical shape. The shape of a structural feature is considered a matter of choice which a person of ordinary skill in the art before the effective filing date of the invention was made would find obvious absent persuasive evidence that particular configuration is significant, see In re Dailey, 149 USPQ 47.
Response to Arguments
Applicant's arguments filed 03/26/26 have been fully considered but they are not persuasive.
Applicant’s remarks argue that claim 6, as amended, recites that the gaseous medium is configured to escape through the media outlet and through the ventilator cap into the environment external to the ventilator cap and oil separator mechanism “without the gaseous medium passing through a membrane,” and contend that DE ’320 fails to disclose this limitation.
Applicant asserts that DE ’320 explicitly discloses that the air stream passes through a filter element before exiting to the external environment. In particular, Applicant cites paragraph [0045] of DE ’320, which states that the air stream “durchströmt im Folgenden das Filterelement 13, wobei das Filterelement 13 weitere Reste des Ölnebels und eventuell noch nicht abgesetzte Partikel auffängt” (“subsequently flows through the filter element 13, wherein the filter element 13 catches further residues of the oil mist and any particles that have not yet settled”). Applicant further contends that filter element 13 functions as a membrane through which the gaseous medium must pass before reaching the external environment.
Examiner respectfully disagrees.
Paragraph [0045] of DE ’320 (see English translation) states, in relevant part, that the venting device has a compact configuration because calming of the airflow through the ventilation chimney occurs within the housing, thereby increasing the service life of filter element 13. However, paragraph [0045] does not mention a “membrane,” nor does it describe filter element 13 as functioning as a membrane. Rather, DE ’320 describes filter element 13 only as a filter element configured to capture residual oil mist and/or particles from the airflow.
Accordingly, while DE ’320 discloses that airflow passes through filter element 13, the reference does not teach or suggest that the gaseous medium passes through a “membrane,” as recited in amended claim 6. Therefore, DE ’320 discloses or at least does not preclude the claimed limitation of the gaseous medium escaping “without the gaseous medium passing through a membrane.”
As regarding claims 7-9, Applicant further argues that Bratek is directed to a pressure sensor for automotive use, rather than to a machine housing ventilator for a gearbox. Applicant cites paragraph [0001] of Bratek and further contends that the oil separator in Bratek is specifically designed to “reduce an amount of oil-vapor residue that reaches the pressure sensing element” in order to prevent “residue deposits” that “can induce stresses on the piezoresistors” and cause “a voltage shift, which negatively affects sensing accuracy.” See Bratek, paragraphs [0007]–[0008]. Applicant therefore argues that Bratek is directed to a fundamentally different purpose than the presently claimed machine housing ventilator, which provides pressure compensation between a gearbox interior and the external environment while separating oil from the escaping gaseous medium.
Examiner respectfully disagrees.
While Bratek is directed to a pressure sensor assembly for automotive applications, the reference nevertheless clearly discloses an oil separator configured to separate oil from a gaseous flow in order to reduce oil residue carried by the gas stream. In particular, the title and abstract of Bratek expressly disclose an oil separator arrangement for reducing residue deposits reaching the pressure sensing element. Likewise, DE ’320 clearly teaches a housing ventilator for a gearbox configured to vent gaseous medium while separating oil from the airflow.
Moreover, both DE ’320 and Bratek are directed to the same general field of endeavor, namely gas-oil separation systems utilizing deflectors and flow paths to separate oil particles or oil mist from a gaseous medium. Although the ultimate end use of the separated gas stream differs between the references, both references address the same technical problem of removing oil contaminants from a gas flow. Accordingly, one of ordinary skill in the art would have recognized Bratek as reasonably pertinent to the problem addressed by DE ’320 and would have found it obvious to apply the teachings of Bratek to the gearbox ventilator system of DE ’320.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 DUNG H BUI whose telephone number is (571)270-7077. The examiner can normally be reached Monday-Friday 8:00 - 4:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin L. Lebron can be reached on (571) 272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DUNG H BUI/ Primary Examiner, Art Unit 1773
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