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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-13, in the reply filed on 19 December 2025 is acknowledged. Applicant does not relate applicant’s traversal to the PCT rules. The restriction, this being a 371 case, is made in accordance with the PCT rules, not US practice. Applicant makes no attempt to rebut the lack of unity finding. Nonetheless, if the elected claims are eventually found to be allowable, the other groups may be rejoined as having all the limitations of an allowed claims. In this vein, applicant may wish to amend non-elected claim 20 to be statutory and may wish to amend non-elected claims to be more definite (eliminating language such as “preferably” and “in particular”) to avoid delays in allowing the application, but this not required at this time.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
In claims 2-13, the phrase “wherein in that” is ungrammatical and should be made grammatical.
In claim 10 an open parenthesis is missing.
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.
Claims 1-13 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:
In independent claim 1 and throughout the dependent claims, the use of the word “geometry” to apparently refer to a structural element is confusing.
Claim 3 is rendered indefinite by the phrases “preferably” and “particularly preferably” which make unclear what is required versus optional.
Claim 4 is rendered indefinite by the phrases “in particular” and “preferably” which make unclear what is required versus optional.
Claim 5 is rendered indefinite by instances of the phrase “in particular” which make unclear what is required versus optional.
Claim 7 is rendered indefinite by instances of the phrase “in particular” which make unclear what is required versus optional.
Claim 8 is rendered indefinite by the phrase “in particular” which makes unclear what is required versus optional.
Claim 9 is rendered indefinite by the phrase “in particular” which makes unclear what is required versus optional.
Claim 10 is rendered indefinite by the phrase “in particular” which makes unclear what is required versus optional.
Claim 11 is rendered indefinite by the phrase “in particular” which makes unclear what is required versus optional.
Claim 13 is rendered indefinite by the phrase “in particular” which makes unclear what is required versus optional.
Claim Rejections - 35 USC § 102
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 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.
Claims 1, 2, 6 and 10-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mizutani et al. (US 2002/0118596):
Regarding claim 1, Mizutani discloses a rotor shaft comprising a mixing area (31,32) and a connection geometry (the geometry of the connection between 31 and 34) adjoining the mixing area, the mixing area comprising a central shaft (the central portion 31) having a distal end (the lower end in Fig. 2) and a proximal end (upper end in Fig. 2) abutting the connection geometry, the mixing area has at least two mixing sections (31 and 32) along the central shaft, a first mixing section (32) at the distal end of the central shaft comprising at least two mixing blades (at least two of 321A) radially oriented on the surface of the central shaft (see Fig. 3a and 3b) and a second mixing section (31 or a portion thereof) at the proximal end of the central shaft comprising at least one worm thread (see [0020]) having spirally running thread flanks, the spirally running thread flanks peripherally entwining the surface of the central shaft (see Figs. 2 and 8, [0020]) wherein the rotor shaft is made of polyoxymethylene (see [0016]: "polyacetal" which is another name for polyoxymethylene).
Regarding claim 2, the spirally running thread flanks of the worm thread in the second mixing section are spaced from the at least two mixing blades in the first mixing section (see Fig. 9a).
Regarding claim 6, the thread flanks entwining the surface of the central shaft helically have a uniform thread angle (see Figs. 2 and 8 and [0020] and [0053]).
Regarding claim 10, the at least two radial blades comprised four radial blades (321A) which are at 90 degree intervals. (See Fig. 3b.)
Regarding claim 11, a plane circular plate (2 and in the alternative the flange at the top end of 11) is formed between the mixing area and the connection geometry, which circularly encloses the proximal end of the central shaft and the connection geometry adjoining thereto.
Regarding claim 12, the plane circular plate (the flange at the top end of 11) is spaced from the spirally running thread flanks of the worm thread in the second mixing section.
Regarding claim 13, as held in In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985): “The patentability of a product does not depend on its method of production.” The disclosure in [0016] of the rotor being manufactured from resin shows that the it would be capable of being made by injection molding.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 3-5 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Mizutani et al. (US 2002/0118596). The rotor shaft of Mizutani was discussed above:
Regarding claim 3, the ratio of this claim is not numerically disclosed by Mizutani. However, the ratio is depicted as being approximately as claim in Figs. 8 and 9a, which would have suggested making the ratio in the claimed range to one of ordinary skill in the art before the effective filing date. See also Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984) concerning the obviousness of relative selecting relative dimensions.
Regarding claim 4, the blade diameter is not numerically disclosed by Mizutani, although it would necessarily be less than the “about 25mm” cylinder diameter disclosed in [0027]. It would have been obvious for one of ordinary skill in the art before the effective filing date to have scaled the structure based on a desired amount of material to be mixed. See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) and In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) concerning the obviousness of scaling.
Regarding claim 5, the numerical discussions of thread pitch in [0020], [0052] and [0053] together with Figs. 2, 7 and 8 would have suggested the width of the thread being in the claimed range to one of ordinary skill in the art before the effective filing date.
Regarding claim 7, Figs. 2, 7 and 8 would have suggested the width and height to diameter ratios the thread being in the claimed range to one of ordinary skill in the art before the effective filing date.
Regarding claim 8, the disclosure in [0027] of a 25mm cylinder diameter together with Figs. 2, 7 and 8 would have suggested a thread height in the claimed range to one of ordinary skill in the art before the effective filing date.
Regarding claim 9, it would have been obvious to one of ordinary skill in the art before the effective filing date to have made the threads smooth so as to rotate well with respect to the engaging nut-like threads (see [0039]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID L SORKIN whose telephone number is (571)272-1148. The examiner can normally be reached 7am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Claire X 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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DAVID L. SORKIN
Examiner
Art Unit 1774
/DAVID L SORKIN/Primary Examiner, Art Unit 1774