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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/01/2026 has been entered.
Election/Restriction
Applicant's previous election of Group I & Species 1 (Figure 1) is noted.
Claim Objections
Claims 16, and 18-24 are objected to because of the following informalities:
Claim 16 Line 6 currently states:
“the pump and electric motor sharing a common housing, the common housing having a”.
Should be changed to state:
--the pump and the electric motor sharing a common housing, the common housing having a--.
Appropriate correction is required.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the
“a housing through which the first output port and the second output port are guided and which is arranged around both the pump and the electric motor,” (Claim 16).
Although these features are shown schematically in Fig 1, they should be shown structurally in Fig 2 to help in the understanding of what is being claimed.
“wherein on a side of the pump, a needle bearing is arranged between the pump and the housing” (Claim 22).
must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 16, and 18-24 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.
Regarding Claim 16: Line 5-9 states:
“an electric motor being configured to drive the pump, the pump and electric motor sharing a common housing, the common housing having a bearing installed therein; and
a housing through which the first output port and the second output port are guided and which is arranged around both the pump and the electric motor, wherein”.
It is unclear the exact limitations the applicant is introducing here, specifically since the common housing and the housing are referred to with separate element names, it is understood that they are different structural elements. Additionally in the REM filed on 04/01/2026 (Page 6 ¶4-Page 7 ¶1) Applicant indicates that the claimed common housing is element 200 in Fig 2. Accordingly, if element 200 is the common housing and the housing is a different structural feature, than the common housing, then the housing with the first and second output ports must be different than element 200. However, Figure(s) 2 do(es) not show “a housing through which the first output port and the second output port are guided and which is arranged around both the pump and the electric motor,” as claimed, and Fig 2 does not appear to illustrate any output ports where the fluid leaves/flows through the housing structure shown in Fig 2. Because Applicant does not appear to disclose any structure that is consistent with the particular language recited in the claim, there is a conflict between the claimed subject matter and the specification disclosure which renders the scope of the claims uncertain. Therefore because the specification does not support the claims at issue, the claim is indefinite when read in light of the specification. See in Re Paul G. Anderson, John A. Mcmennamy, Andrew P. Burke and Thomas A. Rak, 106 F.3d 425 (Fed. Cir. 1997) (Because appellants show no structure in their specification consistent with this claim language, [the claim] is indefinite). Also see MPEP §2173.03. For the purpose of examination the claim will be examined as best understood where the common housing and the housing will be examined as claiming the same structural feature – this is because ¶0038 on Page 10 of the SPEC indicates that element 200 corresponds to both the housing and the common housing.
Regarding Claim 16: Line 8-9 states: “a housing through which the first output port and the second output port are guided and which is arranged around both the pump and the electric motor”. It is unclear the exact limitations the applicant is introducing here, specifically is unclear what is meant by the language in question – since the output ports are static structures and the “guided” language suggests some type of motion. For examination purposes, “guided” will be interpreted as “formed”.
Regarding Claim 21: Line 1-3 states: “wherein the housing has a channel for guiding the working medium from an inlet along an inside wall of the housing to the motor winding, and”. It is unclear the exact limitations the applicant is introducing here, specifically the drawings show channel 206 being located in common housing 200, not the housing as claimed. Because Applicant does not appear to disclose any structure that is consistent with the particular language recited in the claim, there is a conflict between the claimed subject matter and the specification disclosure which renders the scope of the claims uncertain. For the purpose of examination the claim language in question will be read as: --wherein the common housing has a channel for guiding the working medium from an inlet along an inside wall of the common housing to the motor winding, and--.
Finally; depending claim(s) inherit deficiencies from the parent claim(s). Appropriate correction is required.
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) 16, 20-21, and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kempton USPN 2148561 in view of Pringle US 2003/0070879.
Regarding Claim 16: Kempton USPN 2148561 discloses the limitations:
a pump (10,36,37,38, Page 2 Column 1 Line 68-70) being configured to alternatively pump a working medium (i.e. liquid Page 2 Column 1 Line 39-42) to a first output port (first outlet port = 52, Page 3 Column 1 Line 13-20) or alternatively to a second output port (second outlet port = 51, Page 3 Column 1 Line 20-28);
an electric motor 11 being configured to drive the pump (Page 2 Column 1 Line 68-74, Page 1 Column 2 Line 14-20), the pump (10,36,37,38) and the electric motor 11 sharing a common housing (common housing = 9,43,25; as understood from Page 1 Column 2 Line 14-53, Fig 1 & Fig 2 the elements of the internal gear pump are located inside chamber 23 formed by elements 43,9,25 of the housing, and the electric motor 11 is supported on platform 16 of the housing 9 – thus the motor and the pump share common housing 9,43,25 as claimed); and a housing (i.e. element 43 of the housing) through which the first output port and the second output port are guided (Page 2 Column 2 Line 63-66; the first outlet port 52 and the second outlet port 51 are formed/guided in element 43 of the housing as claimed) and which is arranged around (i.e. arranged near) both the pump and the electric motor (Fig 1, since elements 43,9,25 surround the pump and elements 25 and 16 (where element 16 is a part of element 9) are near the motor it is understood that the housing 9,43,25 is around the pump and motor as claimed), wherein
the electric motor and the pump are arranged on a common shaft (20,21, Fig 1, Fig 5), a distal end of the common shaft (distal end = end where 21 is located – see Fig 1 & Fig 5) being installed in the common housing (as seen in Fig 1 & Fig 5). Kempton USPN 2148561 is silent regarding the limitations: the common housing having a bearing installed therein; and a distal end of the common shaft being supported by the bearing installed in the common housing. The prior art of Pringle US 2003/0070879 which is directed to a motor driven internal gear pump (Figs 1-2) like Kempton USPN 2148561, is noted.
However, Pringle US 2003/0070879 does disclose the limitations: an electric motor (32,34,24,30 ¶0011-¶0012) being configured to drive the pump (¶0001, ¶0005), the pump (the pump = 14, gerotor set pump, ¶0011) and the electric motor (electric motor = 32,34,24,30) sharing a common housing (12,40,19,42 Fig 2), the common housing having a bearing (48, ¶0012) installed therein (Fig 2); and
a housing (i.e. element 19 of the housing, ¶0010-¶0011, Fig 2) through which the first output port and the second output port (the first output port corresponds to 20 and the second output port corresponds to 22, ¶0011, Fig 1) are guided (as understood from Fig 1 & Fig 2 the first and second ports are formed/guided in element 19 of the housing) and which is arranged around (i.e. near) both the pump and the electric motor (as understood from Figs 1-2, elements 19,12,40,42 of the common housing/housing are arranged near/around both the motor and the pump as claimed), wherein
the electric motor and the pump are arranged on a common shaft 28, a distal end of the common shaft (distal end of the common shaft = end of shaft 28 located between element 31 and element 19 in Fig 2) being supported by the bearing 48 installed in the common housing (as seen in Fig 2).
Hence it would have been obvious, to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the electric motor 11 , the common housing/housing 9,43,25, and the common shaft (20,21) of Kempton USPN 2148561 with the electric motor (32,34,24,30), the common housing/housing (12,40,19,42), the common shaft 28, and bearings 48,54 of Pringle US 2003/0070879 in order to make the pump more compact (¶0018).
Regarding Claim 20: Pringle US 2003/0070879 discloses the limitations: wherein the electric motor (32,34,24,30) has a motor winding (32, ¶0011) which is surrounded by the working medium (¶0017, Fig 2; as described in ¶0017 opening 38 allows the motor chamber to be flooded with oil/working fluid to cool the motor; accordingly in the combination of prior art the motor winding 32 would be surrounded by the working medium as claimed).
Regarding Claim 21: Pringle US 2003/0070879 discloses the limitations: wherein the common housing (12,40,19,42) has a channel (38, Fig 2, ¶0017) for guiding the working medium from an inlet (i.e. from an inlet which the working medium inherently passed through before reaching pumping chamber 17 located adjacent to element 38 in Fig 2, ¶0010, ¶0017) along an inside wall of the common housing (i.e. along the inside wall of the motor housing generally indicated by element 38 in Fig 2) to the motor winding (i.e. to the motor winding 32 in Fig 2), and the channel is formed to guide the working medium around the motor winding (since the chamber where the motor is located in Fig 2 is flooded due to channel 38, the working medium would inherently be located/guided around/near the motor winding 32 as claimed).
Regarding Claim 24: Kempton USPN 2148561 discloses the limitations: wherein the pump is a bidirectional hydraulic pump (since the hydraulic pump is described as operating in two different rotational directions (Page 3 Column 1 Line 13-28) it is a bidirectional hydraulic pump as claimed).
Claim(s) 22-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kempton USPN 2148561 in view of Pringle US 2003/0070879 as applied to claim 16 above, and further in view of Homma US 2019/0234404.
Regarding Claim 22: Kempton USPN 2148561 as modified by Pringle US 2003/0070879 discloses in the above mentioned Figures and Specifications the limitations set forth in claim 16. Kempton USPN 2148561 as modified by Pringle US 2003/0070879 does not disclose the limitations: on a side of the electric motor, a ball bearing is provided.
However Homma US 2019/0234404 does disclose the limitations: wherein on a side of the electric motor (a side of the electric motor = (lower side of assembly in Fig 9 generally indicated by element 652 | lower side of stator 5000 in Fig 10)), a ball bearing is provided (lower bearing member 422 is a ball bearing (Fig 9 - ¶0112-¶0113 | Fig 10 - ¶0135-¶0136)).
Hence it would have been obvious, to one of ordinary skill in the art at the effective filing date of the application to use ball bearing 422 of Homma US 2019/0234404 to rotationally support the lower side of the shaft instead of bearing 54 at the lower side of the shaft 28 of Kempton USPN 2148561 as modified by Pringle US 2003/0070879, since the ball bearing 422 of Homma US 2019/0234404 and the bearing 54 of Pringle US 2003/0070879 are recognized as equivalent structures for their use in the art of bearings and selection of any of these known equivalents to rotationally support an end of the shaft would be within the level of a person having ordinary skill in the art (see MPEP §2144.06).
Regarding Claim 23: Kempton USPN 2148561 as modified by Pringle US 2003/0070879 discloses in the above mentioned Figures and Specifications the limitations set forth in claim 16. Kempton USPN 2148561 as modified by Pringle US 2003/0070879 does not disclose the limitations: wherein the electric motor is a disk motor.
However Homma US 2019/0234404 does disclose the limitations: wherein the electric motor is a disk motor (electric motor = 401,402,501, Fig 9, ¶0101).
Hence it would have been obvious, to one of ordinary skill in the art at the effective filing date of the application to use the electric motor (401,402,501, Fig 9, ¶0101) of Homma US 2019/0234404 instead of the electric motor (32,34,24,30) of Kempton USPN 2148561 as modified by Pringle US 2003/0070879, since the electric motor (401,402,501) of Homma US 2019/0234404 and the electric motor (32,34,24,30) of Pringle US 2003/0070879 are recognized as equivalent structures for their use in the art of motor driven pumps and selection of any of these known equivalents to rotate a pump would be within the level of a person having ordinary skill in the art (see MPEP §2144.06).
Claim(s) 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kempton USPN 2148561 in view of Pringle US 2003/0070879 as applied to claim 16 above, and further in view of Enjoji USPN 10003230.
Regarding Claim 18: Kempton USPN 2148561 as modified by Pringle US 2003/0070879 discloses in the above mentioned Figures and Specifications the limitations set forth in claim 16.
Additionally, Kempton USPN 2148561 as modified by Pringle US 2003/0070879 discloses the limitations: wherein the electric motor has a rotor (Pringle – rotor = 24,30, Fig 2, ¶0011) with a plurality of magnets (¶0011). Kempton USPN 2148561 as modified by Pringle US 2003/0070879 does not disclose the limitations: a plurality of permanent magnets, and mutually adjacent ones of the plurality of permanent magnets are spaced apart by slots for passage of the working medium.
However Enjoji USPN 10003230 does disclose the limitations: an electric motor (2, Column 2 Line 61-65), wherein the electric motor has a rotor (rotor 8, Column 2 Line 61-Column 3 Line 3, Column 4 Line 37-55, Fig 1 & Figs 7-8) with a plurality of permanent magnets (rotor 8 has permanent magnets 50 as seen in Figs 7-8), and mutually adjacent ones of the plurality of permanent magnets (i.e. adjacent magnets 50 in the circumferential direction of the rotor in Fig 7) are spaced apart by slots 56 for passage of fluid (Column 4 Line 56-Column 5 Line 1 – when the rotor rotates, air (i.e. fluid) flows through grooves 56).
Hence it would have been obvious, to one of ordinary skill in the art at the effective filing date of the application to use the electric motor 2 of Enjoji USPN 10003230 to rotate the pump instead of the electric motor (32,34,24,30) of Kempton USPN 2148561 as modified by Pringle US 2003/0070879, since permanent magnet motor 2 of Enjoji USPN 10003230 and the electric motor (32,34,24,30) of Pringle US 2003/0070879 are recognized as equivalent structures for their use in the art of rotating a shaft and selection of any of these known equivalents to rotate the common shaft connecting the motor to the pump would be within the level of a person having ordinary skill in the art (see MPEP §2144.06).
Further Regarding Claim 18: following the combination of prior art when the electric motor 2 of Enjoji rotates the working fluid/oil located inside the common housing of Pringle, will flow through the slots (Enjoji - 56) located between circumferentially adjacent permeant magnets (Enjoji - Figure 7, Column 4 Line 44-64).
Regarding Claim 19: Enjoji USPN 10003230 does disclose the limitations: wherein the slots 56 are formed so as to convey the working medium on rotation of the rotor (Column 5 Line 23-32).
Examiner's Note: The Examiner respectfully requests of the Applicant in preparing responses, to fully consider the entirety of the references as potentially teaching all or part of the claimed invention.
It is noted, REFERENCES ARE RELEVANT AS PRIOR ART FOR ALL THEY CONTAIN. “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments (see MPEP § 2123).
Additionally the origin of the drawing is immaterial. For instance, drawings in a design patent can anticipate or make obvious the claimed invention, as can drawings in utility patents. When the reference is a utility patent, it does not matter that the feature shown is unintended or unexplained in the specification. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979). (See MPEP § 2125).
The Examiner has cited particular locations in the reference(s) as applied to the claims above for the convenience of the Applicant. Although the specified citations are representative of the teachings of the art and are applied to the specific limitations within the individual claims, typically other passages and figures will apply as well.
Furthermore: with respect to the prior art and the determination of obviousness, it has been held that Prior art is not limited just to the references being applied, but includes the understanding of one of ordinary skill in the art. The "mere existence of differences (i.e. a gap) between the prior art and an invention DOES NOT ESTABLISH the inventions nonobviousness." Dann v. Johnston, 425 U.S. 219, 230, 189 USPQ 257, 261 (1976). Rather, in determining obviousness the proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts. And factors other than the disclosures of the cited prior art may provide a basis for concluding that it would have been obvious to one of ordinary skill in the art to bridge the gap. (See MPEP § 2141).
Response to Arguments
Applicant’s arguments with respect to claim(s) 16, 18-24 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH S HERRMANN whose telephone number is (571)270-3291. The examiner can normally be reached 8:00 AM - 5:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ESSAMA OMGBA can be reached at 469-295-9278. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH S. HERRMANN/ Examiner, Art Unit 3746
/ESSAMA OMGBA/ Supervisory Patent Examiner, Art Unit 3746
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