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 .
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 16-20, 22, 26, 27, 29, 31 and 33 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. The claim limitation wherein “the sealing element assembly is adapted to be moveably arranged in an axial direction reversibly between a non-sealing position and a sealing position”, is not described in the original specification (or Para. 0071 of US Pub 2024/0200661) 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.
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.
Claim(s) 16-19, 26 and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hemmelmann et al. (DE 19955625).
Regarding claim 16, Hemmelmann et al. discloses a sealing element assembly for a single type mechanical shaft seal assembly Fig. 3a, the sealing element assembly adapted to be arranged between the circumference of a rotatable shaft 7 and a static housing 5 surrounding the shaft: wherein a first side in an axial direction of the sealing element assembly is adapted to face an enclosed space 3 between the housing and the shaft; wherein an opposite second side of the sealing element assembly is adapted to face an ambient space; wherein the sealing element assembly is adapted to be moveably arranged in an axial direction between a non-sealing position Fig. 3a and a sealing position Fig. 3b; wherein the sealing element assembly in the non-sealing position is adapted to be arranged at distance from a surface of a plane that is transverse to or tapered up to ±5 degrees to an axis of the shaft; wherein in the sealing position the sealing element assembly is arranged to seal against a surface such that the sealing element assembly is adapted to constitute a sealing between the rotatable shaft and the housing when the enclosed space is pressurized; wherein the sealing element assembly is a ring-shaped element 9 and is adapted to be movably arranged along a shaft and inside and in sealing contact with a housing and is adapted to be slidably arranged within the housing such that the sealing element assembly is at a distance from the shaft, and movably arranged between a non-sealing position where the sealing element assembly is adapted to be in sealing contact with the housing and at a distance from the shaft and a sealing position in which the sealing element assembly is adapted to be in sealing contact with the housing and at a distance from the shaft and in sealing contact with a flange 19 on the shaft 7; and wherein the ring-shaped element comprises a resilient element as a seal and is arranged on a surface of the ring-shaped element facing a transverse surface of the flange and the ambient space and arranged to be in contact with the flange of the rotatable shaft upon pressurization of the enclosed space. However, Hemmelmann et al. fails to explicitly disclose the sealing element assembly is adapted to be moveably arranged in an axial reversibly direction between a non-sealing position Fig. 3a and a sealing position Fig. 3b. Nevertheless, [A]pparatus claims cover what a device is, not what a device does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)
Regarding claim 17, Hemmelmann et al. as modified discloses wherein the seal 14 is arranged in a circular recess on the surface of the ring-shaped element 9.
Regarding claim 18, Hemmelmann et al. as modified discloses a second seal 14 arranged on the ring-shaped element 9 and adapted to be in sealing contact with the housing 5.
Regarding claim 19, Hemmelmann et al. as modified discloses wherein the second seal 14 is arranged in a circumferential recess 15 of the ring-shaped element 9.
Regarding claim 26, Hemmelmann et al. as modified discloses a single type mechanical shaft seal assembly comprising a sealing element assembly Fig. 3a.
Regarding claim 27, Hemmelmann et al. as modified discloses wherein the enclosed space 3 is coupled to an inlet 12 opening that is connected to a source of selective pressurization capable causing reversible transitions between sealing and non-sealing configurations of the sealing element.
Claim(s) 20 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hemmelmann et al. in view of Komatsu et al. (US 10914382).
Regarding claim 20, Hemmelmann et al. discloses the invention as claimed above but fails to explicitly disclose a second seal configured to fit in the housing and arranged to be in contact with the circumferential surface of the ring-shaped element. Komatsu et al., a sealing element assembly Fig. 3, discloses a second seal 28 configured to fit in the housing 24 and arranged to be in contact with the circumferential surface of the ring-shaped element 23. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention provide the seal element of Hemmelmann et al. with a second seal as taught by Komatsu et al. in order to provide an improved sealing between the housing and the ring shaped element. (Col. 9, Ln. 17-26 of Komatsu et al.)
Regarding claim 22, the combination discloses wherein a second seal (28 of Komatsu et al.) is arranged to bias the sealing element assembly 9 towards a non-sealing position when the ring-shaped element is arranged in the housing.
Allowable Subject Matter
Claims 28-33 are allowed.
The following is an examiner’s statement of reasons for allowance: In view of the Applicants arguments and a review of the prior art by the Examiner; the prior art of record neither teaches nor suggests all of the claimed subject matter of claim 28 including where the ring-shaped element has a radially protruding flange arranged to be in sealing contact with the housing. There is no motivation to modify the prior art references, absent the applicant’s own disclosure, in the manner required by the claims.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant's arguments filed 1/20/26 have been fully considered but they are not persuasive. Applicant argues that the Hemmelmann reference seals are inherently single-use and irreversible, intended to function only once under emergency or failure conditions. This is not persuasive, since as discussed above apparatus claims cover what a device is, not what a device does. Moreover, Applicant does not disclose in the original specification the claim function of reversibility. Furthermore a claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim.
Examiner notes that while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Apparatus claims cover what a device is, not what a device does. Furthermore, applicant is advised that recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In other words, even if the prior art does not explicitly disclose the intended use or the function of the apparatus as written in the claims of the instant invention, the prior art may not be patentably distinguishable from the instant invention. Please see MPEP 2106 and 2114.
Further structure should be claimed to further define the sealing element.
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 EUGENE G BYRD whose telephone number is (571)270-1824. The examiner can normally be reached Monday-Friday 9am-5:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kristina Fulton can be reached at 5712727376. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EUGENE G BYRD/Primary Examiner, Art Unit 3675
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