FINAL OFFICE ACTION
This application has been assigned or remains assigned to Technology Center 1700, Art Unit 1774 and the following will apply for this application:
Please direct all written correspondence with the correct application serial number for this application to Art Unit 1774.
Telephone inquiries regarding this application should be directed to the Electronic Business Center (EBC) at http://www.uspto.gov/ebc/index.html or 1-866-217-9197 or to the Examiner at (571) 272-1139. All official facsimiles should be transmitted to the centralized fax receiving number (571)-273-8300.
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 .
Priority
Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d). All of the CERTIFIED copies of the priority documents have been received in this national stage application from the International Bureau (PCT Rule 17.2(a)).
Information Disclosure Statement
Note the attached PTO-1449 forms submitted with the Information Disclosure Statement filed 1 SEP 2026.
Specification
The substitute Abstract of the Disclosure is approved.
The revised title of the invention is outstanding.
Claim Rejections - 35 U.S.C. § 112(a)
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 1-12 and 15-20 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.
Claim 1 now recites that the bearing holder comprises “a flexible outer portion”. No support in the specification was found for this subject matter. It is agreed that the central portion of the bearing holder is axially flexible or deflectable via the spokes, but said outer portion being flexible, particularly when mounted in the housing/conduit 18 of the centrifuge where the outer portion is affixed in place via fasteners 35, is subject matter not readily apparent from the written specification.
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 1-12 and 15-20 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.
Amended claim 1, lines 21-25 curiously repeat subject matter found in lines 17-19 of claim 1 leading to confusion.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2, 15, 16, and 18 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The subject matter of claim 2 appears in amended claim 1 in its entirety.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
See Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications. 76 FR 7166 (Feb. 9, 2011):
5. Dependent Claims: When examining a dependent claim, the examiner should also determine whether the claim complies with § 112, ¶4, which requires that dependent claims contain a reference to a previous claim in the same application, specify a further limitation of the subject matter claimed, and necessarily include all the limitations of the previous claim. If the dependent claim does not comply with the requirements of § 112, ¶4, the examiner should reject the dependent claim under § 112, ¶4 as unpatentable rather than objecting to the claim. Although the requirements of § 112, ¶4 are related to matters of form, noncompliance with § 112, ¶4 renders the claim unpatentable just as noncompliance with other paragraphs of § 112 would. For example, a dependent claim must be rejected under § 112, ¶4 if it omits an element from the claim upon which it depends or it fails to add a limitation to the claim upon which it depends. (footnotes omitted).
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 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 terms used in this respect are given their broadest reasonable interpretation in their ordinary usage in context as they would be understood by one of ordinary skill in the art, in light of the written description in the specification, including the drawings, without reading into the claim any disclosed limitation or particular embodiment. See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
The Examiner interprets claims as broadly as reasonable in view of the specification, but does not read limitations from the specification into a claim. Elekta Instr. S.A.v.O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000). "A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. Inc. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987).
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness." In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983). See MPEP 2112.
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 13-14 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by CARSON (US 6354988) that discloses bearing holder embodiments 192, 200, or 300 for a bearing comprising a central portion 199, 220, or 315 for supporting a bearing 163 therein; radial spokes 193 or 225 extending from said central portion; wherein the central portion is flexible in one or more directions; attachment members 135a, 195 or 235; and ring structure 194 at a radially outer portion.
In another embodiment 300 of the bearing holder, a radial disk element 300, 310 with a central portion at 315 for supporting the bearing 163 in Figure 5 [see claim 11] forms said bearing holder.
The radial spokes 193, 225 extend radially outwards from said central portion to a radially outer portion 194 or 210, and the central portion is flexible in the axial direction relative to the radially outer portion due to a flexibility in said at least two radial spokes (at arc 160 in Figure 2; col. 3, lines 31-52; col. 5, lines 42-56; col. 5, line 66 – col. 6, line 3).
Claims 13-14 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by STOKELY (US 3306679) that discloses a bearing holder embodiment in Figures 1-4 for a bearing comprising a central portion 40 for supporting a bearing C therein; radial spokes 45, 46 extending from said central portion; wherein the central portion is flexible in one or more directions; attachment members 20 and/or the fastener seen in Figure 2 (one being disposed above “53” in Figure 2); and a ring structure 20.
The radial spokes extend radially outwards from said central portion to a radially outer portion 20, and the central portion is flexible in the axial direction relative to the radially outer portion due to a flexibility in said at least two radial spokes (col. 1, lines 54-58; col. 2, lines 67-72; col. 3, lines 49-60).
Claims 13-14 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by WO 2021/124086 that discloses a bearing holder 9 for a bearing comprising a central portion 20 or 20a for supporting a bearing 6 therein; radial spokes 14 extending from said central portion; wherein the central portion is flexible in one or more directions; attachment members 16; and a ring structure 21.
The radial spokes extend radially outwards from said central portion to a radially outer portion 21, and the central portion 20 or 20a is flexible in the axial direction relative to the radially outer portion due to a flexibility in said at least two radial spokes (¶ [0016] – [0018], [0040], [0064], [0095] – [0097]).
Claims 13-14 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by WO 94/16234 that discloses a bearing holder 40 for a bearing comprising a central portion 42 for supporting a bearing 52 therein; radial spokes 43a-43c extending from said central portion; wherein the central portion is flexible in one or more directions; attachment members (the fasteners seen at the top portion of Figures 3 and 7); and a ring structure 46.
The radial spokes 193, 225 extend radially outwards from said central portion to a radially outer portion 194 or 210, and the central portion is flexible in the axial direction relative to the radially outer portion due to a flexibility in said at least two radial spokes (at page 1, lines 4-7; page 2, lines 27-32; page 5, last paragraph through page 6, first paragraph; and claim 1).
Bearing preload is discussed and disclosed at pages 1-2; page 5, last paragraph; page 6, lines 11-12; page 6, lines 24-36; and claim 1).
The bearing holder of WO ‘234 may be employed in “a spindle assembly for any other apparatus in which radial displacement of the shaft is undesirable [such as a centrifuge] – page 6, lines 24-32.
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With regard to the 102 rejections above and the 103 rejections below, the following claim interpretation rationales are demarcated as follows:
The recitation of “configured to be secured to a stationary housing of a centrifugal separator” is an intended use which has not been afforded any patentable weight because it has been held that 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 satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647; In re Sebald, 122 USPQ 527; In re Lemin et al., 140 USPQ 273; In re Sinex, 135 USPQ 302; In re Pearson, 181 USPQ 641. Nevertheless, the bearing holder in CARSON et al. is employed in a centrifugal separator environment.
Other than reciting a broad property generally inherent to most materials (flexibility) as outlined below, the recitation of “and the central portion is flexible in the axial direction relative to the radially outer portion due to a flexibility in said at least two radial spokes” recites no structure to define over the prior art.
Moreover, from https://en.wikipedia.org/wiki/Hooke's_law:
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Accordingly, since the extension of a spring member is proportional to the force applied, it can be argued that the bearing holders of the prior art herein (and elsewhere for that matter) possess some degree of flexibility (such degree of flexibility, modulus of elasticity, etc. are not at issue, disclosed, or claimed) as a function of the magnitude of the force applied (again, such force not at issue, disclosed, or claimed). Thus, irrespective of the configuration or materials forming the spring-like bearing holders of the prior art, such bearing holders can be deemed “flexible”, at least to some degree if enough force is applied. Under BRI, the term “flexible” or “flexibility” recited in a vacuum without context, as in this application, is an extremely broad term that invokes no structure of the bearing holder. The examiner thus argues for appeal that the spoked bearing holders of the prior art above are “flexible” or possess “flexibility” within the broad scope of these vacuous terms, thus each of the central portion, spokes, disc, and outer portion of the prior art bearing holders can be deemed flexible or possess flexibility.
Nevertheless, CARSON et al. does disclose this subject matter (the central portion is flexible in the axial direction relative to the radially outer portion due to a flexibility in said at least two radial spokes) at arc 160 in Figure 2; col. 3, lines 31-52; col. 5, lines 42-56; col. 5, line 66 – col. 6, line 3; STOKELY discloses at col. 1, lines 54-58; col. 2, lines 67-72; col. 3, lines 49-60; WO 2021/124086 discloses at ¶ [0016] – [0018], [0040], [0064], [0095] – [0097]; and WO 94/16234 discloses at page 1, lines 4-7; page 2, lines 27-32; page 5, last paragraph through page 6, first paragraph; and claim 1).
The claim language related to “axial preload when the bearing holder is mounted. . .”, the “bearing holder is flexible in an axial direction when dismounted from said centrifugal separator”, and “the central portion is axially deflected relative to the outer portion with a pre-tension to provide axial preload of the at least one bearing” recites no further structure of the centrifugal separator or the bearing holder and as held in In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967), "the manner or method in which such machine is to be utilized is not germane to the issue of patentability of the machine itself." See MPEP 2115. The recited axial preload when mounted, dismounting of the bearing holder, the bearing holder being arranged in said centrifugal separator, and pre-tension is merely a method of operation, assembly or manufacture which is not germane to the patentability of the bearing holder or centrifugal separator apparatus itself. Nevertheless, WO 94/16234 discloses bearing preloading as outlined above.
APPARATUS CLAIMS MUST BE STRUCTURALLY DISTINGUISHABLE FROM THE PRIOR ART
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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. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971);In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[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). See MPEP 2114.
CARSON et al. (in the embodiments relied upon – Figures 2-5, not Figures 6-12B), STOKELY, WO 2021/124086, and WO 94/16234 all do not include a separate compression spring as recited in claims 1 and 2.
Claim Rejections - 35 USC § 103
The terms used in this respect are given their broadest reasonable interpretation in their ordinary usage in context as they would be understood by one of ordinary skill in the art, in light of the written description in the specification, including the drawings, without reading into the claim any disclosed limitation or particular embodiment. See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). The Examiner interprets claims as broadly as reasonable in view of the specification, but does not read limitations from the specification into a claim. Elekta Instr. S.A.v.O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000).
To determine whether subject matter would have been obvious, "the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved .... Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented." Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).
The Supreme Court has noted:
Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.
KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1740-41 (2007). "Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." (Id. at 1742).
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.
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 instant office action conforms to the policies articulated in the Federal Register notice titled “Updated Guidance for Making a Proper Determination of Obviousness” at 89 Fed. Reg. 14449, February 27, 2024, wherein the Supreme Court’s directive to employ a flexible approach to understanding the scope of prior art is reflected in the frequently quoted sentence, ‘‘A person of ordinary skill is also a person of ordinary creativity, not an automaton.’’ Id. at 421, 127 S. Ct. at 1742. In this section of the KSR decision, the Supreme Court instructed the Federal Circuit that persons having ordinary skill in the art (PHOSITAs) also have common sense, which may be used to glean suggestions from the prior art that go beyond the primary purpose for which that prior art was produced. Id. at 421–22, 127 S. Ct. at 1742. Thus, the Supreme Court taught that a proper understanding of the prior art extends to all that the art reasonably suggests, and is not limited to its articulated teachings regarding how to solve the particular technological problem with which the art was primarily concerned. Id. at 418, 127 S. Ct. at 1741 (‘‘As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.’’). ‘‘The obviousness analysis cannot be confined . . . by overemphasis on the importance of published articles and the explicit content of issued patents.’’ Id. at 419, 127 S. Ct. at 1741. Federal Circuit case law since KSR follows the mandate of the Supreme Court to understand the prior art— including combinations of the prior art—in a flexible manner that credits the common sense and common knowledge of a PHOSITA. The Federal Circuit has made it clear that a narrow or rigid reading of prior art that does not recognize reasonable inferences that a PHOSITA would have drawn is inappropriate. An argument that the prior art lacks a specific teaching will not be sufficient to overcome an obviousness rejection when the allegedly missing teaching would have been understood by a PHOSITA—by way of common sense, common knowledge generally, or common knowledge in the relevant art. For example, in Randall Mfg. v. Rea, 733 F.3d 1355 (Fed. Cir. 2013), the Federal Circuit vacated a determination of nonobviousness by the Patent Trial and Appeal Board (PTAB or Board) because it had not properly considered a PHOSITA’s perspective on the prior art. Id. at 1364. The Randall court recalled KSR’s criticism of an overly rigid approach to obviousness that has ‘‘little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications.’’ Id. at 1362, citing KSR, 550 U.S. at 415–22, 127 S. Ct. at 1727. In reaching its decision to vacate, the Federal Circuit stated that by ignoring evidence showing ‘‘the knowledge and perspective of one of ordinary skill in the art, the Board failed to account for critical background information that could easily explain why an ordinarily skilled artisan would have been motivated to combine or modify the cited references to arrive at the claimed inventions.’’ Id.
From Norgren Inc. v. Int’l Trade Comm’n, 699 F.3d 1317, 1322 (Fed. Cir. 2012) (‘‘A flexible teaching, suggestion, or motivation test can be useful to prevent hindsight when determining whether a combination of elements known in the art would have been obvious.’’); Outdry Techs. Corp. v. Geox S.p.A., 859 F.3d 1364, 1370–71 (Fed. Cir. 2017) (‘‘Any motivation to combine references, whether articulated in the references themselves or supported by evidence of the knowledge of a skilled artisan, is sufficient to combine those references to arrive at the claimed process.’’). In keeping with this flexible approach to providing a rationale for obviousness, the Federal Circuit has echoed KSR in identifying numerous possible sources that may, either implicitly or explicitly, provide reasons to combine or modify the prior art to determine that a claimed invention would have been obvious. These include ‘‘market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.’’ Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013), quoting KSR, 550 U.S. at 418–21, 127 S. Ct. at 1741–42.
The Federal Circuit has also clarified that a proposed reason to combine the teachings of prior art disclosures may be proper, even when the problem addressed by the combination might have been more advantageously addressed in another way. PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014) (‘‘Our precedent, however, does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away.’’) (emphasis in original). One aspect of the flexible approach to explaining a reason to modify the prior art is demonstrated in the Federal Circuit’s decision in Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 796 (Fed. Cir. 2021), which confirms that a proposed reason is not insufficient simply because it has broad applicability. Patent challenger Intel had argued in an inter partes review before the Board that some of Qualcomm’s claims were unpatentable because a PHOSITA would have been able to modify the prior art, with a reasonable expectation of success, for the purpose of increasing energy efficiency. Id. at 796–97. The Federal Circuit explained that ‘‘[s]uch a rationale is not inherently suspect merely because it’s generic in the sense of having broad applicability or appeal.’’ Id. The Federal Circuit further pointed out its pre-KSR holding ‘‘that because such improvements are ‘technology independent,’ ‘universal,’ and ‘even common-sensical,’ ‘there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves.’ ’’ Id., quoting DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (emphasis added by the Federal Circuit in Intel). When formulating an obviousness rejection, the PTO may use any clearly articulated line of reasoning that would have allowed a PHOSITA to draw the conclusion that a claimed invention would have been obvious in view of the facts. MPEP 2143, subsection I, and MPEP 2144. Acknowledging that, in view of KSR, there are ‘‘many potential rationales that could make a modification or combination of prior art references obvious to a skilled artisan,’’ the Federal Circuit has also pointed to MPEP 2143, which provides several examples of rationales gleaned from KSR. Unwired Planet, 841 F.3d at 1003.
When considering the prior art in its entirety, note Allied Erecting v. Genesis Attachments, 825 F.3d 1373, 1381, 119 USPQ2d 1132, 1138 (Fed. Cir. 2016) ("Although modification of the movable blades may impede the quick change functionality disclosed by Caterpillar, ‘[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.’" (quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165, 77 USPQ2d 1865, 1870 (Fed Cir. 2006) (citation omitted))). However, "the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
In view of the 103 guidance above, claims 1-12 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over ELIASSON et al. (US 2007/0249479 A1) in view of CARSON (US 6354988).
ELIASSON et al. discloses the recited centrifugal separator substantially as claimed as clearly depicted in Figures 1 or 2 including upper and lower bearings 20, 22 (Figure 1) and 58, 62 (Figure 2) with the bearing 58 being disposed within a bearing holder 60 but does not disclose the claimed bearing holder including spokes or a disc element allowing flexibility of the bearing holder.
CARSON (US 6354988) is relied upon as above and thus discloses bearing holder embodiments 192, 200, or 300 for a bearing comprising a central portion 199, 220, or 315 for supporting a bearing 163 therein; radial spokes 193 or 225 extending from said central portion; wherein the central portion is flexible in one or more directions; attachment members 135a, 195 or 235; and ring structure 194 at a radially outer portion. The embodiment 300 of the bearing holder includes a radial disk element 300, 310 with a central portion at 315 for supporting the bearing 163 in Figure 5; and discloses bearing holder embodiments 192, 200, or 300 for a bearing comprising a central portion 199, 220, or 315 for supporting a bearing 163 therein; radial spokes 193 or 225 extending from said central portion; wherein the central portion is flexible in one or more directions; attachment members 135a, 195 or 235; and ring structure 194 at a radially outer portion.
In another embodiment 300 of the bearing holder, a radial disk element 300, 310 with a central portion at 315 for supporting the bearing 163 in Figure 5 [see claim 11] forms said bearing holder.
The radial spokes 193, 225 extend radially outwards from said central portion to a radially outer portion 194 or 210, and the central portion is flexible in the axial direction relative to the radially outer portion due to a flexibility in said at least two radial spokes (at arc 160 in Figure 2; col. 3, lines 31-52; col. 5, lines 42-56; col. 5, line 66 – col. 6, line 3).
It would have been obvious to one skilled in the art before the effective filing date of the invention to have substituted the bearing holder in ELIASSON et al. with the spoked or disc-shaped bearing holder of CARSON for the purposes of resiliently damping the bearing and/or bearing holder thereby reducing noise and vibration of the centrifugal separator due to displacements of the drive shaft during rotation; to provide a centrifuge assembly that comprises a rotor shaft assembly and a diaphragm disposed about the rotor shaft assembly wherein the diaphragm permits the rotor shaft assembly to pivot off a vertical axis while horizontal displacement of the drive shaft assembly is substantially limited; the centrifuge assembly typically comprises a rotor, a rotor shaft assembly and a diaphragm flexibly secured about the rotor shaft assembly wherein the rotor shaft assembly may include a rotor shaft coupled to the drive shaft via an intermediate coupling, and, optionally, a gyro housing enclosing one end of the rotor shaft and one end of the coupling; in one embodiment, the diaphragm is comprised of a plurality of radially directed bars; in a second embodiment, the diaphragm is comprised of an inner flange and an outer flange having a common center point wherein the flanges are connected by radially directed bars; in a third embodiment, the diaphragm is a disk with a centrally located hole and the disk provides flexible security throughout a 360 degree arc; thereby permitting mutation of the centrifuge rotor about the rotor shaft assembly to limit horizontal displacement of the axis of rotation of the coupling such that the vibration associated with the horizontal displacement is substantially reduced due to the avoidance of any resonant frequencies within the operating range of the centrifuge rotor, that is, the greater the horizontal stiffness, the higher the resonant frequency is pushed above the operating range of the centrifuge (col. 3, lines 26-52 and lines 59-67; col. 7, lines 30-44).
CARSON et al. (in the embodiments relied upon – Figures 2-5, not Figures 6-12B) does not include a separate compression spring as recited in claims 1 and 2.
Claims 1-10, 12, and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over ELIASSON et al. (US 2007/0249479 A1) in view of STOKELY (US 3306679), WO 2021/124086, or WO 94/16234.
ELIASSON et al. discloses the recited centrifugal separator substantially as claimed as clearly depicted in Figures 1 or 2 including upper and lower bearings 20, 22 (Figure 1) and 58, 62 (Figure 2) with bearing 58 being disposed within a bearing holder 60 but does not disclose the claimed bearing holder including spokes.
STOKELY (US 3306679) is relied upon as above and thus discloses a bearing holder embodiment in Figures 1-4 for a bearing comprising a central portion 40 for supporting a bearing C therein; radial spokes 45 extending from said central portion; wherein the central portion is flexible in one or more directions; attachment means 20 and/or the fastener seen in Figure 2 (one being disposed above “53” in Figure 2); and a ring structure 20; and further discloses a bearing holder embodiment in Figures 1-4 for a bearing comprising a central portion 40 for supporting a bearing C therein; radial spokes 45, 46 extending from said central portion; wherein the central portion is flexible in one or more directions; attachment members 20 and/or the fastener seen in Figure 2 (one being disposed above “53” in Figure 2); and a ring structure 20.
The radial spokes 45 extend radially outwards from said central portion to a radially outer portion 20, and the central portion is flexible in the axial direction relative to the radially outer portion due to a flexibility in said at least two radial spokes 45 (col. 1, lines 54-58; col. 2, lines 67-72; col. 3, lines 49-60).
WO 2021/124086 is relied upon as above and thus discloses a bearing holder 9 for a bearing comprising a central portion 20a for supporting a bearing 6 therein; radial spokes 14 extending from said central portion; wherein the central portion is flexible in one or more directions; attachment means 16; and a ring structure 21; and further discloses a bearing holder 9 for a bearing comprising a central portion 20 or 20a for supporting a bearing 6 therein; radial spokes 14 extending from said central portion; wherein the central portion is flexible in one or more directions; attachment members 16; and a ring structure 21.
The radial spokes 14 extend radially outwards from said central portion to a radially outer portion 21, and the central portion 20 or 20a is flexible in the axial direction relative to the radially outer portion due to a flexibility in said at least two radial spokes 14 (¶ [0016] – [0018], [0040], [0064], [0095] – [0097]).
WO 94/16234 is relied upon as above and thus discloses a bearing holder 40 for a bearing comprising a central portion 42 for supporting a bearing 52 therein; radial spokes 43a-43c extending from said central portion; wherein the central portion is flexible in one or more directions; attachment means (the fasteners seen at the top portion of Figures 3 and 7; and a ring structure 46 and further discloses a bearing holder 40 for a bearing comprising a central portion 42 for supporting a bearing 52 therein; radial spokes 43a-43c extending from said central portion; wherein the central portion is flexible in one or more directions; attachment members (the fasteners seen at the top portion of Figures 3 and 7); and a ring structure 46.
The radial spokes 193, 225 extend radially outwards from said central portion to a radially outer portion 194 or 210, and the central portion is flexible in the axial direction relative to the radially outer portion due to a flexibility in said at least two radial spokes (at page 1, lines 4-7; page 2, lines 27-32; page 5, last paragraph through page 6, first paragraph; and claim 1).
Bearing preload is discussed and disclosed at pages 1-2; page 5, last paragraph; page 6, lines 11-12; page 6, lines 24-36; and claim 1).
The bearing holder of WO ‘234 may be employed in “a spindle assembly for any other apparatus in which radial displacement of the shaft is undesirable [such as a centrifuge] – page 6, lines 24-32.
It would have been obvious to one skilled in the art before the effective filing date of the invention to have substituted the bearing holder in ELIASSON et al. with the spoked bearing holder of STOKLEY (US 3306679), WO 2021/124086, or WO 94/16234 for the purposes of resiliently damping the bearing 58 at the end of rotor drive shaft 70 thereby reducing noise and vibration of the centrifugal separator due to displacements of the drive shaft during rotation and for the purposes of providing the beneficial advantages outlined as follows:
More specifically, STOKELY provides advantages of an improved resilient center bearing holder or mount for a shaft, such mount accommodating both axial as well as angular movement between the bearing and the fixed bracket or support; to provide a resilient center bearing mount which not only has a successful transmissibility ratio comparable to that of prior art construction but also has the ability to absorb angular and axial misalignment to prevent destruction and pop-out of the resilient member during operation; to provide an improved resilient center bearing mount comprising a plurality of radially extending resilient columns integrally formed on an annular resilient body, said columns and body having means for respectively maintaining adequate securement to said bracket and bearing respectively during all conditions of operation, said column being effective to yieldably accommodate axial and angular displacement between said support and bearing while maintaining uniform transmissibility; the mount of this object is particularly characterized by means obviating scrubbing or defective rolling contact of the resilient members interconnecting with the bracket or/and bearing (col. 1, line 54 – col. 2, line 6)
More specifically, the bearing holder of the WO 2021/124086 provides the following advantages: [0018] When the bearing damper is installed in the drive housing and around a drive bearing, axial vibrations or bearing vibrations will cause the bearing and housing to move relative to each other in an axial direction, causing the bearing damper and in particular the coupling element to deform; [0019] This will allow the flexible material to absorb deformations, thus dampening the resonances; [0020] Consequently, this will prevent these axial resonances from reducing the service life of the bearing system, or from causing unacceptable dynamic axial displacements of the shaft at which the damping is provided, or from propagation of the vibrations through the machine; [0040] The invention also concerns a device with a housing and a rotating shaft with a bearing installed in it, characterized in that the bearing is fitted with a bearing damper which comprises a coupling element and at least one damping element made from a damping elastomer material, wherein the bearing damper is fitted between the bearing and the device housing, using the coupling element, wherein the coupling element allows little or no movement of the bearing relative to the housing in the radial direction and wherein the damping element is configured to dampen the axial movement of the bearing relative to the housing; [0100] The bearing 6 itself will the subjected to much lower forces and stresses, since these will for the better part be absorbed by the bearing damper 9; [0101] Moreover, it will be possible to limit the axial movement of the shaft 24 due to the above vibrations, by choosing the appropriate stiffness and damping properties of the bearing damper 9, since vibrations will be prevented from propagating any further into the motor and the compressor device; [0102] This avoids problems due to these axial vibrations and the axial displacement of the shaft 24 further downstream in the machine.
More specifically, the bearing holder of the WO 94/16234 provides the following advantages: This invention relates generally to bearing supports, and more particularly to a flexural bearing support assembly which comprises a bearing support base member having a pair of parallel flexural element arrangements which function to permit axial movement of an associated shaft or spindle but restrict radial movement; In accordance with an aspect of the present invention, there is provided an axially displaced flexural bearing support assembly including a unitary or monolithic bearing support base member having a bearing receiving tube supported by first and second generally parallel flexural spoke members which allows both outer races to be fixed by adhesive or press fit to their respective bearing bores, thus eliminating the radial clearance while the flexural spring characteristics of the spoke members allow sufficient axial compliance to prevent bearing overload due to thermal differential expansions. As best shown in Figure 7, the spokes have a width such that no spoke overlies a next spoke when viewed along the axis of the tube 42. The support member 40 is monolithic, that is formed as one piece, preferably of cast metal, such as an aluminum alloy. While the spoke sets need not be angularly offset relative to one another for the invention, to do so facilitates casting of the part and provides rigidity for final machining processes. The spokes provide flexural support for the tube 42 and ultimately for the bearing and spindle 20, with the relatively small cross-sections of the spokes permitting axial movement and a certain amount of deflection as a consequence of thermal expansion, without radially displacing the tube 42. This construction controls bearing pre-load by compliant flexure of spoke sets 43, 44 to allow for thermal expansion, while eliminating radial play/clearance between housing and bearing outer diameter. The flexural elements, that is, the spoke sets 43, 44 being displaced axially provide increased trunnion or tube 42 stiffness for fabrication operations and during spindle operation. The bearing base support member 40 has been constructed in such a way that the selection of flexure or spoke cross-section provides vibration isolation at specific known frequencies, while maximizing the frequency of undesired mode shapes, such as trunnion mode, which produces flexural dynamic instability. Simultaneously, the construction allows the axial flexural stiffness to be minimized for greatest thermal range of bearing pre-load control. Figure 5 shows the two parts of the flexural bearing support assembly in its assembled condition, that is, with base support 40 pinned and fastened to housing 35. During fabrication, the inner diameter of the bearing tube 42 and the inner diameter of the upper spindle shaft support bearing opening 31 are the same. With the housing 35 assembled to the base support member 40, final milling of the two bearing openings can be accomplished at the same time by a suitable bore 50 being passed axially through both openings while the assembled unit is held or clamped in a suitable fixture (not shown). Thus the construction of the assembly allows line boring with the parts joined together in an as-assembled configuration, pinned together for matched set alignment, with the bearing bores or openings machined to the final size. This process insures that the bearing journals or openings are as close to co-linear as the machine tool can generate. Figure 6 duplicates the view of Figure 5 with the spindle 20 (part of which is cut away) in place between roller bearings 52 and 54 fixedly attached within openings 42 and 31 , respectively. A pre-load may be applied to the spindle 20 by means of a nut 54 engaging the threaded end 20a of spindle 20. The construction of the present invention, which relates to pre-load and dynamic control of a precision spindle assembly using roller element bearings for application to a tape drive scanner spindle assembly has other applications, such as for a disc drive spindle assembly, a machine tool spindle assembly, or a spindle assembly for any other apparatus in which radial displacement of the shaft is undesirable, whether under load or as a consequence of thermal gradients or both. In accordance with the invention, there has been shown and described a bearing support assembly which controls bearing pre-load by compliant flexure to allow for thermal expansion, while eliminating radial play/clearance between the housing and bearing outer diameter. In the embodiment described, the flexural spoke elements are arranged in sets which are displaced axially resulting in increased trunnion stiffness for fabrication operations and during spindle operation. The flexure controls bearing trunnion attitude while allowing axial displacement for thermal expansion. While the embodiment illustrated utilizes three equiangularly arranged spokes per set, with a half angle offset between adjacent sets, it is to be understood that the number of spokes - their length, width and thickness may all be adjusted within design constraints to achieve desired properties (page 1, first paragraph; page 2, penultimate paragraph; and page 5, line 28 – page 7, line 6).
STOKELY, WO 2021/124086, and WO 94/16234 all do not include a separate compression spring as recited in claims 1 and 2.
Allowable Subject Matter
No claims stand allowed.
Response to Amendment
Applicant's arguments filed 28 AUG 2026 have been fully considered but they are wholly not persuasive.
Regarding CARSON et al., the examiner is not “improperly combining distinct embodiments that are structurally incompatible” as stated in the remarks. The radial disk element embodiment meets at least claims 1, 2, and 11 while the spoked embodiment meets at least claims 1, 2, and 7-10. The rejections of these claims, over the distinct embodiments of CARSON et al., are combined above for brevity, as this burdensome examination action is already long enough. The single-piece spring components argument is irrelevant since the number of pieces forming the bearing holder is not set forth in the claims. The spokes of CARSON et al. do indeed axially flex as disclosed: the central portion is flexible in the axial direction relative to the radially outer portion due to a flexibility in said at least two radial spokes (at arc 160 in Figure 2; col. 3, lines 31-52; col. 5, lines 42-56; col. 5, line 66 – col. 6, line 3). Contrary to Applicant’s assertion, any embodiments including the separate elastomer damping blocks in Figures 6-8 is not relied upon in this final rejection, nor was this embodiment relied upon in the last office action.
Regarding STOKELY, the radial spokes 45 extend radially outwards from said central portion to a radially outer portion 20, and the central portion is flexible in the axial direction relative to the radially outer portion due to a flexibility in said at least two radial spokes 45 (col. 1, lines 54-58; col. 2, lines 67-72; col. 3, lines 49-60). This contradicts Applicant’s conclusions related to STOKELY. The bracket of STOKELY is indeed rigid and incapable of spring action since it supports the bearing holder therein as does the rigid and incapable of acting like a spring action element, namely the housing/conduit 18 of the instant invention.
Regarding WO ‘086 and WO ‘234, these documents disclose bearing holders with a central portion that is flexible in the axial direction relative to the radially outer portion due to flexibility in the radial spokes:
The radial spokes 193, 225 in WO ‘234 extend radially outwards from said central portion to a radially outer portion 194 or 210, and the central portion is flexible in the axial direction relative to the radially outer portion due to a flexibility in said at least two radial spokes (at page 1, lines 4-7; page 2, lines 27-32; page 5, last paragraph through page 6, first paragraph; and claim 1). Bearing preload is discussed and disclosed at pages 1-2; page 5, last paragraph; page 6, lines 11-12; page 6, lines 24-36; and claim 1). The bearing holder of WO ‘234 may be employed in “a spindle assembly for any other apparatus in which radial displacement of the shaft is undesirable [such as a centrifuge] – page 6, lines 24-32.
The radial spokes 14 in WO ‘086 extend radially outwards from said central portion to a radially outer portion 21, and the central portion 20 or 20a is flexible in the axial direction relative to the radially outer portion due to a flexibility in said at least two radial spokes 14 (¶ [0016] – [0018], [0040], [0064], [0095] – [0097]).
These disclosures in WO ‘086 and WO ‘234 contradict Applicant’s conclusions regarding these documents.
Applicant argues ELIASSON relies upon a spring to maintain bearing preloads, however, this feature was searched but not located in this publication or in Figure 2 reproduced in part below:
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Applicant further argues the combination of the prior art would result in rotor shaft wobble in the centrifuge of ELIASSON. Applicant’s position on this point is speculative attorney's argument unsupported by objective technical evidence on the issue. Arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Pearson, 494 F.2d 1399, 1405, 181 USPQ 641, 646 (CCPA 1974). The substitutions proposed by the examiner in the 103 rejections would certainly result in resiliently damping the bearing 58 at the end of rotor drive shaft 70 in ELIASSON thereby reducing noise and vibration [and thus reducing or elimination wobble] of the centrifugal separator due to displacements of the drive shaft 70 within upper bearing 58 during rotation, such displacements being advantageously attenuated via the flexible bearing holders of CARSON et al., STOKELY, WO ‘086 and WO ‘234 as explained in sections (32) and (33) above.
The bearing preload issue is mentioned again, ad nauseam, but again this feature is apparently created via an assembly or manufacture operation, not by any structure such as a metal compression/wave spring mentioned by Applicant. The rejections do not rely upon some bracket to replace some spring to provide bearing preload since absolutely no structure to achieve the magical bearing preload is claimed or disclosed. Applicant is reminded that pending claims 1-2 specifically exclude a compression spring member for providing bearing preload.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. § 1.136(a).
Per Rule 1.116(b)(3): “An amendment touching the merits of the application or patent under reexamination may be admitted upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.” Thus, an amendment after final lacking such showing will be denied entry.
A SHORTENED STATUTORY PERIOD FOR RESPONSE TO THIS FINAL ACTION IS SET TO EXPIRE THREE MONTHS FROM THE DATE OF THIS ACTION. IN THE EVENT A FIRST RESPONSE 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 EXTENSION FEE PURSUANT TO 37 C.F.R. § 1.136(a) WILL BE CALCULATED FROM THE MAILING DATE OF THE ADVISORY ACTION. IN NO EVENT WILL THE STATUTORY PERIOD FOR RESPONSE EXPIRE LATER THAN SIX MONTHS FROM THE DATE OF THIS FINAL ACTION. ANY RESPONSE FILED AFTER THE MAILING DATE OF THIS FINAL REJECTION WILL BE SUBJECT TO THE PROVISIONS OF MPEP 714.12 AND 714.13.
NOTE: The examiner of record follows the interview after-final policy set forth in MPEP 713.09:
Normally, one interview after final rejection is permitted. However, prior to the interview, the intended purpose and content of the interview [agenda] should be presented briefly, preferably in writing. Such an interview may be granted if the examiner is convinced that disposal or clarification for appeal may be accomplished with only nominal further consideration. Interviews merely to restate arguments of record or to discuss new limitations which would require more than nominal reconsideration or new search should be denied. (emphasis added)
The agenda will be made of record per PTO policy.
New USPTO policy limits time for interviews to one per new application or RCE (utility), when during prosecution, the examiner conducts an interview. More than one interview and additional time will only be granted if it is ensured “that the interviews are being used to advance prosecution”.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES COOLEY whose telephone number is (571)272-1139. The examiner can normally be reached M-F 9:30 AM - 6:00 PM.
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, CLAIRE X. WANG can be reached at 571-272-1700. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHARLES COOLEY/Examiner, Art Unit 1774
15 SEP 2026
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