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.
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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)).
Specification
The revised title of the invention is approved and updated into the database.
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.
Claims 1, 3 and 6-20 are rejected under 35 U.S.C. 103 as being unpatentable over MACKEL et al. (US 10105717 B2) in view of JACOBSON et al. (US 4322030) and GORODISSKY et al. (US 4941866).
MACKEL et al. discloses a centrifugal separator (1) for separating a fluid mixture into a first component and a second component, wherein the second component is denser than the first component, said centrifugal separator (1) comprising a rotating bowl (2), which is rotatably supported by a frame (8) around a rotational drive shaft (3), and which rotational drive shaft (3) is rotatable around an axis of rotation (D); an electrical motor (22) connected to the rotational drive shaft (3); an inlet (P) to the rotating bowl (2); a first outlet at “L” for the separated lighter first component of the fluid mixture; and a second outlet “S” for the separated second component of the fluid mixture; a cooling device (23, 30, 31) for the electrical motor (22) comprising a body (23 or 10, 23) connected to the frame (8) of the centrifugal separator (1), wherein the body (23) comprises a central opening (see figure 1) provided with an inner peripheral surface (inner surface of (23)), which is connected to a stator (22b) of the electrical motor (22); and wherein the body (23) further comprising an outer peripheral surface (see figure 1); and a cooling space/jacket arranged in the body (23) and extending circumferentially around the central opening, wherein the cooling space is provided with an inlet opening (31) and an outlet opening (30) for a cooling fluid (see figure 1); wherein the body 23 has an axial length extension similar to an axial length extension of the stator 22b; wherein a shape of the body 23 is configured to provide an air gap at 15 between the outer peripheral surface of the body 23 and the frame 8 of the centrifugal separator; wherein the outer peripheral surface of the body 23 comprises a circumferentially and radially extending rim (seen just below Rp in Figure 1); the rim being configured to be connected to the frame 8 of the centrifugal separator (below 13); wherein the rim is arranged on the outer peripheral surface at an axial position between a first axially directed end surface (at 10) and a second axially directed end surface of the body (at 23); wherein the cooling device is a housing for the stator 22b; wherein a rotor 22a of the electrical motor is arranged on the rotational drive shaft 3 so that a center axis of the electrical motor coincides with the axis of rotation D - Figure 1; and the recited cooling fins disclosed in [0059].
MACKEL et al. does not disclose the cooling device in the form of a cooling coil. JACOBSON et al. discloses a centrifuge including a rotatable bowl 10 driven via an electric motor with a rotor/armature and a surrounding stator 28; a cooling coil (42) arranged in a motor housing body (36) and extending circumferentially around a central opening of the body 36 (see figure 1), wherein the cooling coil (42) comprises a tube (coil) disposed about the motor stator 28; the coil is provided with an inlet opening (46) and an outlet opening (44) for a cooling fluid (heat transfer medium).
It would have been obvious to one skilled in the art before the effective filing date of the invention to have substituted the cooling jacket of MACKEL et al. with a cooling coil within the motor housing body as taught by JACOBSON et al. for the purposes of:
Located within the wall of the induction motor housing 36 is a cooling coil 42 which receives a heat transfer medium through the inlet port 46 and exits through the port 44 to a separate heat exchanger.
Another important feature of the present invention is the incorporation of a thermistor 110 on the motor housing 36 to provide an automatic control of the temperature of the motor housing 36 as well as the drive mount plate housing 38. In this way the ideal temperature of the overall system can be maintained by controlling the flow and temperature of the heat transfer medium in the cooling coil 42. Since the temperature of the motor housing 36 controls the cooling of the closed system of lubricating oil within the drive assembly and stator 28, it is important to maintain a desirable preset temperature of the motor housing 36. The maintenance of a predetermined temperature range within the system is extremely desirable in order to control the close fits that are required for the high speed bearings and the oil lubrication flow regulating system. This regulating system refers to the fit between the upper bearing housing 30 within the interior wall 39 of the drive mount plate housing 38.
per col. 2, lines 51-54 and col. 4, lines 44-62
Furthermore, the prior art to MACKEL et al. differs from the claimed centrifuge by the substitution of a motor housing cooling jacket with a motor housing cooling coil; the substituted jacket and coil and their functions were known in the art as evidenced by MACKEL et al. and JACOBSON et al.; one of ordinary skill in the art could have readily substituted one known cooling element from a finite list of cooling elements for another, and the results of the substitution would have been predictable and obvious since the substitution of one known cooling element from the finite list of cooling elements for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention, i.e., the predictable result of providing a centrifugal separator with a coil cooling device for the electrical motor, which is uncomplicated to manufacture and assemble, which is easy to maintenance and in which most of the available cooling potential is used to cool the motor (see KSR, supra).
The prior art above does not disclose the recited corrosion resistivity or thermal conductivity. With respect to the limitation of the parameters related to the corrosion resistivity or thermal conductivity which is present in the claims at issue, the examiner has found that the specification contained no disclosure of any unexpected results arising therefrom, and that as such the parameter is arbitrary and therefore obvious. Such unsupported limitations cannot be a basis for patentability, since where patentability is said to be based upon particular chosen parameters or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990) and MPEP 2144.05(III).
With respect to the limitations of the recited corrosion resistivity or thermal conductivity, it would have been obvious to one of ordinary skill in the art to have provided the apparatus defined by the disclosure of MACKEL et al. or JACOBSON et al. with the properties recited in the claims which are considered at most optimum choices, lacking any disclosed criticality.
Applicant has the burden of proving such criticality. In re Swenson et al., 56 USPQ 372; In re Scherl, 70 USPQ 204. However, even though applicant's modification may result in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art. In re Sola, 25 USPQ 433; In re Normannet et al., 66 USPQ 308; In re Irmscher, 66 USPQ 314. More particularly, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); In re Swain et al., 70 USPQ 412; Minnesota Mining and Mfg. Co. v. Coe, 38 USPQ 213; Allen et al. v. Coe, 57 USPQ 136; MPEP 2144.05(II)(A).
No probative evidence is of record to demonstrate that the properties and/or other variables of the invention are significant or are anything more than one of numerous properties a person of ordinary skill in the art would find obvious for purposes of merely changing the configurations and/or dimensions to obtain different results. Graham v. John Deere Co., 148 USPQ 459.
Accordingly, the examiner argues that these parameters are rather arbitrary and thus obvious over the prior art per MPEP 2144.05(II)(III).
Furthermore, the Federal Circuit has explained that a reason to optimize prior art parameters may be found in a PHOSITA’s desire to improve on the prior art. In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017) (‘‘The normal desire of artisans to improve upon what is already generally known can provide the motivation to optimize variables such as the percentage of a known polymer for use in a known device.’’).
Moreover, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have formed any of the components of the prior art centrifuges from corrosion resistant materials or materials having a desired thermal conductivity, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416; Sinclair & Carroll Co., Inc. v. Interchemical Corp., 65 USPQ 297 (1945).
It is observed that artisans must be presumed to know something about the art apart from what the references disclose (see In re Jacoby, 309 F.2d 513, 135 USPQ 317 (CCPA 1962)). Moreover, skill is presumed on the part of those practicing in the art. See In re Sovish, 769 F.2d 738, 226 USPQ 771 (Fed. Cir. 1985). Therefore, it is concluded that the selection of a well-known material in the art such as corrosion resistant material or materials of a particularly thermal conductivity would have been obvious to one of ordinary skill in this art, if for no other reason than to achieve the advantage of using a more modern material or a lower cost or more easily fabricated material or a material having superior heat transfer properties.
This exemplifies the Supreme Court's analysis in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 [82 USPQ2d 1385] (2007). “When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id. at 417. As further emphasis on the substitution of one material for another, there is the venerable case of Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1851), cited approvingly in KSR Int'l Co. v. Teleflex Inc., supra, 550 U.S. at 406, 415, which denied patentability to an invention consisting of the substitution of a clay or porcelain knob for a metallic or wood knob in a doorknob (the doorknob itself, as distinct from the knob on the end of it, being an assemblage of knob, shank, and spindle). Other substitution cases in which patentability was denied on grounds of obviousness include Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1535–38 [218 USPQ 871] (Fed. Cir. 1983); Brunswick Corp. v. Champion Spark Plug Co., 689 F.2d 740, 749-50 [216 USPQ 1] (7th Cir. 1982), and Lyle/Carlstrom Associates, Inc. v. Manhattan Store Interiors, Inc., 635 F.Supp. 1371, 1381-83 [230 USPQ 278] (E.D.N.Y. 1986), aff'd, 824 F.2d 977 (Fed. Cir. 1987).
Among the inventions that the law deems obvious are those modest, routine, everyday, incremental improvements of an existing product or process that confer commercial value (otherwise they would not be undertaken) but do not involve sufficient inventiveness to merit patent protection. This class of inventions is well illustrated by efforts at routine experimentation with different standard grades of a material used in a product—standard in the sense that their properties, composition, and method of creation are well known, making successful results of the experimentation predictable. Ritchie v. Vast Resources Inc., 90 USPQ2d 1668 (Fed. Cir. 2009). Accordingly, it is well settled that a predictable substitution of one material for another is well within the grasp of 35 U.S.C 103(a) and common sense. A rejection to overcome an obviousness rejection will not be withdrawn when the allegedly missing teaching of the rejection would have been understood by a PHOSITA—by way of common sense, common knowledge generally, or common knowledge in the relevant art. Randall Mfg. v. Rea, supra. Choosing an appropriate material for a specific application or structural member can unquestionably be determined by a PHOSITA by innate common sense, the common knowledge generally, or the common knowledge in the relevant art.
Modified MACKEL et al. does not disclose the cooling coil tubes having end parts extending axially as added to claim 1 in the last response, from cancelled claim 2.
GORODISSKY et al. discloses a centrifuge assembly (the entirety of the structure seen in Figure 1) including a rotatable bowl 7 driven via an electric motor housing body 9; a cooling circuit is arranged in the motor housing body 9 including cooling fluid tubes 17, 18, 22, 23 with inlets and outlets that extend axially in the centrifuge; the tubes having end parts as defined in the remarks below; the body 9 comprises a first axially directed end surface or sleeve (proximate 9) and a second axially directed end surface - Figure 1; and wherein end parts of the tubes 18 and 23 extend through the first axially directed end surface or sleeve as seen in Figure 1.
It would have been obvious to one skilled in the art before the effective filing date of the invention to have modified the cooling coil tubes and/or end parts thereof in modified MACKEL et al. to be axially directed as disclosed by GORODISSKY et al. to lessen the lateral footprint of the centrifuge by keeping the cooling coil tubes disposed in an axial manner. Moreover, a mere rearrangement of parts [the coil tubes in this instance] is known to be obvious. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).
Moreover, such rearrangement of parts is deemed to fall within the "Obvious To Try" rationale per MPEP 2143(E) – Choosing From a Finite Number of Identified, Predictable Solutions, With a Reasonable Expectation of Success since there is a finite number of identified, predictable potential solutions to the recognized need or problem [such as the particular orientations of the cooling coil tubes placed with respect to the centrifuge as permitted by available space and/or for operator convenience and ease of use or for ease of repair] and that one of ordinary skill in the art could have easily pursued the known potential solutions [the particular orientation of the tubes chosen from a finite number of potential and predictable orientations within the centrifuge] with a reasonable expectation of success. The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103.” KSR, 550 U.S. at 421, 82 USPQ2d at 1397. Courts have applied the KSR requirement for "a finite number of identified predictable solutions" in a manner that places particular emphasis on predictability and the reasonable expectations of those of ordinary skill in the art. Since the cooling coil tubes can be installed within a centrifuge at a location chosen from a finite number of potential and predictable locations in the centrifuge, for one skilled in the art to place the tubes at any desired location to achieve the expectation of success as permitted by available space within the centrifuge and/or for operator convenience and ease of use or for ease of repair is not the result of innovation but of ordinary sill in the art if not mere common sense.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over MACKEL et al. (US 10105717 B2) in view of JACOBSON et al. (US 4322030) and GORODISSKY et al. (US 4941866) as applied to claim 3 above and further in view of DE LA HAYE et al. (US 2010/0216620 A1).
Modified MACKEL et al. does not disclose the end surface/sleeve (proximate 9 as identified above) received in a circular groove arranged in the frame of the centrifugal separator.
DE LA HAYE et al. discloses a centrifuge having a frame 4; a rotatable bowl 2 driven via an electric motor 3; the motor having a motor housing body 27 with a lower end surface or sleeve at 21; and the sleeve 21 received in a groove of the frame 4 (the groove being the non-cross hatched region radially inward of 4 in Figure 2).
It would have been obvious to one skilled in the art before the effective filing date of the invention to have provided modified MACKEL et al. with a groove in the frame for receipt of the sleeve to ensure proper alignment of the sleeve and thus the motor body housing within the frame - Figure 2.
Allowable Subject Matter
NEW claim 21 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims as explained in the remarks below.
Response to Amendment
Applicant's arguments filed 13 AUG 2026 have been fully considered but they are not persuasive.
Applicant’s primary argument is that “Gorodissky only teaches outlet connections in the axial directions, as seen by the direction of the arrows next to connections 23 and 18 in Fig. 1.” However, the cooling tube circuit in Gorodissky contains tubes with end parts that constitute inlets extending in the axial direction (e.g., 17 and 22) and tubes with end parts that constitute outlets extending in the axial direction (e.g., 18 and 23). The so-called end parts can merely be sections of the tubes that adjoin another component (such as 9 or 12), another tube, or simply changes direction. The examiner notes that no specific structure of such end parts is set forth, such as a coupling, joint, or the like commonly employed in the tube/pipe art. Just end parts are recited upon which the examiner ponders if this claim language could possibly be any more expansive.
However, in contrast to the non-specific language of the pending claims, NEW claim 21 actually recites structure related to an arrangement of the sleeve, groove, frame, and end parts of the tube not contemplated by the four corners of the Gorodissky or De La Haye documents. Claim 21 thus presents allowable subject matter, particularly in conjunction with the commensurate remarks in the third paragraph on page 9 of the response.
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 - NO EXCEPTIONS.
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.
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/CHARLES COOLEY/Examiner, Art Unit 1774
18 AUG 2026
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