DETAILED ACTION
This office action is in response to the amendments to the claims filed on 14 November 2025. Claims 1, 14 and 15 are pending and currently being examined.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant has presented the following additional argument with regards to the restriction requirement: “The Examiner asserts that in Figure 2 that a shaft appears to have a smaller diameter portion when compared to the same portion in Figure 4 and that “[i]f this small diameter portion is really something else (no description in the specification), that something else is certainly not present in Figure 2, thus making the species independent and distinct.” The Applicant respectfully asserts that the imposition that mere lines in a drawing, which are allegedly not described in the specification and whose nature appears unclear to the Examiner, cannot suffice to render the species independent and distinct”.
Examiner’s Response: The above argument made by the examiner was a secondary argument, that is hereby withdrawn. To clarify, the primary argument is that there is a serious search burden to examine a direct drive, gearwheel/geared drive, friction drive and hybrid drive all together. They clearly require different fields of search, and the prior art applicable to one species (such as friction drive) would not be applicable to the other species (such as geared/gearwheel drive). As demonstrated in the previous office action, a geared/gearwheel drive is classified in USPC Class 475, and a friction drive is classified in USPC Class 476. Conducting a search in at least two different USPC classes concurrently is a clearly a serious burden. Further, the time required to assess and evaluate thousands more documents that would be uncovered in searching both inventions would further add to the undue examination burden that the examiner would be subject to.
The restriction requirement is still deemed to be proper and is therefore being maintained.
Applicant has also additionally argued that “Claim 7 for example is withdrawn by the Examiner as being directed toward gearwheels and pinion which is species A but claim 7 also includes "a pinion intended to be driven directly by a shaft of a motor" which would indicate that claim 7 includes overlapping scope and restriction is not proper”. However, this argument is not persuasive because this claim recites the geared drive (which includes “pinion”) which is distinct from at least the friction drive. The elected embodiment is clearly not a geared drive.
Applicant has also argued that “Claim 4 should also not have been withdrawn as claim 4 also includes overlap with “direct rotational drive””. However, this argument is not persuasive because Claim 4 clearly recites “a device for geared driving” which is distinct from at least the friction drive. The elected embodiment is clearly not a geared drive.
The requirement to withdraw the additional claims is still deemed to be proper and is therefore being maintained.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “drive device” and “direct drive device” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 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.
Claim 14 is 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.
In Re Claim 14, the limitation “each of the components that make up said pump are made of plastic” is not supported by the originally filed specification and therefore constitutes new matter. Paragraph [0090] of Applicant’s Specification clearly states that the claimed motor (Line 18 of Claim 1) is not made of plastic.
Claim Rejections - 35 USC § 112 (b)
The previously made 112 (b) rejections are hereby withdrawn in view of suitable amendments to the claims submitted with applicant’s response.
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) 1 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Malbec (US Patent 4,702,679 A) in view of Lovati (PG Pub US 20220010888 A1) and further in view of Hood (British Patent GB 2211557 A).
In Re Claims 1 and 15, the Figure 3 embodiment of Malbec discloses a peristaltic pump (title) configured to operate with a deformable tube (25), and a peristaltic pump tube (25), said peristaltic pump comprising a support surface comprising an interior face (inside cylindrical wall of 23 whose surface supports the tube), a set of n peripheral rollers (15, 16) with n=3, characterized in that said peristaltic pump comprises a central roller (31), positioned between said set of n peripheral rollers (15, 16) and in contact therewith, said central roller (31) forming a central point of contact for relaying the load applied to at least one of the set of n peripheral rollers (15, 16) compressing said deformable tube (25) against said interior face (of 23), said central roller (31) having a longitudinal axis,
PNG
media_image1.png
646
726
media_image1.png
Greyscale
Annotated excerpt of Figure 3 of Malbec
said central roller (31) comprises an orifice (33) extending along its longitudinal axis and opening onto at least one of the lateral edges of said central roller (see annotated figure above), said orifice having a female socket shape (Column 3, Line 55: “polygonal cross section”) configured to be connected to the shaft (34) of a motor (35) for driving the rotation of said central roller and, therefore, for driving the rotation of said set of n peripheral rollers (15, 16), this rotational driving of said set of n peripheral rollers (15, 16) being what is known as friction drive (Column 3, Line 24) (Figure 3; Column 3, Line 44 – Column 4, Line 7).
Although Malbec discloses a drive device (32) for driving the rotation of set of n peripheral rollers (15, 16) so as to compress said tube (25) at least at one point on the interior face of said support surface (interior wall of 23), the drive device (32) is not an equivalent structure (MPEP 2183) to applicant’s drive device/direct drive device.
However, Lovati discloses a drive device (302) being a direct drive device (because it is capable of being directly driven by motor 301) that drives a pump (303 - paragraph [0038] states that the HVAC device can be a pump), the motor/pump combination offers one reduction ratio (paragraph [0048]) when only one stage (single drive device) is used (paragraph [0037] states there can be one stage), the motor/pump combination offers a second reduction ratio (the combined reduction ratio of two stages) is different from the single stage reduction ratio) when two stages (two drive devices) are used (depicted in Figure 6), the motor pump combination offers a third reduction ratio (the combined reduction ratio of three stages is different from single or two stages) when three stages (three drive devices) are used (depicted in Figure 5) (Figures 3, 5, 6; paragraphs [0037],[0038],[0048],[0057],[0058]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed the invention to incorporate one or two or three of the direct drive devices (302) as taught by Lovati between the motor (35) and the central roller (31) of the pump of Malbec for the purpose of converting the input power of the motor to an output power needed by the pump (paragraph [0005] of Lovati) and for the purpose of providing the appropriate velocity to the pump (Abstract of Lovati).
In the modified apparatus, the peristaltic pump of Malbec would thus be configured to offer, using rollers (31, 15, 16) of Malbec, at least two different reduction ratios when it has two of said devices of Lovati for driving the rollers (by using either one or two stages respectively of Lovati), and at least three different reduction ratios when it comprises all three devices of Lovati for driving the rollers (by using either one or two or three stages respectively of Lovati).
Malbec and Lovati do not disclose that n > 3 (Malbec discloses three rollers, so n = 3).
However, Figure 2 of Hood discloses a set of n peripheral rollers (20) with n=5 which satisfies n > 3, characterized in that said peristaltic pump comprises a central roller (18), positioned between said set of n peripheral rollers (15, 16) and in contact therewith (Column 5, Lines 15 – 26; Figure 2).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed the invention to incorporate peripheral 5 rollers as taught by Hood instead of the 3 peripheral rollers as taught by Malbec in the pump of Malbec / Lovati for the following three reasons: 1) Applicant’s specification does not make clear what the criticality/advantages are of having 5 peripheral rollers instead of 3, and it appears the invention works equally well if there were 3 rollers instead of the claimed “>3”; 2) Incorporating an appropriate/specific number of rollers based on design capacity and pumping head is within the skill level of one having ordinary skill in the art and 3) it is only a matter of choosing between a finite number of options for the number of rollers with the expectation of predictable results because both options (3 and 5 peripheral rollers) are known in the art as demonstrated by the cited prior art (MPEP 2141, Section III, Rationale E).
Response to Arguments
Applicant has argued on Page 10 of Applicant’s Response that “Malbec does not disclose: a gearwheel support element with peripheral gearwheels and central gearwheel (geared drive). Specifically, Malbec does not disclose a gearwheel support element pierced at its center, with pins for supporting peripheral gearwheels, nor a central gearwheel engaging with said peripheral gearwheels to form a geared drive device for the peripheral rollers. Malbec's drive is exclusively frictional (direct drive via shaft), and there is no teaching or suggestion of a gear train or gearwheel support element as claimed”.
Examiner’s Response: The claim requires either the gearwheel drive or the friction drive due to the presence of the phrase “and/or” in Line 15. Although Malbec does not disclose a gearwheel drive, it is not required by the claim. Note that the elected embodiment does not disclose the gearwheels.
Applicant has argued on Page 11 of Applicant’s Response that “Lovati is directed to HVAC actuators and gear trains, not peristaltic pumps”.
Examiner’s Response: HVAC device (303) in Figure 3 is clearly disclosed to be a pump (paragraph [0038]) that is driven by the gear train (302) and motor (301). Although the type of pump has not explicitly been disclosed as the peristaltic type, air conditioning units are well known to utilize peristaltic pumps as evidenced by Shaffer (US Patent 10,072,871 B1) which discloses an air conditioning unit (10, Figure 7) that uses a peristaltic pump (124; Column 7, Lines 31 – 32) for circulation.
Applicant has argued on Page 12 of Applicant’s Response that: “Multiple-ratio requirement- Lovati's extra stages are not "two or three different devices for driving the same peripheral rollers and providing "at least two different reduction ratios when it has two of said devices for driving the peripheral rollers, and at least three different reduction ratios when it comprises all three devices for driving the peripheral
rollers”".
Examiner’s Response: Claim 1 does not require two or three “different” devices because Line 5 limits the drive device type to be the direct drive type: “this drive device being a direct drive device” (Claim 1, Line 5). The later reference to “said devices” can only be the direct drive type device.
Applicant has argued on Page 12 of Applicant’s Response that: “Again, claim 1 recites "with two of said devices for driving the peripheral rollers, the pump must offer at least two different reduction ratios, and with all three devices it must offer at least three different ratios using the same set of rollers." "Devices" in the body of the claim are expressly (i) the direct-drive device, (ii) the geared-drive device based on the gearwheel support element, and (iii) the friction-drive device through the socketed central roller. Ratios arise from selecting one, two, or all three of these disparate drive architectures - not from varying the number of internal stages inside a single gearset”.
Examiner’s Response: In the modified apparatus, the same set of rollers of Malbec are driven by one, two or three drive devices of Lovati to achieve corresponding one, two or three reduction ratios. Applicant appears to be arguing that the direct drive is distinct from the friction drive or the geared drive, however this argument is not commensurate with the scope of the claim where the only type of drive device being claimed is a direct drive device (“this drive device being a direct drive device” – Line 5 of Claim 1) which clearly includes either the gearwheel drive or the friction drive or both. As such, a direct drive device has been broadly interpreted as a device being driven by an electric motor. Finally, the claim does not require the drives that produce different reduction ratios to have “disparate drive architecture(s)”.
Applicant has argued on Page 12 of Applicant’s Response that: “No teaching or suggestion exists in either reference to mount two distinct drive trains in parallel on the same roller set”.
Examiner’s Response: The claim does not recite the limitation: “two distinct drive trains in parallel”.
Applicant has argued on Page 13 of Applicant’s Response that “Malbec's pump depends on the motor shaft directly engaging the peripheral rollers (col. 2, 1. 60- 65; col. 3, 1. 44-54). This friction interface both drives the rotor and serves as the bearing for the shaft. Inserting Lovati's bulky planetary gearhead (element 302) between the motor and the rotor eliminates the very contact surface Malbec relies on; the rollers would no longer be driven at all”.
Examiner’s Response: The motor shaft (34) of Malbec is separate from the shaft (31) that provides the contact surface, so the introduction of the planetary gearhead (302) of Lovati in between (31) and (34) of Malbec does not eliminate (31) of Malbec. In the modified apparatus the planetary gearhead (element 302) of Lovati would drive shaft (31) of Malbec instead of the motor directly driving the shaft.
Applicant has argued on Page 13 of Applicant’s Response that: “Lovati comes from a non-analogous field (HVAC valve actuators, not fluid pumps)”.
Examiner’s Response: Paragraph [0038] of Lovati clearly discloses that component (303) could be a fluid pump. Additionally, the planetary gearheads of Lovati are clearly relevant to the problem applicant is trying to solve – which is how to provide different gear reduction ratios. In response to applicant's non-analogous art argument, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).
Applicant has argued on Page 14 of Applicant’s Response that “Claim 14 requires that all the components that make up the pump - i.e., housing, rotor, rollers, shafts, separator, gear train, etc. - are moulded from plastic. Hogan and Lovati each retain critical metallic parts”.
Examiner’s Response: The claimed motor in Line 18 of Claim 1 would not work if it was only made of plastic. The components of the motor require generation of a magnetic field to drive the rotor, this cannot be accomplished by plastic material.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DNYANESH G KASTURE whose telephone number is (571)270-3928. The examiner can normally be reached Mon-Thu, 7:30 AM to 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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/D.G.K/Examiner, Art Unit 3746
/ESSAMA OMGBA/Supervisory Patent Examiner, Art Unit 3746