Detailed Action1
America Invents Act Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 USC 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.
Rejections under 35 USC 112
The following is a quotation of 35 U.S.C. 112:
(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 1-10 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 applicant regards as the invention.
Claim 1 recites the method being characterised in that all of the ribs or grooves (24a; 32) are obtained on a workpiece portion of the shaft driven rotatably and/or of the disc of the axial bearing (24) of the shaft (7), by displacement … . It is unclear what the required steps of this limitation is since this limitation does not have active steps (i.e. words ending in “ing”). Steps of a claim should use gerunds (e.g. displacing, forming, etc.), usually at the beginning of a step. In addition, there is insufficient antecedent basis for “the disc”.
Claim 1 also recites by displacement of the shaft (7) and/or of the disc of the axial bearing (24) of the shaft (7), or of the tool holder (160) at once, in a longitudinal machining direction, by the machining tool (120, 121) performing reciprocating motions with a machining position in contact with the shaft. It is unclear what “at once” means when discussing displacement of the shaft. It is further unclear if the displacement of the shaft in the longitudinal direction is done by the reciprocating motions? Since Applicant’s originally filed specification teaches the reciprocating motions to be perpendicular to the longitudinal direction, this limitation will be interpreted as the reciprocating motions being a distinct movement from the displacement of the shaft in the longitudinal direction.
Claim 3 recites the air or gas axial bearing (24) is produced by … . It is unclear if this is attempting to recite a product by process limitation, or is attempting to introduce new steps that are required for infringement. As stated above, method steps should begin with a verb ending in “ing” (e.g. “the method further comprises: producing the air or gas axial bearing by …”).
Claim 3 also recites a shaft (7) and an abrasive material machining tool (120). It is unclear if these are referring to the shaft and machining tool introduced in claim 1 or are introducing second shafts and machining tools.
Claim 4 recites the second face. There is insufficient antecedent basis for this limitation.
Claim 5 recites the head. There is insufficient antecedent basis for this limitation.
Claim 5 further recites a first workpiece portion and a longitudinal direction of machining of the rotating shaft (7). It is unclear if the first workpiece portion is referring to the previously introduced “workpiece portion”, or is introducing another/second workpiece portion. It is further unclear if the longitudinal direction is referring to the previously introduced longitudinal machining direction.
Claim 6 recites the head. There is insufficient antecedent basis for this limitation.
Claim 6 further recites a longitudinal direction of machining of the tool holder. It is unclear if the longitudinal direction of machining is referring to the previously introduced longitudinal machining direction.
Claim 7 recites the second workpiece portion. There is insufficient antecedent basis for this limitation.
Claim 7 further recites a front radial bearing and a rear radial bearing. It is unclear if these are referring to the previously introduced front and rear radial bearings.
Claim 8 recites to activate the machining tool (120, 121) so as to produce all of the ribs or grooves at once on a first face of the disc by … . It is unclear if this is attempting to recite a product by process limitation, or is attempting to introduce new steps that are required for infringement. As stated above, method steps should begin with a verb ending in “ing” (e.g. “activating” or “producing”).
Claim 8 also recites the workpiece. There is insufficient antecedent basis for this limitation. Is this referring to the shaft?
Claim 8 further recites moving the machining tool, or the rotating disc in a single machining direction from the periphery of the disc to the bottom of the annular area of the ribs or grooves or conversely. There is insufficient antecedent basis for “the bottom” and “the annular area”.
Claim 9 recites the bottom of the annular area. It is unclear if this is referring to the bottom of the annular area introduced in claim 8, or is referring to a second bottom of a second annular area.
Claims 8 and 9 recites by moving the machining tool, or the rotating disc in a single machining direction from the periphery of the disc to the bottom of the annular area. It is unclear how the rotating disc can be moved in a direction from the periphery of the disc to the bottom of the annular area since the periphery and annular area are part of the disc (thus moving the disc will move the periphery and annular area).
Claim 5, 6, 8, and 9 each recite all of the ribs or grooves are obtained/produced at once. In light of Applicant’s disclosure, it is unclear how all the grooves can be obtained/produced at the same time, i.e. simultaneously. Applicant’s disclosure teaches the tool reciprocating into and out of contact with the shaft—thus, appearing to teach the tool successively forming portions of each of the ribs or grooves. For purposes of examination, the claims will be interpreted as portions of all of the grooves or ribs being successively obtained/produced.
Claim 10 recites well centred. This term is a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For example, how centered does it have to be to be “well centered”?
Claim 2 is rejected for depending from claim 1.
Rejections under 35 USC 1032
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious3 before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-2 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over USPGPub No. 2019/0323511 (“Gashi”) in view of USPGPub No. 2013/0148918 (“Aoshima”).
Regarding claim 1, Gashi teaches a nearly identical shaft for a centrifugal compressor. Thus, Gashi teaches ribs or grooves (24a & 32) on a shaft intended to be rotated about a longitudinal axis of a centrifugal compressor, and/or on an air or gas axial bearing forming part of the shaft, a rotor structure with at least one permanent magnet of an electric motor being intended to be mounted on the shaft or in the shaft in order to drive the shaft rotatably, the centrifugal compressor further comprising a casing having a fluid inlet and a compressed fluid outlet, a first compressor wheel and a second compressor wheel intended to be mounted at two ends of the shaft in the casing, a front air or gas radial bearing intended to be mounted on a first end of the shaft, and/or a rear air or gas radial bearing intended to be mounted on a second end of the shaft (figs. 4 & 6, ¶ [0027]-[0030]).
Gashi fails to explicitly teach a method for machining the ribs or grooves, the machining method being carried out in a machining unit adapted to receive the shaft with the axial bearing to be machined and comprising a tool holder with a machining tool for machining the ribs or grooves on at least one portion of the shaft or of the axial bearing of the shaft, the method being characterised in that all of the ribs or grooves are obtained on a workpiece portion of the shaft driven rotatably and/or of the disc of the axial bearing of the shaft, by displacement of the shaft and/or of the disc of the axial bearing of the shaft, or of the tool holder at once, in a longitudinal machining direction, by the machining tool performing reciprocating motions with a machining position in contact with the shaft and/or with the disc of the axial bearing of the shaft, and a position without contact with the shaft and/or with the disc of the axial bearing of the shaft, from the beginning to the end of the workpiece portion with the shaft and/or with the disc of the axial bearing of the shaft, and in that the reciprocating motions of the machining tool are synchronised with a sinusoidal program carried out in the machining unit, as well as with the desired and programmed arrangement of the ribs or grooves to be produced on the portion of the shaft and/or of the disc of the axial bearing of the shaft. However, this would have been obvious in view of Aoshima.
Aoshima is also directed to forming a plurality of V-shaped grooves 38 on a circumferential surface of a cylindrical component (figs. 4-5, ¶ [0051]). Aoshima teaches fixing the cylindrical component to a chuck so that the component 16 can be rotated (fig. 1, ¶ [0030]), and forming the groove with a machining tool 20 held by a tool holder 24 (figs. 1 & 4, ¶ [0031]-[0033]). The machining process comprises reciprocating the cutting tool towards and away from the workpiece in accordance with a sine wave so that the cutting tool is reciprocally moved in contact with the workpiece and spaced from the workpiece (figs. 3 & 5, ¶ [0035]). The reciprocating nature allows the cutting tool to form a portion of a different groove each time the cutting tool is brought back in contact with the workpiece (fig. 5A & 5B, ¶ [0035] & [0039]). This process allows the shape of the groove to be changed, has improved accuracy, and can reduce processing time (¶ [0046]).
In this case, each of Gashi and Aoshima are directed to a shaft having grooves thereon. While Gashi is silent as to how the grooves are formed, Aoshima teaches a known method to machine grooves as detailed above, which can shorten the time it takes to form the grooves while providing good accuracy and can make grooves of different shapes including V-shapes. Thus, for these advantages, it would be obvious to form grooves 32 and/or 24a of Gashi by the process taught by Aoshima.
Specifically, to form grooves 32, a shaft holder of a machine unit holds and rotates the shaft 7 while a tool holder reciprocates a tool head into and out of contact with the shaft in accordance with a sinusoidal program to successively form a portion of each groove. Then the tool/tool head is moved in a longitudinal direction with respect to the shaft and the reciprocating motion is repeated. The tool/tool head repeats this process until the groove is fully formed.
With respect to grooves 24a, a shaft holder of a machine unit holds and rotates the shaft 7 having axial bearing 24 fixed thereto while a tool holder reciprocates a tool head into and out of contact with the disc 24 of shaft in accordance with a sinusoidal program to successively form a portion of each groove. Then the tool/tool head is moved either radially inwards or outwards with respect to the shaft and the reciprocating motion is repeated. The tool/tool head repeats this process until the groove is fully formed.
Since the grooves 24a & 32 of Gashi have uniform spacing in the circumferential direction, and have a spacing that is similar to a width of the grooves (see fig. 6 of Gashi), it would be predictable that forming the grooves in this way will create grooves suitable for their intended purpose.
Regarding claim 2, Gashi fails to explicitly teach the air or gas axial bearing (24) is produced on the shaft (7) before machining the ribs or grooves (32) on the shaft (7). However, MPEP 2144.04(IV)(C) states selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. In this case, Gashi teaches providing axial bearing on shaft 7 and to form grooves 24a/32 on the shaft (fig. 6, ¶ [0031]). While Gashi is silent as to if the axial bearing 24 is provided before the grooves 24a/32, providing the axial bearing 24 first will not produce any new or unexpected result because the final structure will still be a shaft having the axial bearing 24 and grooves 24a/32.
Claim 8 recites the workpiece is the air or gas axial bearing (24) in the form of a disc forming part of the shaft (7) in one piece, characterised in that the ribs or grooves (24a) and the arrangement thereof are programmed in the machining unit (100) to activate the machining tool (120, 121) so as to produce all of the ribs or grooves at once on a first face of the disc by moving the machining tool, or the rotating disc in a single machining direction from the periphery of the disc to the bottom of the annular area of the ribs or grooves or conversely, and by the reciprocating motions of the machining tool (120, 121) according to how the machining unit (100) was programmed. This is taught as detailed in the rejection to claim 1, above, i.e. forming grooves 24a on axial bearing 24.
Claim 9 recites all of the ribs or grooves (24a) are produced at once on a second face of the disc by moving the machining tool, or the rotating disc in a single machining direction from the periphery of the disc to the bottom of the annular area of the ribs or grooves (24a) or conversely, and by the reciprocating motions of the machining tool (120, 121) according to how the machining unit (100) was programmed. Gashi teaches that grooves 24a can be on at least one face of axial bearing 24 (¶ [0031]). Thus, it would be obvious to create grooves 24a on the opposite second face of axial bearing 24 in the same process used to create the grooves on the first face (this process is detailed in the rejection to claim 1, above). This will predictably allow an air film to be generated between the second face and the element adjacent thereto as illustrated in fig. 4 of Gashi.
Regarding claim 10, Gashi et al. further teach all of the ribs or grooves are produced in the form of spirals with the same orientation on the two faces or with two different orientations so as to generate films of air via the grooves when rotating the shaft to hold the axis in a position that is longitudinally well centred during operation of the centrifugal compressor (figs. 4 & 6, ¶ [0031]).
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Gashi et al. as applied to claim 1 above, and further in view of Ceramic Machining, Industrial Quick Search, Screen shot taken on December 6, 2022 (“IQS”).
Regarding claim 5, Gashi et al. further teach the shaft to be machined is made of tungsten carbide or ceramic (¶ [0028] of Gashi), characterised in that the shaft is rotated during machining about the longitudinal axis, in that all of the ribs or grooves are obtained at once on a first workpiece portion of the first end of the shaft from the beginning of the first portion to the end of the first portion by reciprocating motions of the machining tool and displacement in a longitudinal direction of machining of the rotating shaft according to how the machining unit is programmed (see rejection to claim 1 above, wherein leftmost grooves 32 in fig. 6 of Gashi is interpreted as the first workpiece portion).
Gashi fails to explicitly teach the head of the machining tool is made of diamond. However, this would have been obvious in view of IQS.
IQS is directed to ceramic machining (page 1, wherein all references to IQS refer to the document submitted herewith). IQS teaches that diamond is the abrasive of choice for machining at least certain ceramics (pages 9 and 11).
In this case, Gashi et al. teaches to machine grooves in a ceramic shaft, but does not teach the material of the machining tool. IQS teaches that diamond abrasives in the head of the cutting tool are generally well known and the material of choice when machining at least some ceramic materials. Thus, it would be obvious to machine the grooves of Gashi with a machining tool have a head comprising diamond abrasives.
Regarding claim 6, Gashi et al. further teach the shaft to be machined is made of tungsten carbide or ceramic (¶ [0028] of Gashi), characterised in that the shaft is rotated during machining about the longitudinal axis, in that all of the ribs or grooves are obtained at once on a second workpiece portion of the second end of the shaft from the beginning of the second portion to the end of the second portion by reciprocating motions of the machining tool and displacement in a longitudinal direction of machining of the tool holder according to how the machining unit is programmed (see rejection to claim 1 above, wherein rightmost grooves 32 in fig. 6 of Gashi is interpreted as the second workpiece portion).
Gashi fails to explicitly teach the head of the machining tool is made of diamond. However, this would be obvious in view of IQS for the same reasons detailed in the rejection to claim 5, above.
Claim 7 recites during machining of the ribs or grooves (32), a change of orientation of the ribs or grooves (32) occurs when half of the first workpiece portion of the first end of the shaft (7) and when half of the second workpiece portion of the second end of the shaft (7) are passed, according to a programming of the machining unit so as to obtain V-shaped grooves along the length of the first and second machined portions for the purpose of generating air or gas pressure in a front radial bearing (18) arranged on the first portion or in a rear radial bearing (22) arranged on the second portion during operation of the compressor with rotation of the shaft (7) above a limit speed so that there is no longer any mechanical contact with the one or more front (18) and rear (22) radial bearings. As illustrated in fig. 6 of Gashi, the grooves are V-shaped so that they change orientation at about the half way point in the longitudinal direction of the shaft. In addition, one of skill in the art appreciates that the grooves 32 are capable of generating air or gas pressure in a front or rear radial bearing 18/22 to avoid contact (figs. 4 & 6, ¶ [0031]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/643,465 (“the ‘465 application”) in view of Gashi. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the ‘465 application teaches all the limitations of claim 1 except for the grooves being formed on the shaft or axial bearing. However, this would have been obvious in view of Gashi. Gashi teaches a centrifugal compressor having a similar workpiece/shaft with grooves (figs. 1-6, ¶ [0028]-[0031]). Gashi also teaches the shaft and axial bearing each comprising grooves 24a/32 (fig. 6, ¶ 0031]). Thus, it would be obvious and predictable to modify claim 1 so that the grooves are produced on the shaft or axial bearing in order to create an air film between the grooves and component adjacent thereto.
Regarding claim 2, the ‘465 application fails to teach the limitation of claim 2. However, MPEP 2144.04(IV)(C) states selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. In this case, the ‘465 application in view of Gashi teaches providing axial bearing on shaft and to form grooves on the shaft (see rejection to claim 1 above). While the ‘465 application in view of Gashi is silent as to if the axial bearing is provided before the grooves, providing the axial bearing first will not produce any new or unexpected result because the final structure will still be a shaft having the axial bearing and grooves.
Claims 5 and 7 of the instant application are rejected over claim 3 of the ‘465 application. Claims 6, 8, 9, and 10 of the instant application are rejected over claims 4, 5, 6, and 7 of the ‘465 application, respectively.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 3-4 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. Gashi teaches the axial bearing 24 being a separate component from the shaft that is arranged around the shaft (fig. 4, ¶ [0030]). It would not be obvious without hindsight to modify Gashi et a. to form the disc 24 from a blank of the shaft by using the machining unit of claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kyle Cook whose telephone number is 571-272-2281. The examiner’s fax number is 571-273-3545. The examiner can normally be reached on Monday-Friday 9AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner's supervisor Thomas Hong (571-272-0993). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/KYLE A COOK/Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct quotations from claims are presented in italics. All information within non-italicized parentheses and presented with claim language are from or refer to the cited prior art reference unless explicitly stated otherwise.
2 In 103 rejections, when the primary reference is followed by “et al.”, “et al.” refers to the secondary references. For example, if Jones was modified by Smith and Johnson, subsequent recitations of “Jones et al.” mean “Jones in view of Smith and Johnson”.
3 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.”
Prosecution Insights