DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant did not provide proper mark-up indicating changes to the claims. For example, claims 15-20 are now missing, and e.g. changes made to other claims were not properly indicated such as the “and” in claim 1 of the claims filed 5/27/2024 at line 18 is now missing in the claims filed 10/6/2025. Claims 1-20 should be canceled and renumbered claims should be presented (e.g. claims 21-35) so that the record is clear going forward.
Claim Rejections - 35 USC § 112
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 1-14 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 pre-AIA the applicant regards as the invention.
A claim is indefinite if, when read in light of the specification, it fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention. See Nautilus, Inc. v. Biosig Instruments, Inc., U.S., No. 13-369, June 2, 2014.
Claims 1-14 state one or more of the following terms: fixation assembly, fixation part, fixation winding, fixation iron core, rotation module.
No definition is given for these terms in the specification. A search of prior art databases appears to indicate applicant is acting as his own lexicographer in creating new terminology.
Therefore, the examiner is unable to understand the intended scope of the above claim terminology. For example, what is the difference between a fixation iron core and an iron core? What is the difference between a fixation winding and a winding? What is the precise meaning and the intended scope of a fixation assembly, a fixation part, and a rotation module? The specification provides no answer to these questions and therefore the intended meaning and scope of these terms is unclear. It is unclear what applicant is attempting to claim.
According to MPEP 2173.05(a):
MPEP 2173.05(a) New Terminology
I. THE MEANING OF EVERY TERM SHOULD BE APPARENT
The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Applicants need not confine themselves to the terminology used in the prior art, but are required to make clear and precise the terms that are used to define the invention whereby the metes and bounds of the claimed invention can be ascertained. During patent examination, the pending claims must be given the broadest reasonable interpretation consistent with the specification. In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969). See also MPEP § 2111 - § 2111.01.
Applicant is also reminded that, according to MPEP 2111.01, it is improper for the examiner to import the limitations of any particular embodiment into the claims that is not part of the claims or when the claim language is broader than the embodiment.
MPEP 2111.01
II. IT IS IMPROPER TO IMPORT CLAIM LIMITATIONS FROM THE SPECIFICATION
“Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). See also Liebel-Flarsheim Co. v. Medrad Inc., 358 F.3d 898, 906, 69 USPQ2d 1801, 1807 (Fed. Cir. 2004)
With no definition of this new terminology provided in the specification, and because the examiner cannot import claim limitations from any embodiment into the claims that are not part of the claims or when the claim language is broader than the embodiments, there is no way to be reasonably certain of the scope of the claim terms set forth above, so these terms do not comply with the requirements of 35 U.S.C. 112(b).
MPEP 904.01 states “The breadth of the claims in the application should always be carefully noted; that is, the examiner should be fully aware of what the claims do not call for, as well as what they do require.”.
MPEP 2173.02 states “During examination, after applying the broadest reasonable interpretation to the claim, if the metes and bounds of the claimed invention are not clear, the claim is indefinite and should be rejected. Packard, 751 F.3d at 1310.”
It is unclear what is being claimed and the intended scope of the claimed invention is unknown. The examiner is unable to conduct a proper search of the prior art because he cannot determine the intended scope of the claims. Determining the scope of the claims is an essential first step in completing a proper search of the prior art. MPEP 904 states (emphasis added) “The examiner, after having obtained a thorough understanding of the invention disclosed and claimed in the nonprovisional application, then searches the prior art as disclosed in patents and other published documents, i.e., nonpatent literature (NPL).”.
Regarding claims 6-7, the motor support appears to be the same part as the duct support. Therefore, it is unclear what is being claimed in claims 6-7 as separate supports appear to be claimed.
Dependent claims are rejected based on their dependency to claims containing one or more of these terms indicated above.
The claims will be examined as best understood and interpretations of the indefinite terminology will be provided as mappings to known structures of the prior art as indicated in the prior art rejections below.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-2, 5-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kazuhiro JPS614895A in view of Kudo US 20040145250.
In Fig 2, Kazuhiro discloses:
(Claim 1) A rotating machine comprising: a fixed shaft 1; a fixation assembly (as best understood, the fixation assembly will be interpreted as the combination of individual parts as claimed by applicant below) having at least one fixation part (as best understood, the fixation part is interpreted as comprising at least 2, 3) coupled to an outer peripheral surface of the fixed shaft 1 (see e.g. Fig 2), the at least one fixation part including a fixation winding and a fixation iron core (see annotated Fig 2 herein); and a rotation module (4, 6, 7, 17; 5, 8, 9, 18) rotatably supported by the fixed shaft, wherein the rotation module includes a first rotor assembly (5, 8, 9, 18) including a first rotor frame 9 having a space accommodating one portion 3 of the at least one fixation part, a first rotor magnet 5 installed on an inner peripheral surface of the first rotor frame, and a first propeller 8 installed on an outer peripheral surface of the first rotor frame, and a second rotor assembly (4, 6, 7, 17) including a second rotor frame 7 having a space accommodating another portion 2 of the at least one fixation part, a second rotor magnet 4 installed on an inner peripheral surface of the second rotor frame, and a second propeller 6 installed on an outer peripheral surface of the second rotor frame, wherein the first rotor assembly and the second rotor assembly are disposed to be side-by-side along an axis of the fixed shaft (see e.g. Fig 2) and configured to rotate in opposite directions (see the title “Contrarotating axial fan” and the beginning of the description section including “The present invention relates to a reversible axial flow blower that relatively rotates two runners disposed adjacent to each other in opposite directions”); wherein the first rotor frame and the second rotor frame are disposed outside the fixation assembly (as best understood, see Fig 2), and wherein the first rotor assembly and the second rotor assembly are respectively separated from the fixation assembly across a first motor air gap and a second motor air gap (see e.g. annotated Fig 2 herein).
It would be understood by a person of ordinary skill in the art that the core 2, 3 of Kazuhiro would be made of iron and the magnets 4, 5 of Kazuhiro would be permanent magnets but Kazuhiro does not specify these details.
However, Kudo discloses the use of a permanent magnet 27 (see e.g. 0027) motor with an iron core 9 (see e.g. 0021) and windings 13 for driving a fan (see e.g. 0023).
A simple substitution of one known fan motor for another with the predictable result of rotating a fan has been held obvious as per MPEP 2143 I (B).
Before the effective filing date of the claimed invention, one of ordinary skill of the art would have found it obvious to utilize permanent magnet motors as taught by Kudo as a simple substitution for the motors of Kazuhiro to gain the benefit of utilizing a motor type know for driving fans.
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Kazuhiro as modified above discloses (all references to Kazuhiro unless noted otherwise):
(Claim 2) The rotating machine of claim 1, wherein the at least one fixation part includes the fixation winding (13 of Kudo) wound around the fixation iron core (9 of Kudo), and wherein the at least one fixation part includes circumferential portions facing the first rotor permanent magnet (see Fig 2 of Kazuhiro), and the second rotor permanent magnet (see Fig 2 of Kazuhiro wherein the outer circumferential portions of 2 face the inner circumferential portions of 4 and the outer circumferential portions of 3 face the inner circumferential portions of 5).
(Claim 5) The rotating machine of claim 1, wherein the fixation assembly includes a first fixation part and a second fixation part (3, 4 of Kazuhiro) the first fixation part (3 of Kazuhiro) facing the first rotor permanent magnet (5 of Kazuhiro as modified by 27 of Kudo) across the first motor air gap (see annotated Fig 2 herein), and the second fixation part (2 of Kazuhiro) facing the second rotor permanent magnet (4 of Kazuhiro as modified by 27 of Kudo) across the second motor air gap (see annotated Fig 2 herein).
(Claim 6) The rotating machine of claim 1, wherein the fixation assembly includes a motor support (see annotated Fig 2 below wherein applicant’s motor support and duct support appear to be the same support) having one end connected to the fixed shaft and another end extending outward to support the first rotor frame and the second rotor frame (as best understood, the motor support supports the shaft and thus the motor support supports each of the rotors including each of the rotor frames).
(Claim 7) The rotating machine of claim 6, wherein the fixation assembly includes a fluid duct support (see annotated Fig 2 below) having one end connected to the motor support and another end extending outward (see annotated Fig 2 below).
(Claim 8) The rotating machine of claim 7, wherein the fixation assembly includes a fluid duct 16 fixed to the fluid duct support and configured to guide an external fluid toward at least one of the first propeller or the second propeller (see annotated Fig 2 below).
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(Claim 9) The rotating machine of claim 1, wherein the first rotation rotor assembly and the second rotor assembly are spaced apart from each other (as best understood, see Fig 2).
(Claim 10) The rotating machine of claim 1, wherein at least one of the fixation assembly, the first rotor permanent magnet, and the second rotor permanent magnet is treated with a waterproof coating (see e.g. the title of Kudo and 0025 of Kudo including “A molded part 45 is formed on the inner cylindrical section 37. The molded part 45 is injection molded with an insulating resin made of an urethane resin in such a manner that the stator 1, electronic components 15, and circuit substrate 3 are included in its inside.”).
(Claim 11) The rotating machine of claim 1, further comprising a bearing (as best understood, see 12, 11) disposed between the rotation module and the fixation assembly for the rotation module to rotate above the fixation assembly.
(Claim 12) The rotating machine of claim 11, wherein the bearing includes a first shaft bearing (as best understood, see 12) disposed between the fixed shaft and the first rotor frame, and a second shaft bearing (as best understood, see 11) disposed between the fixed shaft and the second rotor frame.
(Claim 13) The rotating machine of claim 11, wherein the fixation assembly includes a motor support (see annotated Fig 2 herein) having one end connected to the fixed shaft and the another end extending outward to support the first rotor frame and the second rotor frame (as best understood, the motor support in annotated Fig 2 above supports the shaft and thus supports each of the rotors including each of the rotor frames), and the bearing includes a first motor support bearing 19 disposed between the motor support and the first rotor frame, and a second motor support bearing 10 disposed between the motor support and the second rotor frame (as best understood, see annotated Fig 2 herein).
Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kazuhiro JPS614895A in view of Kudo US 20040145250 in further view of Shimokawa US 20230243360.
Regarding claims 3-4, Kazuhiro as modified above discloses wherein the fixation assembly includes a fixation slot disposed in the fixation iron core and the fixation winding is wound around the fixation iron core (see e.g. 0021 of Kudo including “The stator 1 includes an iron core 9 constituted from a plurality of laminated steel plates. The iron core 9 has a plurality of projecting pole portions 11 arranged in a circumferential direction. A winding 13 is wound around each of the projecting pole portions 11 of the iron core 9 through an insulator 10 formed of an insulating resin. These projecting portions 11 function as stator magnetic poles when the wirings 13 are excited. Accordingly, the tip end surface of each of the projecting portions 11 becomes a pole face 11a of the stator magnetic pole.”). However, neither Kazuhiro nor Kudo disclose the number of poles and magnets and thus do not disclose the other limitations of claim 3-4.
However, the number of poles and slots are known design parameters for electric motors and their selection is simply a design choice. Additionally, Shimokawa discloses Q = 12, P1 = 10, and P2 = 14 (see e.g. “ A combination of the number P of magnetic poles and the number S of slots is one of P=8 and S=9, P=10 and S=9, P=10 and S=12 and P=14 and S=12.” in the abstract).
Before the effective filing date of the claimed invention, one of ordinary skill of the art would have found it obvious to utilize P1-10, P2=12, Q=10 as taught by Shimokawa in the motors of Kazuhiro as modified above to gain the benefit of “to reduce the harmonic components included in the surface magnetic flux of the rotor and inhibit an increase in vibration due to an exciting force in the radial direction acting on the rotor. Accordingly, the noise of the blower can be reduced” as taught by Shimokawa in 0008.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kazuhiro JPS614895A in view of Kudo US 20040145250 in further view of Nishio US 20190186335.
Kazuhiro as modified above does not disclose the limitations of claim 14.
Nishio discloses at least one cooling hole 85 disposed in at least one of the fixation assembly and the first and second rotor frames (see e.g. Fig 3), the cooling hole being configured to place an exterior flow in fluid communication with an interior flow path of the rotating machine (see e.g. Fig 2).
Before the effective filing date of the claimed invention, one of ordinary skill of the art would have found it obvious to utilize ventilation holes as taught by Nishio in the rotors of Kazuhiro as modified above to gain the benefit of improving cooling performance for the electric motor as taught by Nishio in 0043 and/or suppressing accumulation of dust in the rotor as taught by Nishio in 0041.
Response to Arguments
Applicant's arguments concerning the pending claims have been fully considered but they are not persuasive.
Applicant argues:
Claim 1, as amended, recites in part: "wherein the first rotor frame and the second rotor frame are disposed outside the fixation assembly, and wherein the first rotor assembly and the second rotor assembly are respectively separated from the fixation assembly across a first motor air gap and a second motor air gap, " which is not disclosed, taught or suggested by the cited references. (emphasis added)
Examiner’s reply:
All motors have an air gap to allow the rotor to rotate relative to the stator. Applicant had not explained how a rotor can rotate relative to a stator without an air gap. Applicant is asked for a full, logical explanation. For example, see annotated Fig 2 herein.
Applicant argues:
As amended, claim 1 defines a contra-rotating machine in which two rotor assemblies (each having permanent magnets on an inner peripheral surface and a propeller on an outer peripheral surface) are arranged side-by-side along the fixed-shaft axis and rotate in opposite directions, while both rotor frames are disposed outside a fixation assembly and are respectively separated from that fixation assembly across the first and second motor air gaps.
In the present invention, the fixation assembly corresponds to a stator structure (including a core and a winding) fixed on the shaft, and the two annular air gaps are formed between the stator structure and the respective inner-surface magnets of the first and second rotors, so that the fixation assembly simultaneously provides electromagnetic coupling to both contra-rotating rotors. This shared-stator, dual-air-gap electromagnetic topology is the essence of the claimed configuration. Here, one stator (including the core and winding) disposed around the shaft faces both rotor magnets across respective annular air gaps. Both rotor frames sit outside the stator are placed side- by-side along the shaft, and spin in opposite directions.
By contrast, Kazuhiro teaches a contrarotating axial fan in which two runners (e.g., propellers) are each driven by their own motor/stator arranged on a shaft; it is a two-motor architecture, not a shared-stator configuration. In Kazuhiro, each runner (propeller) has its own stator/electromagnetic circuit, and Kazuhiro emphasizes separately driving or controlling the two motors for performance setting. Nothing in Kazuhiro suggests eliminating one stator or sharing a single stator, nor forming two annular air gaps. Thus, Kazuhiro lacks the single fixation (stator) assembly that simultaneously faces and energizes both rotors across respective air gaps and teaches away from consolidating two motors into one shared stator because independent control is a design principle of Kazuhiro. (Kazuhiro, FIG. 2 and corresponding descriptions: overall arrangement and the depiction of separate stators driving respective runners).
Kudo discloses a conventional brushless permanent-magnet fan motor in which one rotor (with inner-surface magnets) cooperates with one stator to drive one fan, with discussion about waterproof molding and packaging of the single motor. Kudo neither discloses nor suggests two contra-rotating rotor assemblies sharing one stator assembly, nor two annular air gaps concurrently facing respective rotor magnet of different rotors around a single stator. Substituting Kudo's PM motor elements into Kazuhiro at most changes motor type; it does not furnish any motivation or teaching to redesign Kazuhiro's two-motor system into a single-stator, dual-air-gap topology that simultaneously links two rotors to the same stator. (Kudo, single-rotor/single-stator fan; waterproof molding focus).
Under KSR, the Office Action must explain why a person of ordinary skill would have been motivated to merge Kazuhiro's two distinct stators into a single stator (including core and winding) shared by both rotors, with a reasonable expectation of success and without changing the principle of the invention. Neither such rationale has been articulated nor apparent. The proposed combination would not be a "simple substitution." It would require extensive re-allocation of the magnetic circuit (two air gaps serviced by one stator), re-design of the winding arrangement (a single continuous winding servicing two contra-rotating magnet sets), re-establishment of flux return paths and mechanical clearances, and abandonment of Kazuhiro's separate-motor control mechanism. Those steps go well beyond routine optimization and would alter Kazuhiro's principle of operation.
In sum, Kazuhiro relies on two separate stators to achieve independent control of two runners and thus teaches away from a single shared stator (core and winding). Kudo does not remedy that deficiency.
In view of the foregoing, the cited references, alone or in combination, fail to disclose or teach a fixation (stator) assembly having two annular air gaps that respectively face the first and second rotor magnets so that one stator simultaneously services both contra-rotating rotors. Neither Kazuhiro nor Kudo anticipates or renders obvious the shared-stator and dual-air-gap configurations in the present invention. Accordingly, Applicants respectfully request withdrawal of the rejection under § 103.
Examiner’s reply:
Firstly, once again, is applicant describing the embodiment in Fig 7 of applicant’s specification? Applicant is reminded that in the reply filed 6/18/2024 applicant elected the embodiment in Figs 1-4 without traverse. The embodiment in Fig 1-4 has two separate stators 20-1, 20-2. If applicant is attempting to claim the non-elected embodiment in Fig 7, the claims will be withdrawn from consideration as being directed to a non-elected invention.
Secondly, applicant argues the term “stator” and more specifically a “shared stator”. There is no “stator” recited in the claims and there is no “shared stator” recited in the claims. Only the indefinite terms “fixation assembly” and “fixation part “ are recited in the claims. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., stator, shared stator) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Thirdly, if applicant would like to argue using the actual claim terms “fixation assembly” and “fixation part”, applicant would first need to explain the precise meaning and scope of these terms as required by MPEP 2173.05(a). It would be impossible to argue a “fixation assembly” or a “fixation part” is not being taught if the meaning and scope of these terms have not been made clear and precise by applicant as required by MPEP 2173.05(a). The examiner awaits such an explanation of the precise meaning and scope of these terms.
Fourthly, claim 1 recites (emphasis added) “a fixation assembly having at least one fixation part” which clearly allows for more than “fixation part”, and claim 5 which depend from claim 1 recites (emphasis added) “wherein the fixation assembly includes a first fixation part and a second fixation part”. Thus, applicants’ s claims not only allow more than one “fixation part” but actually specify two “fixation parts” Therefore, since all of applicant’s arguments are based on a “shared stator” or “one stator”, all of applicant’s arguments are baseless and completely illogical.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS ANDREW FINK whose telephone number is (571) 270-3373. The examiner can normally be reached on M-Th 9-7.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Laurenzi can be reached on (571) 270-7878. The fax phone number for the organization where this application or proceeding is assigned is 571-270-4373.
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/Thomas Fink/Primary Examiner, Art Unit 3746