OFFICE ACTION
This application has been assigned or remains assigned to Technology Center 1700, Art Unit 1774 and the following will apply for this application:
Please direct all written correspondence with the correct application serial number for this application to Art Unit 1774.
Telephone inquiries regarding this application should be directed to the Electronic Business Center (EBC) at http://www.uspto.gov/ebc/index.html or 1-866-217-9197 or to the Examiner at (571) 272-1139. All official facsimiles should be transmitted to the centralized fax receiving number (571)-273-8300.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d). All of the CERTIFIED copies of the priority documents have been received in this national stage application from the International Bureau (PCT Rule 17.2(a)).
Information Disclosure Statement
Note the attached PTO-1449 form(s) submitted with the Information Disclosure Statement filed 1 MARCH 2024.
Specification
The substitute specification is approved for entry but has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The substitute abstract is acceptable.
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed (MPEP 606.01) by mentioning the radial pouter projections arranged on the discs.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The terms used in this respect are given their broadest reasonable interpretation in their ordinary usage in context as they would be understood by one of ordinary skill in the art, in light of the written description in the specification, including the drawings, without reading into the claim any disclosed limitation or particular embodiment. See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
The Examiner interprets claims as broadly as reasonable in view of the specification, but does not read limitations from the specification into a claim. Elekta Instr. S.A.v.O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000). "A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. Inc. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987).
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness." In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983). See MPEP 2112.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless—
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 26-34, 41, 43-50 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by IVIN et al. (US 4142671) that discloses a centrifuge, which is separator or solid drum screw centrifuge comprising a separation disc stack having a plurality of separation discs 2; and a drum of the centrifuge having a drum interior, wherein the separation disc stack is arranged in the interior of the drum, wherein each of the plurality of separation discs 2 comprises a frustoconical shell-like main body having a smaller diameter and a larger diameter (col. 5, line 54 - col. 6, line 18; Figures 1, 2, 5, and 11); wherein the main body of the disc 2 includes an inner surface and an outer surface, and the main body includes at least one or more spacers or tabs 16; wherein radial outer projections of these spacers 16 are arranged circumferentially distributed on the larger diameter of the main body in a region of the one or more spacers 16 and extending radially beyond the larger diameter periphery 11 of the disc 2; wherein respective ones of the radial outer projections 16 are arranged in a line or in extension of the outer surface of the main body 2; wherein the separation disc 2 is configured to be arranged in a separation disc stack in a drum interior of a drum of the centrifuge to clarify or separate a mixture of substances (col. 5, line 54 - col. 6, line 18; Figures 1, 2, 5, and 11); wherein the radial outer projections 16 on a circumference of the main body of the separation disc 2 in a region of the larger diameter are arranged with a same pitch as an arrangement of the one or more spacers 16 on the separation disc (Figure 5); wherein the radial outer projections 16 have a same taper angle relative to an axial axis of the separation disc 2 as the main body (Figure 5); wherein segment-like zones between 16 are formed by the radial outer projections 16 in a region of the larger diameter of the main body in each case between respective ones of the radial outer projections 16; wherein cutouts 13 or 14 are arranged circumferentially distributed on the larger diameter of the main body 2; wherein the cutouts 13 or 14 on the circumference of the main body 2 are made at a uniform pitch; wherein the cutouts 13 or 14 are each located in a middle, in a right-hand region, or in a left-hand region of the respective segment-like zone 11; wherein each spacer 16 of the one or more spacers has a continuous length corresponding to a sum of a length of a surface line on the outer surface of the main body plus a length of a respective one of the radial outer projections (Figure 5); wherein the one or more spacers 16 are arranged in a form of tabs at an angle (any angle) to the surface line; wherein the main body of the separation disc is produced by a spinning process is a product-by-process limitation not germane to the patentability of the product per MPEP 2113; wherein the separation disc 2 has a driver geometry on the smaller diameter of the main body (the alignment/driving notch seen below “VII” in Figure 5); wherein a cross-sectional geometry of the one or spacers is rectangular, trapezoidal rectangular, rectangular with rounded corners, semi-elliptical, or semi-oval (Figure 5); wherein the one or more the spacers 16 are spaced apart by respective equal gaps (labeled at 2) between the one or more spacers 16 (Figure 5); wherein the cutouts 13 or 14 are arranged circumferentially distributed on the larger diameter 11 of the main body of each of the plurality of separation discs 2, wherein the cutouts each form a riser channel; wherein segment-like zones are formed by the radial outer projections 16 in a region of the larger diameter of the main body in each case between respective ones of the radial outer projections 16; wherein segment-like channels are formed by superimposed segment-like zones of the plurality of separation discs 2 parallel to an axis of the centrifuge; wherein the radial outer projections 16 project into a solids chamber of the drum by 25% to 75% with respect to a distance between a radius of the main body of the separation disc 2 without projection and an outer diameter of the solids chamber of the drum in a region of the separation disc stack 2.
Claims 26-29, 33, 34, 41, 43, 44, 45, 46, 48, 49, and 50 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by BRUNING (US 4460352) that discloses a centrifuge, which is separator or solid drum screw centrifuge 1 comprising a separation disc stack 6 having a plurality of separation discs 6; and a drum of the centrifuge having a drum interior, wherein the separation disc stack is arranged in the interior of the drum (Figure 1), wherein each of the plurality of separation discs 6 comprises a frustoconical shell-like main body having a smaller diameter and a larger diameter (Figures 1-4); wherein the main body of the disc 6 includes an inner surface and an outer surface, and the main body includes at least one or more spacers or tabs 7; wherein radial outer projections 15 or 16 of these spacers 7 are arranged circumferentially distributed on the larger diameter of the main body in a region of the one or more spacers 7 and extending radially beyond the larger diameter periphery 5 of the disc 6; wherein respective ones of the radial outer projections 15 or 16 are arranged in a line or in extension of the outer surface of the main body 6; wherein the separation disc 6 is configured to be arranged in a separation disc stack 6 in a drum interior of a drum of the centrifuge to clarify or separate a mixture of substances (Figures 1 and 3); wherein the radial outer projections 15 or 16 on a circumference of the main body of the separation disc 6 in a region of the larger diameter are arranged with a same pitch as an arrangement of the one or more spacers 7 on the separation disc (Figures 2 and 4); wherein the radial outer projections 15 or 16 have a same taper angle relative to an axial axis of the separation disc 6 as the main body (Figures 1-4); wherein segment-like zones 10 between 15 and 16 are formed by the radial outer projections 15 or 16 in a region of the larger diameter of the main body in each case between respective ones of the radial outer projections 15 or 16; wherein each spacer 7 of the one or more spacers 7 has a continuous length corresponding to a sum of a length of a surface line on the outer surface of the main body plus a length of a respective one of the radial outer projections (Figures 2 and 4); wherein the one or more spacers 7 are arranged in a form of tabs at an angle (any angle) to the surface line; wherein the main body of the separation disc is produced by a spinning process is a product-by-process limitation not germane to the patentability of the product per MPEP 2113; wherein the separation disc 6 has a driver geometry on the smaller diameter of the main body (the alignment/driving notches seen within the smaller diameter region of the disc 6 in Figures 2 and 4); wherein a cross-sectional geometry of the one or spacers is rectangular, trapezoidal rectangular, rectangular with rounded corners, semi-elliptical, or semi-oval (Figures 2 and 4); wherein the one or more the spacers 7 are spaced apart by respective equal gaps between the one or more spacers 7 (Figures 2 and 4); wherein segment-like zones 10 are formed by the radial outer projections 15 or 16 in a region of the larger diameter of the main body in each case between respective ones of the radial outer projections 15 or 16; wherein segment-like channels are formed by superimposed segment-like zones of the plurality of separation discs 6 parallel to an axis of the centrifuge (Figures 1-4); wherein the radial outer projections 15 or 16 project into a solids chamber 11 of the drum by 25% to 75% with respect to a distance between a radius of the main body of the separation disc 6 without projection and an outer diameter of the solids chamber of the drum in a region of the separation disc stack 6.
* * *
Claim 41: As noted above, the product-by-process limitations (i.e., the manner in which the support device is manufactured) do not impart patentability to the claims per MPEP 2113: “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979). Since claim 41 fails to recite any “distinctive structural characteristics [of] the final product”, the rejections are believed valid.
Claim Rejections - 35 USC § 103
The terms used in this respect are given their broadest reasonable interpretation in their ordinary usage in context as they would be understood by one of ordinary skill in the art, in light of the written description in the specification, including the drawings, without reading into the claim any disclosed limitation or particular embodiment. See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). The Examiner interprets claims as broadly as reasonable in view of the specification, but does not read limitations from the specification into a claim. Elekta Instr. S.A.v.O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000).
To determine whether subject matter would have been obvious, "the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved .... Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented." Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).
The Supreme Court has noted:
Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.
KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1740-41 (2007). "Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." (Id. at 1742).
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
The instant office action conforms to the policies articulated in the Federal Register notice titled “Updated Guidance for Making a Proper Determination of Obviousness” at 89 Fed. Reg. 14449, February 27, 2024, wherein the Supreme Court’s directive to employ a flexible approach to understanding the scope of prior art is reflected in the frequently quoted sentence, ‘‘A person of ordinary skill is also a person of ordinary creativity, not an automaton.’’ Id. at 421, 127 S. Ct. at 1742. In this section of the KSR decision, the Supreme Court instructed the Federal Circuit that persons having ordinary skill in the art (PHOSITAs) also have common sense, which may be used to glean suggestions from the prior art that go beyond the primary purpose for which that prior art was produced. Id. at 421–22, 127 S. Ct. at 1742. Thus, the Supreme Court taught that a proper understanding of the prior art extends to all that the art reasonably suggests, and is not limited to its articulated teachings regarding how to solve the particular technological problem with which the art was primarily concerned. Id. at 418, 127 S. Ct. at 1741 (‘‘As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.’’). ‘‘The obviousness analysis cannot be confined . . . by overemphasis on the importance of published articles and the explicit content of issued patents.’’ Id. at 419, 127 S. Ct. at 1741. Federal Circuit case law since KSR follows the mandate of the Supreme Court to understand the prior art— including combinations of the prior art—in a flexible manner that credits the common sense and common knowledge of a PHOSITA. The Federal Circuit has made it clear that a narrow or rigid reading of prior art that does not recognize reasonable inferences that a PHOSITA would have drawn is inappropriate. An argument that the prior art lacks a specific teaching will not be sufficient to overcome an obviousness rejection when the allegedly missing teaching would have been understood by a PHOSITA—by way of common sense, common knowledge generally, or common knowledge in the relevant art. For example, in Randall Mfg. v. Rea, 733 F.3d 1355 (Fed. Cir. 2013), the Federal Circuit vacated a determination of nonobviousness by the Patent Trial and Appeal Board (PTAB or Board) because it had not properly considered a PHOSITA’s perspective on the prior art. Id. at 1364. The Randall court recalled KSR’s criticism of an overly rigid approach to obviousness that has ‘‘little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications.’’ Id. at 1362, citing KSR, 550 U.S. at 415–22, 127 S. Ct. at 1727. In reaching its decision to vacate, the Federal Circuit stated that by ignoring evidence showing ‘‘the knowledge and perspective of one of ordinary skill in the art, the Board failed to account for critical background information that could easily explain why an ordinarily skilled artisan would have been motivated to combine or modify the cited references to arrive at the claimed inventions.’’ Id.
From Norgren Inc. v. Int’l Trade Comm’n, 699 F.3d 1317, 1322 (Fed. Cir. 2012) (‘‘A flexible teaching, suggestion, or motivation test can be useful to prevent hindsight when determining whether a combination of elements known in the art would have been obvious.’’); Outdry Techs. Corp. v. Geox S.p.A., 859 F.3d 1364, 1370–71 (Fed. Cir. 2017) (‘‘Any motivation to combine references, whether articulated in the references themselves or supported by evidence of the knowledge of a skilled artisan, is sufficient to combine those references to arrive at the claimed process.’’). In keeping with this flexible approach to providing a rationale for obviousness, the Federal Circuit has echoed KSR in identifying numerous possible sources that may, either implicitly or explicitly, provide reasons to combine or modify the prior art to determine that a claimed invention would have been obvious. These include ‘‘market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.’’ Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013), quoting KSR, 550 U.S. at 418–21, 127 S. Ct. at 1741–42.
The Federal Circuit has also clarified that a proposed reason to combine the teachings of prior art disclosures may be proper, even when the problem addressed by the combination might have been more advantageously addressed in another way. PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014) (‘‘Our precedent, however, does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away.’’) (emphasis in original). One aspect of the flexible approach to explaining a reason to modify the prior art is demonstrated in the Federal Circuit’s decision in Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 796 (Fed. Cir. 2021), which confirms that a proposed reason is not insufficient simply because it has broad applicability. Patent challenger Intel had argued in an inter partes review before the Board that some of Qualcomm’s claims were unpatentable because a PHOSITA would have been able to modify the prior art, with a reasonable expectation of success, for the purpose of increasing energy efficiency. Id. at 796–97. The Federal Circuit explained that ‘‘[s]uch a rationale is not inherently suspect merely because it’s generic in the sense of having broad applicability or appeal.’’ Id. The Federal Circuit further pointed out its pre-KSR holding ‘‘that because such improvements are ‘technology independent,’ ‘universal,’ and ‘even common-sensical,’ ‘there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves.’ ’’ Id., quoting DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (emphasis added by the Federal Circuit in Intel). When formulating an obviousness rejection, the PTO may use any clearly articulated line of reasoning that would have allowed a PHOSITA to draw the conclusion that a claimed invention would have been obvious in view of the facts. MPEP 2143, subsection I, and MPEP 2144. Acknowledging that, in view of KSR, there are ‘‘many potential rationales that could make a modification or combination of prior art references obvious to a skilled artisan,’’ the Federal Circuit has also pointed to MPEP 2143, which provides several examples of rationales gleaned from KSR. Unwired Planet, 841 F.3d at 1003.
When considering the prior art in its entirety, note Allied Erecting v. Genesis Attachments, 825 F.3d 1373, 1381, 119 USPQ2d 1132, 1138 (Fed. Cir. 2016) ("Although modification of the movable blades may impede the quick change functionality disclosed by Caterpillar, ‘[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.’" (quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165, 77 USPQ2d 1865, 1870 (Fed Cir. 2006) (citation omitted))). However, "the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
In view of the 103 guidance above, claims 34-40 are rejected under 35 U.S.C. 103 as being unpatentable over IVIN et al. (US 4142671) or BRUNING (US 4460352) in view of {KLINTENSTEDT (US 2009/0137378) or HAGQVIST et al. (US 10940489) or KR 10-1223405 or DE 610987 or TW 201102170}.
IVIN et al. or BRUNING do not disclose the spacers or tabs oriented at the recited angles with respect to the disc. KLINTENSTEDT (US 2009/0137378) discloses an analogous separation disc 10 with spacers or tabs 10a oriented at angle to the disc; the disc further including cutouts at 30; HAGQVIST et al. (US 10940489) discloses an analogous separation disc 1 with spacers or tabs 3 oriented at angle to the disc; the disc further including cutouts at 5; KR 10-1223405 discloses an analogous separation disc 2 with spacers or tabs 3, 31 oriented at angle to the disc; DE 610987 discloses an analogous separation disc a with spacers or tabs b oriented at angle to the disc; and TW 201102170. discloses an analogous separation disc 2 with spacers or tabs 3, 31 oriented at angle to the disc.
It would have been obvious to one skilled in the art before the effective filing date of the invention to have modified the spacers or tabs on the separation discs of IVIN et al. or BRUNING as disclosed by KLINTENSTEDT (US 2009/0137378) or HAGQVIST et al. (US 10940489) or KR 10-1223405 or DE 610987 or TW 201102170 for the purposes of optimizing flow patterns within the centrifuge as a function of the substances being separated to provide effective segmentation of the flow within the stack of separation discs by virtue of the various angled spacers or tabs on the discs.
Furthermore, the prior art to IVIN et al. (US 4142671) or BRUNING (US 4460352) merely differs from the claimed device by the substitution of one design of a spacer or tab for another (spacers or tabs in the same plane as the axis of rotation or spacer or tabs oriented at an angle, thus out of the plane of the axis of rotation; the substituted components and their functions were known in the art as evidenced by the prior art; one of ordinary skill in the art could have readily substituted one known spacer or tab from a finite list of separation disc spacers or tabs for another as disclosed by the prior art; and the results of the substitution would have been wholly predictable and obvious since the substitution of one known spacer or tab from said finite list 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 optimizing flow patterns within the centrifuge as a function of the substances being separated to provide effective segmentation of the flow within the stack of separation discs by virtue of the various angled spacers or tabs on the discs (see KSR, supra).
Claim 42 is rejected under 35 U.S.C. 103 as being unpatentable over IVIN et al. (US 4142671) or BRUNING (US 4460352) in view of KONIG et al. (US 2014/0221187 A1).
IVIN et al. or BRUNING do not disclose the separation discs being formed of a metallic material. KONIG et al. teaches that such separation discs 3 employed in the centrifuge art are commonly formed of metal, thus it would have been obvious to one skilled in the art before the effective filing date of the invention to have formed the separation discs of IVIN et al. or BRUNING from metal as taught by KONIG et al. since metal is a preferred material for these discs per ¶ [0002], [0028]. Furthermore, 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 separation disc such as metal 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 or stronger material or a lower cost or more easily fabricated material.
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, such as a metallic material, for a specific application or structural member including a separation disc can unquestionably be determined by a PHOSITA by innate common sense, the common knowledge generally, or the common knowledge in the relevant art.
Allowable Subject Matter
No claims stand allowed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited prior art discloses separation discs for centrifuges. LEITCH ‘624 discloses a separation disc with drive notches “a”. Other cited references show angled spacer or tabs on separation discs and some discs including cutouts at the outer periphery of the discs.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CLAIRE X. WANG can be reached at 571-272-1700. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHARLES COOLEY/
Examiner, Art Unit 1774
DATED: 14 JULY 2026
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