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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-27) and Species 1 (Figures 1-7) in the reply filed on 13 March 2026 is acknowledged. Examiner notes that Figure 8 is directed at a second embodiment of the separator device, as discussed in paragraph [0053], and thus Examiner’s grouping of Figures 1-7 is maintained.
Claims 16-17, 20, 23-26,,28-32, and 33-37 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group and/or Species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 13 March 2026.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it includes legal phraseology, i.e. “means”. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claim 1 is objected to because of the following informalities: “is arranged” appears to be in error as “is” does not agree with “comprising”. Appropriate correction is required.
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.
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 1-15, 18-19, 21-22, and 27 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
Regarding claim 1, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Additionally, claim 1 recites the limitation “on opposite sizes with respect to the central axis (Z)”. This limitation is not understood, as upper and lower are opposite with respect to each other and both regions extend about the central axis. Claims 2-15, 18-19, 21-22, and 27 are rejected insofar as they are dependent on claim 1 and therefore include the same error(s).
Claims 4-5 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “substantially” in claims 4-5 is a relative term which renders the claim indefinite. The term “substantially” 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. To expedite prosecution, any degree of substantiality will be considered to meet “substantially”.
Claim 8 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8 recites the limitation “the chamber ceiling”. There is insufficient antecedent basis for this limitation in the claim. It appears claim 8 should depend from claim 7.
Claim 9 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 9 recites the limitation “the chamber ceiling”. There is insufficient antecedent basis for this limitation in the claim. It appears claim 9 should depend from claim 7. Additionally, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 11-12 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 11 recites the limitation “the side”. There is insufficient antecedent basis for this limitation in the claims. It has been interpreted as “a side”. Claim 12 is rejected insofar as it is dependent on claim 11 and therefore includes the same error(s).
Claim 15 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 15 recites the limitation “the free end”. There is insufficient antecedent basis for this limitation in the claim. It has been interpreted as “a free end”. Additionally, the term “approximating” in claim 15 is a relative term which renders the claim indefinite. The term “approximating” 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. To expedite prosecution, any degree of approximation will be considered to meet the claim.
Claim 19 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 19 recites the limitation “the shape”. There is insufficient antecedent basis for this limitation in the claim. It has been interpreted as “a shape”.
Claim 27 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 27, the phrases "preferably" and “in particular” render the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
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 (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 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.
Claim(s) 1-3, 5-15, 18-19, 21, 22, and 27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yokoyama et al. (WO 2021/131048: corresponding US publication US 2022/0404078 cited as English Translation).
Regarding claim 1, Yokoyama et al. shows a separator device (1), in particular a lubricating-medium separator device, for separating a liquid phase (L) from a mixture having a gaseous phase (G) of at least one medium (M) [see at least gas liquid separation device #10; paragraph [0036]], comprising
- a housing (10) which forms a cyclone chamber (20), is arranged along a central axis (Z), and has an upper end region (11) and a lower end region (12) on opposite sides with respect to the central axis (Z) [see at least device #10 having upper end @#12 and lower end @#11 extending opposite each other about a central axis #CL],
- an immersion tube(40) [see at least tube #14], and
- flow guiding means (28) for forming a helical flow in the cyclone chamber (20) around the central axis (Z) [see at least vane(s) #15],
- wherein provided in the upper end region (11) is an inlet (21) into the cyclone chamber (20) for the mixture [see at least inlet @#12a] and provided in the lower end region (12) is a first outlet (22) for the gaseous phase (G) of the at least one medium (M) [see at least @#14] and a second outlet (23) for the separated liquid phase (L) of the at least one medium (M) [see at least @#13a],
- wherein the immersion tube (40) projects from the lower end region (12) in the central axis (Z) into the cyclone chamber (20) and is fluidly connected to the first outlet (22) and forms a first sink (50) between the housing (10) and the immersion tube (40) [see at least tube #14 projecting up from the outlet to #14a and forming a sink @#200], and
- wherein the separated liquid phase (L) of the at least one medium (M) can flow out of the first sink (50) in the lower end region (22) through the second outlet (23) [see at least via tube #13].
Regarding claim 2, Yokoyama et al. further shows characterized in that the cyclone chamber (20) has a circular cross section [see at least Figures 3 and 4, which show the circular cross-section].
Regarding claim 3, Yokoyama et al. further shows characterized in that the flow guiding means (28) are formed by the inlet (21), and in that the inlet (21) is arranged tangentially or at a secant to the cyclone chamber (20) in relation to the central axis (Z) [see at least swirl vane(s) #15 are tangential and/or secant to the chamber].
Regarding claim 5, Yokoyama et al. further shows characterized in that the inlet (21) is substantially polygonal or rectangular in cross section [see at least inlet @#12a has a rectangular cross section when viewed from the side].
Regarding claim 6, Yokoyama et al. further shows characterized in that the inlet (21) has means for adjusting a flow cross section [see at least screen #16 and/or curved section of #12a, best seen in Figure 2].
Regarding claim 7, Yokoyama et al. further shows characterized in that in the upper end region (11) the cyclone chamber (20) is closed by a chamber ceiling (16) [see at least curved portion extending between #15a and #12a, at least partially enclosing the chamber about the inlet].
Regarding claim 8, Yokoyama et al. further shows characterized in that the inlet (21) opens flush with the chamber ceiling (16) and/or with an outer wall (14) in the cyclone chamber (20) [see at least Figure 2, the inlet @#12a opens flush with the curved portion extending between #15a and #12a].
Regarding claim 9, Yokoyama et al. further shows characterized in that the chamber ceiling (16) slopes downward starting from the inlet (21) in the direction of the lower end region (12), in particular in that the chamber ceiling (16) slopes downward in a circulating manner around the central axis (Z) starting from the inlet (21) in the direction of the lower end region (12) [see at least curved portion extending between #15a and #12a, at least partially enclosing the chamber about the inlet in a circular manner; c.f. Figure 3 and 4].
Regarding claim 10, Yokoyama et al. further shows characterized in that a core (60) projects parallel to the central axis (Z) from the upper end region (11) into the cyclone chamber (20) [see at least paragraph [0050]: vane(s) #15 have core(s) parallel to the central axis #CL].
Regarding claim 11, Yokoyama et al. further shows characterized in that the core (60) comprises a head (65), and in that the head (65) is arranged, in relation to the central axis (Z), on the side of the inlet (21) facing the lower end region (12) [see at least terminal portion #15b of vane(s) #15].
Regarding claim 12, Yokoyama et al. further shows characterized in that a cross- sectional area of the head (65) is larger than a cross-sectional area of the immersion tube (40) which is connected to the first outlet (22) [see at least terminal end #15b is larger than the tube #14].
Regarding claim 13, Yokoyama et al. further shows characterized in that the core (60) comprises at least one collar (66) having a drip edge (67) [see at least projections #15b2, which will form a drip edge collar about the terminal end #15b of the vane(s) #15].
Regarding claim 14, Yokoyama et al. further shows characterized in that the core (60) is capable of vibration and/or at least partially has a coating capable of vibration (see at least vane(s) #15 are presumed capable of vibration in view that the structure corresponds to that claimed].
Regarding claim 15, Yokoyama et al. further shows characterized in that the free end (61) of the core (60) is conical or has a tapering shape approximating an ellipse [see at least #15b3, which will form a conical shape at the base of terminal end #15b].
Regarding claim 18, Yokoyama et al. further shows characterized in that the immersion tube (40) has at least one immersion tube collar (42) [see at least tip of #14a, which forms a recessed collar about the end of the tube #14].
Regarding claim 19, Yokoyama et al. further shows characterized in that the immersion tube collar (42) has a drip edge which projects in the shape of an umbrella [see at least tip of #14a which projects inward to form a drip edge with an umbrella shape].
Regarding claim 21, Yokoyama et al. further shows characterized in that the second outlet (23) opens into a collection container (30) [see at least paragraph [0045]: oil returning pipe #20 may be considered a collection container].
Regarding claim 22, Yokoyama et al. further shows characterized in that the first outlet (22) comprises second flow guiding means (29) for axially orienting the helical flow coming from the cyclone chamber (20) [see at least Figure 14, the transition from #141 to #142 of #14 will allow the flow to axially expand as it exits through the outlet].
Regarding claim 27, Yokoyama et al. further shows characterized in that the at least one medium (M) is a first medium (M1), preferably a refrigerating medium, in particular R134a [see at least paragraph [0046]], and/or a second medium (M2), preferably a lubricating medium, in particular oil [see at least paragraph [0045]].
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.
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) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yokoyama et al. (WO 2021/131048: corresponding US publication US 2022/0404078 cited as English Translation).
Regarding claim 4, Yokoyama et al. does not disclose characterized in that the inlet (21) flows the mixture into the cyclone chamber (20) at a substantially perpendicular orientation to the central axis (Z).
There is no evidence of record that establishes that providing the device of Yokoyama et al. characterized in that the inlet (21) flows the mixture into the cyclone chamber (20) at a substantially perpendicular orientation to the central axis (Z) would result in a difference in function of the Yokoyama et al. device. Further, a person having ordinary skill in the art, being faced with modifying the device of Yokoyama et al., would have reasonable expectation of success in making such a modification and it appears that the device would function as intended being given the claimed alignment. Lastly, Applicant has not disclosed that the claimed alignment solves any stated problem, indicating that “preferably” “tangentially and approximately perpendicular”, and therefore there appears to be no criticality placed on the alignment as claimed such that it produces an unexpected result.
It would, therefore, have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide the device of Yokoyama et al. with a characterized in that the inlet (21) flows the mixture into the cyclone chamber (20) at a substantially perpendicular orientation to the central axis (Z) as an obvious matter of design choice within the skill of the art (see also In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAVIA SULLENS whose telephone number is (571)272-3749. The examiner can normally be reached M-R 6:30-4:30 Eastern.
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/TAVIA SULLENS/Primary Examiner, Art Unit 3763
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