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 with traverse of Species V, drawn to claims 1-7, 10, 11, 13-16, 19 and 20, in the reply filed on 24 March 2026 is acknowledged. The traversal is on the ground(s) that Species II-IV appear to be generic to each of the other identified species. This is not found persuasive because Applicant’s disclosure describes each of the species embodiments separately in a manner that does not reasonably convey how the different and distinct rotor, axle and end cover configurations would be combinable. To this point, there is no explicit disclosure indicating how the Species V embodiment, with the bearing surfaces formed on the radially extending surfaces of the axially displaceable end covers via a spring arrangement, would be combinable with the other species embodiments due to their distinct rotor, axle and/or end cover surface configurations. For example, fixed end cover structures could not be used with the spring-biased end covers of Species V that allow the end covers to translate. Regardless, a search of each species separately requires searching for different rotor, axle and/or end cover designs with bearing surfaces arranged radially or axially with respect to the rotor and axle vice the radially extending surfaces of the end cover(s) of species V, presenting serious search and examination burden.
The requirement is still deemed proper and is therefore made FINAL.
Claims 8, 9, 12, 17 and 18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed 24 March 2026.
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 13 and 16 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.
In claim 13, the limitation, “supplying the fluid to a radially innermost recess of the one or more recesses, the radially innermost recess comprising a channel having a lateral length that is greater than adjacent recesses of the one or more recesses” is indefinite because it is not clear how radially innermost recesses are arranged on the previously recited axially extending bearing surfaces defined in claim 11 because the axially extending surfaces are at the same radial distance from a center axis of the device. That is, this subject matter appears to be directed to the embodiment depicted in FIG. 3 which is formed on radially extending bearing surfaces located at axial end faces of the rotor or end cover NOT the axially extending bearing surfaces claimed.1 Therefore, the metes and bounds the claim cannot be reasonably ascertained. Due to this issue, interpretation for examination purposes is precluded2. Clarification and correction is required.
In claim 16, “the channel” lacks sufficient antecedent basis in the claims because a channel has not been previously recited in claim 14 from which this claim depends rendering the scope of the claim subject to uncertainty. Claim 15 does recite a channel indicating that this is likely a dependency issue. For examination, this claim will be interpreted as depending upon claim 15. Correction is required.
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.
Claims 1-7, 10, 11, 13-16, 19 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,018,701 (‘701). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims common identical subject matter.3
As to claim 1 of the instant application, this is a broader version of claim 16 of the ‘701 patent, reciting identical subject matter. If issued, this claim would be fully anticipated by the patented claim.
As to claims 2 and 3, this claim is covered by the subject matter recited in claim 19 of the ‘701 patent.
As to claims 4-6, these claims are covered by or otherwise inherent over claim 16 of the ‘701 patent.
As to claim 7, this claim is covered by claim 20 of the ‘701 patent.
As to claim 10, this claim is covered by claim 17 of the ‘701 patent.
As to claim 11 of the instant application, this is a broader version of claim 16 of the ‘701 patent, reciting substantially identical subject matter. The instant application generically recites “recesses” whereas the patent recites “micro-recesses,” a species of the generic recitation. If issued, this claim 1 would be fully anticipated by the patented claims.
As to claim 13, this claim is covered by claim 16 of the ‘701 patent.
As to claim 14 of the instant application, this is a broader version of claims 1 or 13 of the ‘701 patent, reciting identical subject matter. If issued, this claim would be fully anticipated by the patented claims.
As to claims 15 and 16, this claim is covered by claim 13 of the ‘701 patent.
As to claim 19, this claim is covered by claim 1 of the ‘701 patent.
As to claim 20, this claim is covered by claim 1 of the ‘701 patent.
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 14 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thatte et al. (U. S. Patent Application Publication No. 2020/0141444).
Regarding claim 14, Thatte et al. discloses a device including one or more hydraulic bearings (FIG.’s 1-24, Abstract, multiple hydraulic bearing 12 surface configurations disclosed), the device comprising:
a first element 30 comprising a stator 30 (FIG. 1, para. 0045, end cover 30);
a second element 44 comprising a rotor 44 Id., being movable relative to the first element 30, the first element 30 and the second element 44 defining a gap 29 (Id., axial gaps 29) between the first element 30 and the second element 44, the gap 29 configured to receive a fluid in the gap when the second element 44 is being moved relative to the first element 30 (Id., “[a]n axial bearing region 28, includes axial gaps 29 (e.g., few tens of microns) between the rotor 44 and the end covers 30 … [t]he high pressure bearing fluid introduced into the plenum region 22 may be configured to support the rotor 44 on a fluid film and may be configured to facilitate the rotation of the rotor 44”) and
bearing surfaces 12 Id., defined by the first element 30 and the second element 44 on opposing sides of the gap 29 (as shown, end surfaces of rotor 44 and end cover 30 form bearing surfaces), at least one of the bearing surfaces comprising a varying topography of one or more recesses 154, 164, 166, 168 (FIG. 8, para. 0057, spiral groove 154, dam portions 164, 166 form recited recesses under broadest reasonable interpretation of the terms) to provide pressurized volumes of the fluid in order to define a hydraulic bearing to support at least one of the first element 30 or the second element 44 as the second element 44 is being moved relative to the first element 30, (para. 0045, as described, during normal operation load on the rotor produce axial movement accordingly).
Claim Rejections - 35 USC § 103
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.
Claims 1, 4, 6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Thatte et al. (U. S. Patent Application Publication No. 2020/0141444).
As to claim 1, Thatte inherently discloses a method of forming a hydraulic bearing (FIG.’s 1-24, Abstract, multiple bearing surface 12 configuration disclosed)4, the method comprising:
rotating a rotor 44 (FIG. 1, para. 0045) about an axis of a device 20 (Id., pressure exchanger PX system);
directing a fluid into an interface 12 (Id., hydrodynamic-hydrostatic beating system) between the rotor 44 and another component of the device 30 (para. 0045, end cover 30);
displacing bearing surfaces at the interface 12 relative to one another (due to normal operation, rotor 44 and end cover 30 bearing surfaces subject to load producing small relative movement), the bearing surfaces defined by the rotor 44 and an axially extending surface or radially extending surface of the another component 30, Id.; and
supplying the fluid in the interface 12 to at least one of the bearing surfaces (para. 0045, “high pressure process fluids (e.g., first fluid and/or second fluid) may act as the bearing fluid and be utilized for axial load bearing”) to at least one of the bearing surfaces (either one or both axial ends of rotor 44 and/or end cover 30) comprising a varying topography of one or more recesses 154, 154, 164, 166, 168 (FIG. 8, para. 0057, spiral groove 154, dam portions 164, 166 form recited recesses under broadest reasonable interpretation of the terms) in order to define a hydraulic bearing to support the rotor, Id.
Thatte is silent as to the recesses being micro-recesses. However, Thatte teaches that recess size can be tuned to change the pressure profile and force(s) generated by the recess features supporting the rotor during operation indicating that recess size is a result effective parameter that affects the hydrodynamic force generated by the features for supporting the rotor during operation (para. 0057, “groove design features (e.g. spiral angle of the grooves, dam to land ratio, pitch of the grooves, depth of the grooves etc.) can be optimized to fine tune the magnitude of this pressure spike and hence the magnitude of the resisting force generated by the grooves”). With this in mind, one having ordinary skill in the art would recognize that recess size is a routine optimization. Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the instant application to modify Thatte, forming its recesses as micro-recesses, in order to optimize the hydrodynamic bearing force(s) generated for supporting the rotor as indicated by Thatte Id., since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering optimum or workable ranges involves only routine skill in the art. In re Aller, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II).
As to claim 4, Thatte further discloses supplying the fluid into a channel 154, 160 (para. 0056, “[a] second set 160 of grooves 154 (e.g., outward pumping grooves)”) defined in at least one of the bearing surfaces 12; and carrying a load generated by rotation of the rotor 44 with the channel 154, 160 and/or promoting pumping of the fluid with the channel 154, 160, Id.
As to claim 6, Thatte further discloses passing the fluid to the channel 154, 160 that is located radially inward of each of the one or more micro-recesses 166, 168 (upon modification, grooves 154, 160 radially inward of recessed formed by grooves 154 as shown in FIG. 8).
As to claim 10, once modified, Thatte further teaches defining at least one of a hydrodynamic bearing or a hydrostatic bearing 12 with the varying topography of the one or more micro-recesses (para. 0045, the recesses on the bearing surfaces function to form such a bearing).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Thatte et al. (U. S. Patent Application Publication No. 2020/0141444) in view of Hauge (U. S. Patent No. 10,125,796).
As to claim 7, Thatte is discussed above but is silent as to rotating the rotor about an axle, the axle defining a bearing surface of the bearing surfaces. In this regard, Hauge teaches a rotary pressure exchanger having a rotor supported by axle 7, 11 forming a hydrodynamic bearing surface (FIG. 7, col. 5, ll. 40-65, “[t]he outer surface of axle 11 between manifolds 12 and 14 may serve as a large hydrodynamic bearing surface when the pressure exchanger is in operation”). With this in mind, it would have been obvious to one having ordinary skill in the art before the effective filing date of the instant application to adapt Thatte’s rotor with an axle to provide increased radial support of the rotor for handling greater operational loads as demonstrated by Hauge.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Thatte et al. (U. S. Patent Application Publication No. 2020/0141444) in view of Nanbu et al. (U. S. Patent Application Publication No. 2005/0175263).
As to claim 11, Thatte inherently discloses a method of forming a hydraulic bearing (FIG.’s 1-24, Abstract, multiple bearing surface 12 configuration disclosed)5, the method comprising:
rotating a rotor 44 (FIG. 1, para. 0045) about an axis of a device 20 (Id., pressure exchanger PX system 20);
directing a fluid into an interface 22, 26, 24 (Id., hydrodynamic-hydrostatic beating system formed in radial gap 26 plenum region 22 and sleeve 24 supporting rotor 44) between the rotor 44 and another component of the device 24 (para. 0045, sleeve 24);
moving bearing surfaces at the interface 22, 26, 24 relative to one another (due to normal operation, rotor 44 and sleeve 24 surfaces subject to load producing small relative movement), the bearing surfaces defined by the rotor 44 and an axially extending surface (outer surfaces of rotor 44 and inner sleeve 24 surfaces forming radial gap 26, each forming an axially extending surface) of the another component 24; and
supplying the fluid in the interface 22, 26, 24 to at least one of the bearing surfaces (para. 0045, components are immersed in fluid).
Thatte is silent as to providing a varying topography of one or more recesses defined by the rotor and axially extended surfaces that define a hydraulic bearing to support the rotor. To this point, Nanbu teaches a rotor system 210 supported by a hydrodynamic bearing with a varying topography of one or more recesses 210a (FIG.’s 10-11A/B, para. 0064, inter alia). The recesses are defined by the rotor and arranged on axially extending bearing surfaces in the manner claimed. With this in mind, it would have been obvious to one having ordinary skill in the art before the effective filing date of the instant application to provide a varying topography of recesses on bearing surfaces formed by either the rotor or sleeve in order to decrease sliding friction between the bearing surfaces as taught by Nanbu, Id.
Allowable Subject Matter
Claims 2, 3, 5, 15, 19 and 20 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims provided that the nonstatutory double patenting rejections are overcome.
Claim 16 would be allowable if rewritten to overcome the rejection(s) 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 provided that the nonstatutory double patenting rejections are overcome.
The following is a statement of reasons for the indication of allowable subject matter:
With respect to claims 2 or 19, and dependents, the prior art of record either alone or in combination does not teach or fairly suggest the method of claim 1 or the device of claim 14, and further where the another component or portion of the stator moves axially to increase an axial dimension between the components in the manner claimed.
With respect to claims 5 or 15, and dependents, the prior art of record either alone or in combination does not teach or fairly suggest the method of claim 1 or the device of claim 14, and further with the channel having a flow path or lateral length that is greater than adjacent recesses of the one or more recesses.
The available prior art does not contemplate axially movable pressure exchanger end covers or the claimed channel and recesses configuration. It is the Examiner’s opinion that modifying the applied art would not be reasonably foreseeable without benefit of the disclosure of the instant invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH J HANSEN whose telephone number is (571)272-6780. The examiner can normally be reached Monday Friday 7:00 AM to 4:00 PM (MT).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Laurenzi can be reached at (571) 270-7878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KENNETH J HANSEN/Primary Examiner, Art Unit 3746
1 Applicant’s specification describes this subject matter at para. 0059 as follows: “In some embodiments, the bearing surface 300 may comprise a portion of one or more of the radially aligned bearing surfaces 122, 124 discussed above in relation to FIG. 1. As depicted, the bearing surface 300 may be defined on an axial face and may include recesses 302, each with tapered surfaces 304, where the recesses 302 may be curved to align with a direction of rotation about a diameter of the pressure exchange device 100 (e.g., arcuate recesses 302).”
2 A prior art rejection of this claim is not being presented. However, the claim is covered by the issued patent and subject to nonstatutory double patenting rejections due to how the patented independent claim was presented.
3 This application is a divisional (DIV) of the parent claims in the issued patent. Due to the broader scope of the currently presented claims and the fact that the instant application and parent application were both restricted to the species depicted in FIG. 7, the instant application is subject to nonstatutory double patenting rejections. This is because Applicant has not elected to pursue examination on the other identified species in a manner that would preclude double patenting issues.
4 Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. In re King, 231 USPQ 136 (Fed. Cir. 1986)
5 Ibid.
Prosecution Insights