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
Claims 1-16 appear to directed to an allowable product, save for a Non-Statutory Double Patenting Rejection laid out below to a which could be overcome by a Terminal Disclaimer. Pursuant to the procedures set forth in MPEP § 821.04(b), claims 17-20, directed to the process of making or using the allowable product, previously withdrawn from consideration as a result of a restriction requirement, are hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Because a claimed invention previously withdrawn from consideration under 37 CFR 1.142 has been rejoined, the restriction requirement among groups I and II as set forth in the Office Action mailed on October 1, 2025 is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
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 1-5, 9-13, and 17-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 8-12, and 15-18 of U.S. Patent No. US 12,385,500 (’500). Although the claims at issue are not identical, they are not patentably distinct from each other because the Claims if the Patent ‘500 are drawn to the same features as those of the Instant Application, save the Patent further explicitly requires the structure to be composed of two metals, i.e. a bi-metal heat exchanger. As such the ‘500 patent represents a narrower species of the broader genus of the Instant Application.
For the Table below, underline will be utilized to highlight the differences in claims while [Brackets] will be used to address those differences. Examiner will not underline/highlight differences in claim numbering where these reflect only minor differences based upon the claim sets, but depend from the appropriate relative claim in each tree.
Instant Application
‘500 Patent
(Claim 1) A journal bearing shaft, comprising:
a single monolithic body, the single monolithic body comprising:
a tie rod;
an end cap integrally connected to and extending radially outwardly from an end of the tie rod and defining openings;
a journal bearing interface portion integrally connected to and extending aft from a distal edge of the end cap; and
a heat exchanger integrally connected to and extending aft from an aft edge of the journal bearing interface portion and comprising an exterior body and heat exchange fins extending radially between the exterior body and the tie rod.
(Claim 1) A journal bearing shaft, comprising:
a single monolithic body, the single monolithic body comprising:
a tie rod;
an end cap integrally connected to and extending radially outwardly from an end of the tie rod and defining openings;
a journal bearing interface portion integrally connected to and extending aft from a distal edge of the end cap; and
a bi-metal heat exchanger integrally connected to and extending aft from an aft edge of the journal bearing interface portion and comprising an exterior body formed of a first material and heat exchange fins formed of a second material differing from the first material and extending radially between the exterior body and the tie rod. [As noted under ¶5 above, this is a more specific example, that is contained in the broader structure absent a recitation of the bi-metal structure.]
(Claim 2) The journal bearing shaft according to claim 1, wherein a length of the tie rod exceeds a total length of the journal bearing interface portion and the heat exchanger.
(Claim 2) The journal bearing shaft according to claim 1, wherein a length of the tie rod exceeds a total length of the journal bearing interface portion and the bi-metal heat exchanger. [See Claim 1.]
(Claim 3) The journal bearing shaft according to claim 1, wherein the end cap comprises:
an inboard end cap portion, which extends radially outwardly from the end of the tie rod; and
an outboard end cap portion, which extends radially outwardly and aft from a distal edge of the inboard end cap portion.
(Claim 3) The journal bearing shaft according to claim 1, wherein the end cap comprises:
an inboard end cap portion, which extends radially outwardly from the end of the tie rod; and
an outboard end cap portion, which extends radially outwardly and aft from a distal edge of the inboard end cap portion.
(Claim 4) The journal bearing shaft according to claim 1, wherein the journal bearing interface portion and the heat exchanger are coaxial with the tie rod.
(Claim 4) The journal bearing shaft according to claim 1, wherein the journal bearing interface portion and the bi-metal heat exchanger are coaxial with the tie rod. [See Claim 1]
(Claim 5) The journal bearing shaft according to claim 1, wherein an interior diameter of the heat exchanger is smaller than an interior diameter of the journal bearing interface portion.
(Claim 5) The journal bearing shaft according to claim 1, wherein an interior diameter of the bi-metal heat exchanger is smaller than an interior diameter of the journal bearing interface portion. [See Claim 1]
(Claim 9) A ram air fan assembly, comprising:
a fan rotor to move air from a fan inlet to a fan outlet; and
a journal bearing shaft disposed as a single monolithic body within the fan rotor and defining a flow path for cooling air,
the single monolithic body comprising:
a tie rod;
an end cap integrally connected to and extending radially outwardly from an end of the tie rod and defining openings;
a journal bearing interface portion integrally connected to and extending aft from a distal edge of the end cap; and
a heat exchanger integrally connected to and extending aft from an aft edge of the journal bearing interface portion and comprising an exterior body and heat exchange fins extending radially between the exterior body and the tie rod.
(Claim 8) A ram air fan assembly, comprising:
a fan rotor to move air from a fan inlet to a fan outlet; and
a journal bearing shaft disposed as a single monolithic body within the fan rotor and defining a flow path for cooling air,
the single monolithic body comprising:
a tie rod;
an end cap integrally connected to and extending radially outwardly from an end of the tie rod and defining openings;
a journal bearing interface portion integrally connected to and extending aft from a distal edge of the end cap; and
a bi-metal heat exchanger integrally connected to and extending aft from an aft edge of the journal bearing interface portion and comprising an exterior body formed of a first material and heat exchange fins formed of a second material differing from the first material and extending radially between the exterior body and the tie rod. [See Claim 1]
(Claim 10) The ram air fan assembly according to claim 9, wherein a length of the tie rod exceeds a total length of the journal bearing interface portion and the heat exchanger.
(Claim 9) The ram air fan assembly according to claim 8, wherein a length of the tie rod exceeds a total length of the journal bearing interface portion and the bi-metal heat exchanger. [See Claim 1]
(Claim 11) The ram air fan assembly according to claim 9, wherein the end cap comprises:
an inboard end cap portion, which extends radially outwardly from the end of the tie rod; and
an outboard end cap portion, which extends radially outwardly and aft from a distal edge of the inboard end cap portion.
(Claim 10) The ram air fan assembly according to claim 8, wherein the end cap comprises:
an inboard end cap portion, which extends radially outwardly from the end of the tie rod; and
an outboard end cap portion, which extends radially outwardly and aft from a distal edge of the inboard end cap portion.
(Claim 12) The ram air fan assembly according to claim 9, wherein the journal bearing interface portion and the heat exchanger are coaxial with the tie rod.
(Claim 11) The ram air fan assembly according to claim 8, wherein the journal bearing interface portion and the bi-metal heat exchanger are coaxial with the tie rod. [See Claim 1]
(Claim 17) A method of additively manufacturing a journal bearing shaft as a single monolithic body, the method comprising:
building up a first tie rod portion;
simultaneously building up a second tie rod portion from the first tie rod portion and a heat exchanger about the second tie rod portion to comprise an exterior body and heat exchange fins extending radially between the second tie rod portion and the exterior body;
simultaneously building up a third tie rod portion from the second tie rod portion and a journal bearing interface portion from the heat exchange portion and about the third tie rod portion; and
simultaneously building up an end of the tie rod from the third tie rod portion and an end cap from the journal bearing interface portion to connect with the end of the tie rod.
(Claim 15) A method of additively manufacturing a journal bearing shaft as a single monolithic body with a bi-metal construction, the method comprising:
building up a first tie rod portion; simultaneously building up a second tie rod portion from the first tie rod portion and a bi- metal heat exchanger about the second tie rod portion to comprise an exterior body formed of a first material and heat exchange fins formed of a second material differing from the first material and extending radially between the second tie rod portion and the exterior body;
simultaneously building up a third tie rod portion from the second tie rod portion and a journal bearing interface portion from the bi-metal heat exchange portion and about the third tie rod portion; and
simultaneously building up an end of the tie rod from the third tie rod portion and an end cap from the journal bearing interface portion to connect with the end of the tie rod. [See Claim 1]
(Claim 18) The method according to claim 17, wherein the building up of the end cap comprises:
building up an inboard end cap portion to extend radially outwardly from the end of the tie rod; and
building up an outboard end cap portion from the journal bearing interface portion to extend radially outwardly and aft from a distal edge of the inboard end cap portion.
(Claim 16) The method according to claim 15, wherein the building up of the end cap comprises:
building up an inboard end cap portion to extend radially outwardly from the end of the tie rod; and
building up an outboard end cap portion from the journal bearing interface portion to extend radially outwardly and aft from a distal edge of the inboard end cap portion.
(Claim 19) The method according to claim 17, wherein:
the building up of the heat exchanger and the second tie rod portion is executed such that the heat exchanger and the second tie rod portion are coaxial, and
the building up of the journal bearing interface portion and the third tie rod portion are executed such that the journal bearing interface portion and the third tie rod portion are coaxial.
(Claim 17) The method according to claim 15, wherein:
the building up of the bi-metal heat exchanger and the second tie rod portion is executed such that the bi-metal heat exchanger and the second tie rod portion are coaxial, and
the building up of the journal bearing interface portion and the third tie rod portion are executed such that the journal bearing interface portion and the third tie rod portion are coaxial. [See Claim 1]
(Claim 20) The method according to claim 17, wherein the building up of the heat exchanger and the journal bearing interface portion are executed such that an interior diameter of the heat exchanger is smaller than an interior diameter of the journal bearing interface portion.
(Claim18) The method according to claim 15, wherein the building up of the bi- metal heat exchanger and the journal bearing interface portion are executed such that an interior diameter of the bi-metal heat exchanger is smaller than an interior diameter of the journal bearing interface portion. [See Claim 1]
Claims 6-8 and 14-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8 of U.S. Patent No. 12,385,500 [‘500) in view of CA 2,782,992 to Self (S1) and GB 1,032,990 to Domenjoud (D1).
Examiner will make the rejection against claim 6, but not it stands as common and applied equally to each of claims 7-8 and 14-16 as well, given the number (24) in claims 6 and 14, are in the ranges of the remaining claims 7-8, and 15-16, and Claim 14 would be equally rejectable with the appropriate citations to the additional features of claim 8 found under the Table above.
‘500 teaches The journal bearing shaft according to claim 1 (or 8) wherein there is a heat exchanger with a number of fins. [See Table above.]
‘500 claims are silent as to the number of fins of said tubular heat exchanger. [Examiner notes said heat exchangers are tubular as they represent fins extending between a outer journal bearing interface which is cylindrical and an inner cylindrical tie rod and the claims require the fins extend between.]
S1 teaches:
When using tubular heat exchangers with integral(single monolithic body fins) extending between them [Abstract], the purpose of the fins are to extend the area for heat transfer, and the number, height, and width of the fins control for this. Ideally such a number of internal fins is the maximum number that the diameter of the tube can accommodate and still accomplish the greatest amount of heat transfer in the shortest distance practicable without inhibiting the flow. [ Page 4, ll. 14-21.] Therefore, the number of fins is a results-effective variable based upon the desired heat transfer in the distance and diameter without inhibiting flow to much. Thus the number of fins, meet the requirement of a results effective variable In re Antonie, 559 F.2d 618 (CCPA 1977), MPEP § 2144.05(II)(B).
D1 teaches:
A known tubular heat exchanger of conventional design (Fig. 1) would recognize 24 fins as a workable (Count number in Fig. 1) number for a tubular heat exchanger capable of allowing heat exchange and gas interface. Page 2, ll. 15-17 denotes the tubular conventional cross-section.
Based on the teachings above that the number of fins in a tubular heat exchanger is a result effective variable based on the desired heat transfer in the area without disrupting flow to significantly, and a number of 24 is recognized in the tubular heat exchangers conventional as a number of fins capable of operating for heat exchange, it would have been obvious to one with ordinary skill, in the art at the time the invention to design the heat exchanger of ‘500 to have 24 fins. It has been held that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), MPEP §2144.05(II)(A). This would yield the limitation of 24 fins, meeting claims 6-7 and 14-16 of the instant applications.
Examiner Note of Potential Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended or a Terminal Disclaimer was filed so as to overcome the Double Patenting Rejections set forth in this Office action.
The closest prior art to that of Applicant is that of US 8,672,768 to Colson, which shows a tube(26) which includes journal elements, a cap(21), a heat exchanger (Fig. 2, 61) about a tie rod(83). This is distinguished from that of Applicant; however, in that the tie rod is not integral with the other elements, and would not be, given the tie rod is intended to be removable, and installed last, explicitly for preloading the tension on all the components in the motor. (Col. 2, ll. 4-46.) As this tie rod places pressure on the end caps, one of ordinary skill would not presume to make the end cap and tie rod monolithic as in the instant Application.
Additional prior art of note:
US 3,149,819 to Hans discloses a rotating element for a rotor device having an impeller (1) with a shaft (2), cooling holes (9) that are adjacent to a bearing arrangement (3), and inside of the shaft is a heat exchanger integrally connected to the shaft, the heat exchanger element (8) comprising a plurality of heat exchange fins (12) extending radially internal of the shaft.
US 5,102,305 to Bescoby discloses a rotating element for a rotor device having an impeller (22) with a tie rod (12) and a bearing runner (16) circumventing the tie rod and a fluid bearing (34) external to the rotating element, the bearing runner comprising a plurality of radially inward extending heat exchange fins (14) which are integrally attached to the bearing runner and the tie rod.
US 7,267,523 to Saville discloses a rotating element for a rotor device having an impeller (12) with a shaft (16) comprising a tie rod (34), and a heat conducting sleeve (30) that is separated from the tie rod by a heat insulator (52) disposed therebetween. The sleeve includes a bearing thrust disk (66).
US 8,729,751 to Telakowski teaches a ram air fan assembly with a heat transfer assembly for the electric motor. The ram air fan assembly includes a tie rod (33), shaft (26A, 26B), integral fin structure (44) attached to the shaft, bearing assemblies (32A, 32B), and an aft end cap (42A) attached to the tie rod.
However, while all of these above pieces in the prior arts disclose the invention in bits and pieces and even within the same concept, they do not teach or disclose forming the structure as “a single monolithic body” that comprises all of these elements.
US 2007/0018516 to Pal disclose several of the embodiments, above, but critically, the heat exchanger fins extend inward, but not fully between the elements, thus lacking the contact, would not be formed as a single monolithic element extend between the inner and outer radii.
While art exists for making elements additively manufactured as one piece such as with US 2022/0194600 to Army, these teachings do not overcome the prior arts teaching’s against or absence of the elements already being a single monolithic body.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA R BEEBE whose telephone number is (571)272-9968. The examiner can normally be reached M-F 10-6.
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/JOSHUA R BEEBE/Examiner, Art Unit 3745
/NATHANIEL E WIEHE/Supervisory Patent Examiner, Art Unit 3745