FINAL ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments filed 25 November 2025 have been fully considered but they are not persuasive.
In response to Applicant’s argument that “[t]he Office Action does not show that there is a gap between the end of a spacing member 4a on separation disc 1a and surface of separation disc 1b. It is respectfully asserted that the Nilsson et al. reference does not teach a gap between the end of a spacing member 4a on separation disc 1a and surface of separation disc 1b” (page 14, Remarks), the examiner notes that, as stated in the previous Office action, Nilsson “does not disclose wherein each of the plurality of discrete, flow interference members has an end adjacent to the first radially extending surface and forms a gap between the end and the first radially extending surface” (page 6, 25 September 2025 Office action). Borgström is relied upon to teach this feature.
Applicant argues that the spacing members of Nilsson provide interspaces between mutually adjacent separation discs and that the interspaces are not product stream pathways (page 15, Remarks). The examiner notes that the claim does not limit the first and second radially extending surfaces to any particular components of the centrifuge. Under the broadest reasonable interpretation consistent with the specification, the recited “space between a first radially extending surface and a second radially extending surface” reasonably encompasses the space between adjacent separation discs of a disc stack centrifuge.
Applicant argues that Borgström “advises the skilled worker to include them in the interspaces between separation disks to help separate a dispersed substance in a dispersion” and “advices the skilled worker that the flow influencing members will not cause turbulence” (page 16, Remarks). This argument is not persuasive because the claims do not require turbulent flow. The recited limitation “to disrupt the flow” broadly encompasses modifying, influencing, or disturbing the flow pattern. Borgström expressly teaches that the flow influencing members cause a substantially larger friction resistance for the geostrophic flow along said upper side than a smooth surface would (col. 4 lines 26-29, Borgström). Such alteration of the flow constitutes disruption of the flow. Therefore Borgström teaches modifying the flow pattern using protruding members and does not teach away from the claimed invention.
The rejection over Nilsson in view of Borgström is therefore still deemed valid and is maintained.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Terminal Disclaimer
Applicant states in the remarks that an e-terminal disclaimer has been filed with respect to U.S. Patent No. 12,059,691. However, a review of the application file does not show a terminal disclaimer having been entered in this application. Accordingly, the nonstatutory double patenting rejection of claims 25-29 is maintained.
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 25-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 13 and 29 of U.S. Patent No. 12,059,691. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims are generic to the patented claims.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 25, 37 and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Nilsson et al. (U.S. Patent Application Pub. No. 2019/0262843, hereinafter Nilsson) in view of Borgström et al. (U.S. Patent No. 4,861,329, hereinafter Borgström).
Regarding claim 25, Nilsson discloses a centrifuge (Fig. 1) having a central axis of rotation, wherein the centrifuge comprises: a bowl portion (centrifuge rotor 1, Fig. 1) comprising: at least one feed stream inlet (inlet tube 7, Fig. 1) and at least a first product stream outlet (central duct 27, Fig. 7) and at least a first product stream outlet (liquid light phase outlet 33, Fig. 7) and a second product stream outlet (liquid heavy phase outlet 34, Fig. 7); an interior surface that defines an interior space (separation space 18, Fig. 7), wherein the at least one feed stream inlet and the at least two product stream outlets are in fluid communication with the interior space; a feed steam pathway (see annotated Fig. 7 below) in fluid communication with the at least one feed stream inlet and the interior space of the bowl portion; and two or more product stream pathways, wherein the two or more product stream pathways comprise at least: a first product stream pathway (see annotated Fig. 7); and a second product stream pathway (see annotated Fig. 7) wherein the second product stream pathway has an inlet in the interior space, wherein the second product stream pathway comprises a space between a first radially extending surface (separation disc 1b, Fig. 6a) and a second radially extending surface (separation disc 1a, Fig. 6a), wherein at least the second radially extending surface comprises a plurality of discrete, flow interference members (tip-shaped spacing members 4a, Fig. 6a) that are located in the space between the first radially extending surface and the second radially extending surface to disrupt the flow of a second product stream, wherein the first product stream pathway is located between the second product stream pathway an the central axis of rotation (see annotated Fig. 7), wherein each of the plurality of discrete, flow interference members protrudes toward the first radially extending surface, but does not disclose wherein each of the plurality of discrete, flow interference members has an end adjacent to the first radially extending surface and forms a gap between the end and the first radially extending surface.
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Borgström discloses analogous art related to a disc stack centrifuge, wherein each of the plurality of discrete, flow interference members (flow influencing members 17, Fig. 5) protrudes toward the first radially extending surface (separation disc 4c, Fig. 5), and wherein each of the plurality of discrete, flow interference members has an end adjacent to the first radially extending surface and forms a gap (difference between height H and heigh h, Fig. 5) between the end and the first radially extending surface. It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the centrifuge of Borgström with the plurality of discrete, flow interference members as taught by Nilsson for the purpose of preventing the formation of Ekman layers and cause a substantially larger friction resistance for the geostrophic flow along said upper side than a smooth surface would (col. 4 lines 19-29, Borgström).
Regarding claims 37 and 38, the combination of Nilsson and Borgström does not specifically disclose wherein the plurality of discrete flow interference members comprises from 20 to 600 discrete, flow interference members; wherein each of the plurality of discrete, flow interference members has a height from 20 to 100 millimeters, wherein the height is a distance that extends orthogonal from the second radially extending surface. Borgström teaches that the flow influencing members 17 have to be formed so that even if they create a substantially larger friction resistance for the geostrophic flow along said upper side than a smooth surface would, they will still not cause turbulence in a large part of the disc interspace (col. 4 lines 19-31, Borgström). It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the number of discrete, flow interference members and the height of said members to be in the claimed ranges, for the purpose of varying the parameters within predictable ranges to achieve a desired combination of friction resistance and minimal turbulence, or other process conditions, which are considered at most optimum choices, lacking any disclosed criticality.
With respect to the limitations of the number of discrete flow interference members and the height of the discrete, flow interference members, which are present in the claims at issue, the examiner has found that the specification contained no disclosure of any unexpected results arising therefrom, and that as such the parameters are arbitrary and therefore obvious. Such unsupported limitations cannot be a basis for patentability, since where patentability is said to be based upon particular chosen parameters or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990) and MPEP 2144.05(III).
Applicant has the burden of proving such criticality. In re Swenson et al., 56 USPQ 372; In re Scherl, 70 USPQ 204. However, even though applicant's modification may result in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art. In re Sola, 25 USPQ 433; In re Normannet et al., 66 USPQ 308; In re Irmscher, 66 USPQ 314.
More particularly, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.20 454, 456, 105 USPO 233, 238 (CCPA 1955); In re Swain et al., 70 USPQ 412; Minnesota Mining and Mfg. Co. v. Coe, 38 USPQ 213; Allen et al. v. Coe, 57 USPQ 136; MPEP 2144.05(II)(A).
No probative evidence is of record to demonstrate that the number of discrete flow interference members and the height of the discrete, flow interference members, and/or other variables of the invention are significant or are anything more than one of numerous dimensions a person of ordinary skill in the art would find obvious for purposes of merely changing the configurations and/or dimensions to obtain different results. Graham v. John Deere Co., 148 USPQ 459. Accordingly, the examiner argues that these parameters are rather arbitrary and thus obvious over the prior art per MPEP 2144.05(II)(III).
Furthermore, the Federal Circuit has explained that a reason to optimize prior art parameters may be found in a PHOSITA’s desire to improve on the prior art. In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017) (“The normal desire of artisans to improve upon what is already generally known can provide the motivation to optimize variables such as the percentage of a known polymer for use in a known device.”’).
Allowable Subject Matter
Claims 26-36 would be allowable if rewritten to overcome the double patenting rejection set forth in this Office action and to include all of the limitations of the base claim and any intervening claims, since the prior art does not teach or suggest a separating disk comprising the second radially extending surface adjacent to the interior surface of the bowl portion; and a stack of disks positioned in the interior space of the bowl portion, wherein the separating disk is positioned between the stack of disks and the interior surface of the bowl portion, and wherein the first radially extending surface comprises the interior surface of the bowl portion.
Claims 39-44 are allowable, because the prior art does not teach or suggest a centrifuge including a stack of disks positioned in the interior space of the bowl portion wherein the inlet of the second product stream pathway is spaced apart from the plurality of disks; or a separating disk adapted to be positioned in a centrifuge between a portion of an interior surface of a bowl portion and a portion of a stack of disks, wherein the separating disk comprises a radially extending surface including both a plurality of discrete flow interference members configured to protrude towards the interior surface of the bowl portion and a plurality of radially extending structural spacer ribs.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHUYI S LIU whose telephone number is (571)272-0496. The examiner can normally be reached MON - FRI 9:30AM - 2:30PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Claire Wang can be reached at 571-270-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Shuyi S. Liu/ Examiner, Art Unit 1774
/CLAIRE X WANG/ Supervisory Patent Examiner, Art Unit 1774