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 . 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.
Election/Restrictions
Applicant’s election with traverse of Species I, Figures 1, 2, and 17, in the reply filed June 26, 2026, has been acknowledged. The traversal is on the grounds that the CN 113819189 (Duan) reference does not disclose an annular cavity, as required by claim 21, line 4, and instead discloses “a zig-zag shape”. The Examiner respectfully disagrees and notes the term “annular” does not require a perfect circle, but merely a ring-shaped structure. As shown in Figure 1 of Duan, the annular cavity is certainly ring shaped in that it forms a 360° shape about a central rotational axis. It is further noted other prior art discloses the limitations of claim 21, as set forth below and in the attached PTO-892.
Further it is to be noted examining multiple patentably distinct species together in the same application would impose a serious burden on the examiner, as such would require the search of multiple patentably distinct features that otherwise would not have to be searched for, applying appropriate prior art rejections and having to consider and respond to attorney arguments regarding such multiple patentably distinct features and rejections. Is it Applicant’s position that the specific features of the various species are not patentably distinct, and therefore obvious over one another? If so, then such should be clearly admitted on the record.
Finally, it should be noted that, as stated at page 4 of the election requirement, upon the allowance of a generic claim, applicants will be entitled to consideration of claims to the additional species that depend therefrom or otherwise include all of the limitations of that allowable generic claim. In other words, if patentability resides in the generic aspects of the inventions disclosed as opposed to the specific features of the respective species, then there will be rejoinder of those non-elected species and if patentability resides within the specifics of the elected species, then there will be no rejoinder of the other species.
The requirement is still deemed proper and is therefore made FINAL.
It is to be noted Applicant failed to specify which claims are directed to the elected species, as required on page 4 of the restriction requirement. The Examiner notes the limitations of claims 24, 30, and 32-38 are not disclosed as being part of Species I and instead are directed to at least one of Species II-VI. See, for example, claim 24, where the limitations set forth can be found in Figure 5 (Species III). As such, claims 24, 30, and 32-38 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because multiple reference characters have been used to designate the same feature throughout the drawings:
“13/16” in Figure 2
“7/18” in Figure 3
“4/29” in Figure 4
“4/29” in Figure 5
“4/29” in Figure 6
“4/29” in Figure 7
“3/22” in Figure 8
“3/22” and “4/29” in Figure 9
“4/29” in Figure 10
“23/71”, “51/76/82”, “52/83/87”, and “86/94” in Figure 11
“3/22” and “4/29” in Figure 12
“13/16” and “14/95” in Figure 13
“13/16” and “95/97” in Figure 14
“4/29” and “13/16” in Figure 15
“4/98” and “7/18” in Figure 16
“4/107” and “4/108” in Figure 17
“4/98” and “7/18” in Figure 18
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The lengthy specification 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.
Claim Objections
The claims are objected to under 37 CFR 1.75(i) for failing to separate claim elements by line indentation at least in claim 21. Appropriate correction is required.
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 21-23, 25-29, 31, 39, and 40 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 pre-AIA the applicant regards as the invention.
In claim 21, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). See lines 1-3. Claims 22, 23, 25-29, 31, 39, and 40 inherit this issue for depending upon independent claim 21.
In claim 23, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). See lines 2-4.
Claim Rejections - 35 USC § 102
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 21, 22, 25-28, and 31 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 1,390,464 (Senstius).
Regarding claim 21, Senstius discloses a rotational element (see Figures 1, 4, and 5, and annotated Figure 1 below), such as a shaft or other rotational part of a device such as a motor or compressor, which is intended for being driven for a rotational movement by means of a driving device or for forming a part of such a driving device (see pages, lines 9-17),
which rotational element is internally provided with at least one annular cavity (see annotated Figure 1 below) which separates a central part (21) from an outer part (14) of the rotational element (see Figure 5),
wherein the outer part is provided with one or more holes or channels (29) which extend from an outer wall of the outer part to the annular cavity (see Figures 4 and 5) and
wherein in the holes or channels fixation means (28) are fixedly mounted which each extend through the corresponding hole or channel and which have a tip (see annotated Figure 1 below) which is abutting against the central part (see Figures 4 and 5, and page 2, lines 10-19).
PNG
media_image1.png
307
526
media_image1.png
Greyscale
Figure 1. Annotated Figure 5 of Senstius
Regarding claim 22, Senstius discloses the holes or channels (29) are internally threaded holes or channels (see page 2, lines 11-13) and
that the fixation means (28) are bolts which are screwed into their respective threaded hole or channel until the tip (see annotated Figure 1 above) of the concerned bolt is abutting against the central part (21; see Figure 5).
Regarding claim 25, Senstius discloses the central part (21) of the rotational element has a substantially cylindrical outer shape (see Figures 4 and 5).
Regarding claim 26, Senstius discloses the outer part (14) of the rotational element has an inner wall which has a substantially cylindrical shape (see Figures 4 and 5).
Regarding claim 27, Senstius discloses the holes or channels (29) in the outer part (14) of the rotational element extend in a radial direction perpendicular to the axial direction of the central axis of the central part (21; see Figures 4 and 5).
Regarding claim 28, Senstius discloses the rotational element and its holes or channels (29) in the outer part and the fixation means (28) have rotational symmetry around the central axis of the central part (21; see Figures 4 and 5).
Regarding claim 31, Senstius discloses the rotational element is forming a motor shaft or a compressor rotor shaft or is a motor rotor or a compressor rotor comprising respectively a motor shaft or a compressor rotor shaft or a combination thereof (see Figures 1, 4, and 5; page 1, lines 9-17, and the 112 rejection above).
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.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Senstius in view of US 3,156,127 (Pettigrew).
Senstius discloses the rotational element according to claim 21, but does not expressly disclose the tip (see annotated Figure 1 above) of the fixation means (28), or another part of the fixation means is made of a dampening material, such as a visco-elastic material, or that the fixation means are entirely made of a dampening material, such as a visco-elastic material.
Pettigrew teaches providing the tip of a fixation means (58), or another part of the fixation means is made of a dampening material, such as a visco-elastic material, or that the fixation means are entirely made of a dampening material, such as a visco-elastic material, in order to absorb vibrations between an inner part (40) and an outer part (50) of a rotational element (see column 2, line 52, through column 3, line 20). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the rotational element of Senstius such that the tip of the fixation means, or another part of the fixation means is made of a dampening material, such as a visco-elastic material, or that the fixation means are entirely made of a dampening material, such as a visco-elastic material, as taught in Pettigrew, in order to absorb vibrations between the inner part and the outer part of a rotational element.
Claim 29 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Senstius.
Regarding claim 29, as to 35 U.S.C. 102(a)(1), Senstius discloses at least a first group of holes or channels (29) and a second group of holes or channels (29) are provided in the outer part (14) of the rotational element which first group and second group are with a certain axial distance spaced from one another (see page 2, lines 47-57, where it is disclosed that the hole and fixation means structure replaces bearings along the shaft).
Regarding claim 29, as to 35 U.S.C. 103, Senstius discloses at least a first group of holes or channels (29), but does not explicitly disclose a second group of holes or channels are provided in the outer part of the rotational element which first group and second group are with a certain axial distance spaced from one another.
Applicant is reminded that it has been held that where the general conditions of a claim are disclosed the prior art, mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the rotational element of Senstius such that it includes a second group of holes or channels are provided in the outer part of the rotational element which first group and second group are with a certain axial distance spaced from one another, as such a modification involves only routine skill in the art as a mere duplication of parts has no patentable significance unless a new and unexpected result is produced. One of ordinary skill in the art would have been motivated to make such a modification in order to provide additional damping means as needed depending upon the amount of vibration to be induced into the system which includes the rotational element.
Claims 39 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over US 4,291,547 (Leo) in view of Senstius.
Regarding claim 39, Leo discloses a compressor assembly (10) comprising a rotational element (see Figure 2), wherein the compressor assembly comprises
a motor (14) which is connected to a compressor element (16),
wherein a motor shaft (22) of the motor drives at least one compressor rotor shaft (50) of a compressor rotor of the compressor element (see column 3, line 25, through column 4, line 7) and
wherein the motor shaft, the rotor shaft or the combination of the motor shaft and the compressor rotor shaft is forming the rotational element or a part thereof (see Figure 2).
Leo does not expressly discloses the rotational element being a rotational element according to claim 21. Leo instead utilizes bearings (see, e.g. 26) to provide support (see Figure 2).
Senstius teaches a rotational element according to claim 21 (see Figures 1, 4, and 5, and annotated Figure 1 below), such as a shaft or other rotational part of a device such as a motor or compressor, which is intended for being driven for a rotational movement by means of a driving device or for forming a part of such a driving device (see pages, lines 9-17),
which rotational element is internally provided with at least one annular cavity (see annotated Figure 1 below) which separates a central part (21) from an outer part (14) of the rotational element (see Figure 5),
wherein the outer part is provided with one or more holes or channels (29) which extend from an outer wall of the outer part to the annular cavity (see Figures 4 and 5) and
wherein in the holes or channels fixation means (28) are fixedly mounted which each extend through the corresponding hole or channel and which have a tip (see annotated Figure 1 below) which is abutting against the central part (see Figures 4 and 5, and page 2, lines 10-19).
Senstius teaches it is known in the art of rotational elements to provide such a rotational element having a fixation means support structure to replace a bearing support structure (see page 2, lines 47-57) in order to prevent vibration during heavy strain (see page 1, lines 9-24). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the rotational element of Leo to be a rotational element according to claim 21, as taught in Senstius, in order to prevent vibration during heavy strain.
Regarding claim 40, Leo teaches the compressor assembly (10) comprises an oil-pump (68) for pumping oil through an oil circulation system of the compressor assembly (see column 4, lines 8-55) and which is also driven by the motor shaft (22; see Figure 2),
wherein the compressor rotor shaft (50) is connected to the motor shaft by means of a direct coupling so to form a composed driving shaft (see Figure 2) and
wherein the oil-pump is mounted directly on the composed driving shaft or on another compressor rotor shaft of a compressor element of the compressor assembly (see Figure 2).
Conclusion
The prior art set forth in the attached Notice of References Cited (PTO-892) made of record and not relied upon is considered pertinent to Applicant's disclosure in the field of rotational elements.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Josh Skroupa whose telephone number is (571)270-3220. The examiner can normally be reached M-F 7:30 AM – 3:30 PM ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Anderson can be reached on (571)270-5281. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Josh Skroupa/Primary Examiner, Art Unit 3678
August 13, 2026
Prosecution Insights