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/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-11, drawn to a sealing system comprising a sealing member and a support portion among other elements.
Group II, claim 12, drawn to a protection method for a rotary machine.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of a seal system for being provision with and configured to seal a rotary shaft of a machine when a pressure difference across the sealing system is higher than a predetermined value, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Narita et al. (US 2012/0014778). See the rejection of claim 1 below detailing such.
This application also contains claims directed to more than one species of the generic invention. These species are deemed to lack unity of invention because they are not so linked as to form a single general inventive concept under PCT Rule 13.1.
The species are as follows:
Species I – The sealing system with the support member axially biased by an axial spring against the body, the sealing system configured to translate axially, and the gap being an axial gap between a step of the shaft and the support member – as seen in Fig. 2
Species II – The sealing system with the support member fixed to body (i.e. no spring and not configured for axial translation), the sealing system configured to bend/flex in an angular manner (combined axial/radial movement), and the gap being a gap between the outer surface of the shaft and the sealing member – as seen in Fig. 3
Applicant is required, in reply to this action, to elect a single species to which the claims shall be restricted if no generic claim is finally held to be allowable. The reply must also identify the claims readable on the elected species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered non-responsive unless accompanied by an election.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which are written in dependent form or otherwise require all the limitations of an allowed generic claim. Currently, the following claim(s) are generic: 1, 4, 5, and 9-11.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Species I and II lack unity of invention because even though the inventions of these groups require the technical feature of a sealing system for a rotary shaft of a machine, wherein the system is configured to separate a first zone surrounding a first portion of the rotary shaft and a second zone surrounding a second portion of the rotary shaft, the first zone being at a pressure higher than the second zone during operation of the machine, wherein the system comprises: a sealing member configured to face a lateral surface of the rotary shaft at an intermediate portion of the rotary shaft, the intermediate portion of the rotary shaft being located between the first portion of the rotary shaft and the second portion of the rotary shaft, and a support member supporting the sealing member; wherein a gap is defined between the sealing system and the rotary shaft; and wherein the support member is configured to perform a movement due to a pressure difference between the first zone and the second zone and to close the gap when the pressure difference is higher than a predetermined value, wherein said movement is at least in an axial direction this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Narita et al. (US 2012/0014778). See the rejection of claim 1 below detailing such.
During a telephone conversation with Michael Wasco on 07 January 2026 a provisional election was made without traverse to prosecute the invention of Invention I, Species II, claims 1, 4-7, and 9-11. Affirmation of this election must be made by applicant in replying to this Office action. Claims 2, 3, 8, and 12 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Objections
Claim 1 is objected to because of the following informalities: “higher than the second zone” in line 4 should read “higher than a pressure of the second zone”, the comma at the end of line 9 should be a semicolon, the semicolon in line 10 should be a comma and the “wherein” limitation that follows should begin on the next line as a new indented paragraph”, and the “wherein” limitation in line 11 should begin on the next line as a new indented paragraph. Appropriate correction is required.
Claim 9 is objected to because of the following informalities: “steel or abradable material or phenolic resin” should read “steel, abradable material, or phenolic resin”. 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 1, 4-7, and 9-11 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 1 recites the limitation “wherein a gap is defined between the sealing system and the rotary shaft” in lines 10-11. This limitation is indefinite as the rotary shaft has only previously been recited in the intended use of the preamble of this claim and thus it is unclear whether this limitation positively requires the shaft for infringement/anticipation to occur (and if so what other parts (if any) of the machine would also be required) or if it is intended to merely be a further narrowing of the prior claimed intended use. Appropriate clarification and correction is required. For examination purposes Examiner assumes Applicant intended to claim “wherein the sealing system is configured such that a gap can be defined between the sealing system and the rotary shaft when the sealing system is installed on the rotary shaft”.
Claims 4 and 5 recite the limitation “wherein said gap is defined between …”. Similar to the above rejection of claim 1, this limitation is indefinite as the rotary shaft has only previously been recited in the intended use of the preamble of this claim and thus it is unclear whether this limitation positively requires the shaft for infringement/anticipation to occur (and if so what other parts (if any) of the machine would also be required) or if it is intended to merely be a further narrowing of the prior claimed intended use. Appropriate clarification and correction is required. For examination purposes Examiner assumes Applicant intended to claim “wherein said gap can be defined between…”.
Claim 5 recites the limitation “the body”. This limitation lacks antecedent basis and is indefinite as it is unclear whether it is intended to be a newly claimed limitation, refer to a prior claimed limitation (e.g. the sealing member or support member), or if it is intended to depend on a claim that recites a body (e.g. claim 7). Appropriate clarification and correction is required. For examination purposes Examiner assumes Applicant intended to claim “a body”.
Claims 6 and 11 recite the limitation “in particular…” followed by specific structure. These limitations are indefinite as it is unclear whether the structure that follows is required for infringement/anticipation to occur or whether they are intended to be non-limiting examples. Appropriate clarification and correction is required. For examination purposes Examiner assumes Applicant intended to delete the “in particular” limitations and the specific structural limitations that follow as they appear non-limiting.
Claim 11 recites the limitation “the sealing system is arranged between the compressor and/or expander and the seal arrangement”. This limitation is indefinite the compressor and expander are previously recited as alternatives and this it is unclear if this is merely with reference to that alternative or if this also requires both the compressor and expander (which Examiner notes may necessitate a 112(a) rejection and/or drawing objection). Additionally if it requires both it would be unclear whether the seal system is between all three of the sealing arrangement, compressor, and expander or if the seal system is between two of such on one side and one on the other (compressor > expander > sealing system > seal arrangement, or compressor > sealing system> expander > seal arrangement). Appropriate clarification and correction is required. For examination purposes Examiner assumes Applicant intended to claim “the sealing system is arranged between the compressor or expander and the seal arrangement”.
Claims 7, 9, and 10 are indefinite at least by virtue of depending on indefinite claim 1 (see above).
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.
Claims 1, 4-7, and 9-10, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Narita et al. (US 2012/0014778).
With regard to claim 1, Narita discloses a sealing system (as seen in Fig. 3, 5, 7, 8, etc.) for a rotary shaft (i.e. for use with rotary shaft 18 as seen in Figs. 2-3, etc.) of a machine (as seen in Fig. 1), wherein the system is configured to separate a first zone surrounding a first portion of the rotary shaft and a second zone surrounding a second portion of the rotary shaft (Examiner notes that the sealing system of Narita is capable of this as it is capable of providing sealing between two zones (i.e. axial zones as would be seen in Figs. 1-3, etc.) each at a different axial portion of the shaft as seen in Figs. 3, etc.), the first zone being at a pressure higher than the second zone during operation of the machine (Examiner notes that the sealing system of Narita is capable of this as it can be placed between such zones), wherein the system comprises: a sealing member (25) configured to face a lateral surface of the rotary shaft at an intermediate portion of the rotary shaft (as seen in Figs. 3, etc. it is capable of such as it can do such when installed), the intermediate portion of the rotary shaft being located between the first portion of the rotary shaft and the second portion of the rotary shaft (Examiner notes that the sealing system of Narita is capable of this it can be used with such a shaft), and a support member (30) supporting the sealing member (as seen in Figs. 3, etc.); wherein a gap (as seen in Figs. 3-4, etc. and as interpreted in light of the above 112(b) rejection of this limitation) is defined between the sealing system and the rotary shaft (as seen in Figs. 3-4, etc. the sealing system of Narita is capable of such a use); and wherein the support member is configured to perform a movement due to a pressure difference between the first zone and the second zone and to close the gap when the pressure difference is higher than a predetermined value (as seen in Figs. 3, etc. the sealing system of Narita is capable of such as, when installed, a high pressure from the right axial side would move the sealing system to the left and thus close gaps between elements 24 and 26), wherein said movement is at least in an axial direction (Examiner notes this is a further narrowing of the prior claimed capability/intended use that the sealing system of Narita is capable of. Additionally see Figs. 4B, etc.).
With regard to claim 4, Narita discloses that said gap is defined between the sealing member and the rotary shaft (as seen in Figs. 3, 4B, etc.).
With regard to claim 5, Narita discloses that said gap is defined between the body and the rotary shaft (as seen in Figs. 3, 4B, etc. as the gap is also defined therebetween. Examiner notes a narrow interpretation may result in this claim having to be withdrawn as not reading on the elected species).
With regard to claim 6, Narita discloses that said gap is defined between the support member and the rotary shaft (as seen in Figs. 3, 4B, etc. as the gap is also defined therebetween. Examiner notes a narrow interpretation may result in this claim having to be withdrawn as not reading on the elected species).
With regard to claim 7, Narita discloses that the system further comprises a body (22), and wherein the support member is configured to translate axially with respect to the body (as seen in Figs., 3, etc.).
With regard to claim 9, Narita discloses that the sealing member is made of or comprises steel, abradable material, or phenolic resin (as seen in Figs. 4A-B, etc. it is at least partially abradable material).
With regard to claim 10, Narita discloses that the sealing member is arranged to deform and/or to wear when the support member moves and closes the gap (as seen in Figs. 4A-B, etc.).
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 11, as best understood, is rejected under 35 U.S.C. 103 as being unpatentable over Kalra et al. (US 2014/0119881) in view of Narita et al. (US 2012/0014778).
With regard to claim 11, Klara discloses a machine (100, as seen in Fig. 2) having a rotary shaft (110) and comprising: a sealing system (52 or 54) wherein the sealing system can be a labyrinth seal (see paras. [0031], [0035], etc.), a compressor (102) or expander (104) mechanically coupled to the rotary shaft (as seen in Fig. 2, described in the abstract, etc.), and a seal arrangement (56 or 58 (respectively)) than can be a dry gas seal (see paras. [0031], [0035], etc.), wherein the sealing system is arranged between the compressor or expander and the seal arrangement (as seen in Fig. 2 the sealing system is axially therebetween).
Klara fails to disclose the specifics of the sealing system of claim 1.
Narita discloses a sealing system including all the limitations of claim 1 (see the rejection of claim 1 above).
It would have been considered obvious to one having ordinary skill in the art to have used the specific sealing system of Narita (including all the elements of claim 1) in place of the generic sealing system of Klara as taught by Narita. Such a modification would provide the expected benefit of providing a low friction seal labyrinth seal with the ability to accommodate some movement/eccentricity and prevent excessive leakage (see Narita abstract, etc.).
Examiner’s Recommendation
Examiner recommends canceling claim 11 and amending claim 1 to require “a turbomachine” instead of “a sealing system”, the turbomachine having the elements in the preamble of claim 1 (i.e. shaft, first and second zones, first and second portions, pressures, etc.) and the elements of claim 11 (i.e. the compressor/expander and seal arrangement with the sealing system between such), and claiming more specifics of the shape of the sealing system as shown in Fig. 2 (e.g. the spring, the shoulder/step portion of the shaft, etc.). Though such has not specifically been considered for allowability, Examiner notes such would appear to at least make substantial progress over the cited references.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and provide additional examples of similar sealing systems.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS L FOSTER whose telephone number is (571)270-5354. The examiner can normally be reached M-F 9am-5pm.
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, Kristina Fulton can be reached at (571) 272-7376. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS L FOSTER/Primary Examiner, Art Unit 3675