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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/09/2026 has been entered.
Response to Arguments
Applicant's arguments filed on 06/09/2026 have been fully considered but they are not persuasive.
Regarding the 112(f) claim interpretation of a biasing member, applicant argues that the newly added “claimed feature defines sufficient structure of the "biasing member" by claiming the specific physical connections and interactions i.e., the abutment with the first housing and the movable support against the biasing force). In view of this, Applicant submits that the limitation "biasing member" no longer invokes Section 112(f).” The examiner respectfully disagrees because the newly added features are functionals and they do not specifically recite the dish spring disclosed in [0042] of specification.
Regarding the 103 rejection, applicant argues that “Inoue's structure is static and physically immobilized, having no axial degree of freedom. Therefore, Inoue does not possess the "movable" structural requirement of claim 1.” The examiner respectfully disagrees for several reasons. Firstly, the claim recites “the first plate-like member being supported in a state of being movable toward a side of the second housing against a biasing force of the biasing member.” Without any further limiting features, “a state of being movable” is interpreted as merely having the possibility of being moved. In this interpretation, even if an element is bolted to another element, it is considered movable because one can loosen the bolt and “move” the element. Secondly, Inoue discloses a biasing member (43) that is disposed between the second housing and the first plate-like member (Fig. 1A) and that is configured to bias the first plate portion toward a side of the gas flow path (Fig. 1A). Hence, in Inoue, there is a biasing member between the second housing and the first plate-like member. By virtue of being a biasing member, element 43 has elastic properties. Therefore, the elements connected to it will move as the biasing member expands and contracts. Moreover, as clearly depicted in Fig. 1A of Inoue, the first plate-like member (element 47, with or without 41) is not obstructed from moving. Therefore, merely by virtue of the biasing member being disposed between the second housing and the first plate-like member, the first plate-like member can move as the biasing member expands and contracts. Therefore, the first plate-like member is supported in a state of being movable (i.e., having the possibility of being moved) toward a side (which can be any side) of the second housing against a biasing force of the biasing member (Fig. 1A). Therefore, Inoue's structure is not physically immobilized by virtue of the biasing member. Furthermore, the claim doesn’t require an axial degree of freedom, despite applicant’s argument. Even further, note that any physical element will move, even if in a small amount, due of temperature change, and by virtue of tolerances in the mechanical assemblies, such as the one shown in Fig. 1A. Applicant further argues that “In a static structure like Inoue, there is no axial movement to be restricted.” The examiner respectfully disagrees for the reasons explained above. Applicant further argues that “The gaps shown in Inoue's drawings are mere "manufacturing tolerances" and do not constitute an "intentional design stroke" for limiting movement as in the present invention.” The examiner respectfully notes that a limitation being disclosed by a prior art will read on the limitation. It has no patentable weight if they are disclosed with the same intention as applicant. Furthermore, claim 1 doesn’t recite "intentional design stroke." Applicant further argues that “In view of this, even assuming that Inoue and Hayashi can be combined, which Applicant does not admit, Inoue in view of Hayashi fails to disclose or suggest the foregoing features recited in claim 1.” The examiner notes that this is a mere conclusory statement without any backup. The rejection of Inoue in view of Hayashi discloses all of the limitations of claim 1 as presented below. Applicant further argues that “imposing the claimed gap management on Inoue's fixed assembly would be physically superfluous and could potentially render the prior art assembly inoperable by causing mechanical interference or improper seating of the fixed rings.” The examiner respectfully disagrees. Firstly, applicant is merely guessing that “…could potentially render the prior art assembly inoperable.” Applicant has not been able to show that this is actually the case. Moreover, the rejection clearly states the motivation of maintaining the positional relationships. Furthermore, the rejection is a KSR type (A) rejection not a TSM. Applicant argues that there is no motivation for one skilled in the art to make such a combination. The examiner respectfully disagrees. Hayashi is in the same field of endeavor and clearly teaches a plurality of positioning pins (40) of which one end is fitted into a first hole formed in the back surface of the first plate portion (Fig. 1-7) and the other end is fitted into a second hole formed in the facing surface of the second housing (Fig. 1-7), in order to maintain the positional relationships. Hence, the rejection provides a teaching that is in the same field of endeavor. Applicant’s argument that the rejection is improper because it provides no motivation assumes that teaching suggested motivation (TSM) is the only proper type of a 103 rejection. However, that is not the case. Refer to MPEP 2143.I. for different examples of rationales, of which only the last one is “some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.” Applicant further argues that adding the "positioning pins" (40) of Hayashi would be structurally redundant and would unnecessarily complicate the device. The examiner respectfully disagrees. Applicant has not provided any citations from within the prior art to back up their allegation which is merely a conclusory argument. Moreover, arguendo, even if applicant’s argument that the addition of the pin provides redundancy were correct, it is a normal engineering practice to provide redundancy in machines in case one element or system fails. Moreover, it is also noted that even if a disadvantage may be introduced by the modification, that does not negate the obvious advantage of restricting and maintaining the positional relationships, as stated in MPEP 2143: “"[a]lthough modification of the movable blades may impede the quick change functionality disclosed by Caterpillar, ‘[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine’" (quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165, 77 USPQ2d 1865, 1870 (Fed Cir. 2006) (citation omitted)).”
Claim interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “biasing member” in claim 1. Based on the specification, the biasing member is a dish spring ([0042]).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
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.
Claims 1-3 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Inoue et al. (US 20140248137), referred to hereafter as Inoue in view of Hayashi (WO2021/256203).
With regard to claim 1:
Inoue discloses a turbine comprising: a first housing (27) that has a scroll flow path (37); a turbine wheel (31) that is provided on an inner peripheral side of the scroll flow path (Fig. 1A); a first plate-like member (47, with or without 41) that includes an annular first plate portion (Fig. 1A); a second plate-like member (57) that includes an annular second plate portion that is disposed to face the first plate portion and that forms a gas flow path from the scroll flow path toward the turbine wheel between the first plate portion and the second plate portion (Fig. 1A); at least one variable nozzle vane (61) that is disposed in the gas flow path (Fig. 1A); a second housing (3) that has a facing surface (in Fig. 1A, see the surface where arrow 94 is pointing to) that faces a back surface of the first plate portion on a side opposite to a flow path wall surface facing the gas flow path with a first space interposed therebetween (Fig. 1A); an annular member (67) that is disposed in the first space and that is configured to rotate with respect to the first plate-like member by means of a driving force (69) from an outside ([0037]); at least one link member (75) with one end being connected to the annular member and the other end being connected to the variable nozzle vane, which changes a vane angle of the variable nozzle vane connected to the other end in conjunction with the rotation of the annular member (Fig. 1A, 3); a biasing member (43) that is disposed between the second housing and the first plate-like member (Fig. 1A) and that is configured to bias the first plate portion toward a side of the gas flow path (Fig. 1A), the first plate-like member being supported in a state of being movable (being movable is interpreted as merely having the possibility of being moved) toward a side (note that the claim doesn’t recite which side) of the second housing against a biasing force of the biasing member (Fig. 1A); and at least one stopper portion (all of 51, or just the last finger next to 94) that is provided in the facing surface or the first plate portion (Fig. 1A, [0033]), in which a first gap is formed between the stopper portion and the facing surface or between the stopper portion and the first plate portion (Fig. 1A), and the first gap is smaller than a second gap between the annular member and the facing surface and a third gap between the at least one link member and the facing surface (Fig. 1A, 2).
Inoue does not appear to explicitly disclose that the first plate portion comes into abutment with the first housing, and does not appear to explicitly disclose at least one positioning pin of which one end is fitted into a first hole formed in the back surface of the first plate portion and the other end is fitted into a second hole formed in the facing surface of the second housing.
Regarding the first plate portion coming into abutment with the first housing, Hayashi teaches a turbine with first and second housings and first and second plate-like members and at least one variable nozzle, and further teaches a biasing member that is disposed between the second housing and the first plate-like member and that is configured to bias the first plate portion toward a side of the gas flow path to bring the first plate portion into abutment with the first housing (Fig. 1, 6, 8).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to use a known technique, namely bringing the first plate portion into abutment with the first housing, to improve similar devices in the same way.
Regarding a positioning pin, Hayashi teaches a turbine with first and second housings and first and second plate-like members and at least one variable nozzle, and further teaches a plurality of positioning pins (40) of which one end is fitted into a first hole formed in the back surface of the first plate portion (Fig. 1-7) and the other end is fitted into a second hole formed in the facing surface of the second housing (Fig. 1-7), in order to maintain the positional relationships.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the application to combine prior art elements according to known methods, and add a plurality of positioning pins of which one end is fitted into a first hole formed in the back surface of the first plate portion and the other end is fitted into a second hole formed in the facing surface of the second housing, to yield predictable results of restricting and maintaining the positional relationships.
With regard to claim 2, the combination of Inoue and Hayashi further discloses that the at least one stopper portion is integrally configured with the first plate-like member (Inoue, [0033]).
With regard to claim 3, the combination of Inoue and Hayashi further discloses that the first plate-like member includes a tubular portion that protrudes from the back surface of the first plate portion and that is inserted into a central hole of the annular member (Inoue, Fig. 1A), and at least one claw portion that protrudes from the tubular portion to an outer peripheral side of an inner peripheral edge of the annular member (Inoue, Fig. 1A), with the inner peripheral edge of the annular member interposed between the back surface of the first plate portion and the claw portion (Inoue, Fig. 1A), and the at least one stopper portion includes the at least one claw portion (Inoue, Fig. 1A).
With regard to claim 7, the combination of Inoue and Hayashi further discloses that at least one of the first hole or the second hole has a longitudinal direction along a radial direction of the turbine wheel (Hayashi, Fig. 2-4. Hayashi discloses that at least one of the first hole or the second hole has a longitudinal direction along a radial direction of the turbine wheel as much as applicant discloses it. Note that a 3-dimensional element stretches in all three directions. Also note that applicant’s specification discloses that “the positioning pin 9 is formed in a rod shape having a longitudinal direction along the axial direction of the turbine 2.” [0062]. Also see [0068]).
With regard to claim 8, the combination of Inoue and Hayashi further discloses that the at least one positioning pin includes a plurality of positioning pins disposed at intervals along a circumferential direction of the turbine wheel (Hayashi, Fig. 2-4), and in a cross-section orthogonal to an axis line of the turbine wheel, a point at which distances from respective center positions of the plurality of positioning pins are equal is disposed to be shifted to a tongue portion side of the scroll flow path with respect to the axis line of the turbine wheel (Hayashi, Fig. 2-4).
With regard to claim 9, the combination of Inoue and Hayashi further discloses that the biasing member includes at least a first biasing plate portion (Inoue, the upper leg of 43 with or without the middle leg) that extends along a radial direction of the turbine wheel and that abuts against the second housing (Inoue, Fig. 1A), and a second biasing plate portion (Inoue, the lower leg of 43 with or without the middle leg) that extends along the radial direction and that abuts against the first plate-like member (Inoue, the first and second biasing plate portions extend along a radial direction of the turbine wheel as much as applicant’s first and second biasing plate portions extends along a radial direction of the turbine wheel. Note that applicant’s first and second biasing plate portions are inclined, see applicant’s Fig. 10).
With regard to claim 10, the combination of Inoue and Hayashi discloses a turbocharger (Inoue, 1) comprising: the turbine according to claims 1 (Inoue, Fig. 7, 1A); and a centrifugal compressor configured to be driven by the turbine (Inoue, Fig. 7, [0026]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Refer to the attached form PTO-892 for pertinent prior art disclosing similar turbines such as US 9945245 and US 6962481.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BEHNOUSH HAGHIGHIAN whose telephone number is (571)270-7558. The examiner can normally be reached Mon-Fri, 7:00am-15:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Courtney D Heinle can be reached at (571) 270-3508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BEHNOUSH HAGHIGHIAN/
Examiner
Art Unit 3745
/COURTNEY D HEINLE/Supervisory Patent Examiner, Art Unit 3745
Prosecution Insights