DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Application Status
This office action is in response to amendments/arguments filed on May 14, 2026. Applicant has amended Claims 9, 12, 22, and 24, and added Claim 25. Claims 1 – 25 are currently pending.
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. Claims 1 – 11 and 14 – 25 are entitled to a priority date of May 15, 2023. Claims 12, 13 have no support in the priority documents and are thus given an effective filing date of December 23, 2024, corresponding to the filing date of the present application.
Response to Arguments
Applicant’s arguments have been fully considered.
With regards to previous drawing objections, applicant added new drawings and a corresponding description in the specification. These new additions are new matter and should be cancelled. Applicant argues that Claim 1 is not limited to any particular structural geometry. While this may be the case, it is not evidence of support for the additions. Applicant points to Page 107, Line 17 and Page 109, Line 29, both describing that aspects of the disclosed inventions may be broadly applied to prior art. This is insufficient evidence to yield the exact configuration/arrangement shown in the new drawings/disclosure. As per MPEP 2163, a “laundry list” disclosure of every possible moiety does not necessarily constitute a written description of every species in a genus because it would not “reasonably lead” those skilled in the art to any particular species. Applicant’s disclosure teaching that any aspect disclosed may be applied to prior art is essentially this “laundry list”, and one of ordinary skill would not necessarily be reasonably led to the arrangement shown in the new drawings/disclosure. Applicant further points to Page 109 and its discussion of US Patent 11873816. In the first passage cited, beginning at line 5 of Page 109, the description takes a pattern design of openings from the prior art and states that pattern may be applied to the disclosed invention. This is insufficient evidence to yield the exact configuration/arrangement shown in the new drawings/disclosure. In the second passage, the paragraph beginning at line 28 on Page 110 merely describes the ‘816 patent without any discussion of modification of the disclosed invention. In the third passage, the paragraph beginning on line 11 of Page 112, applicant appears to teach some modifications to Figure 13 of the prior art, but again fails to describe the specificity shown in the new drawings/disclosure.
Previous double patenting rejections partially stand. Double patenting rejections of Claims 3, 18, and 19 are withdrawn. Applicant argues that the double patenting rejection should not apply to Claims 3, 18, and 19, but provides no argument as to why it should not apply to the other claims, notably Claim 1. Only Claim 1 was explicitly mapped to Claim 7 of the US Patent. The double patenting rejection stated that all other claims were rejected over Claims 7, 11 – 14, 16, 17, 22, and 23 of the US Patent alone, or in conjunction with one of the prior art references relied on in the 102/103 section (obviousness type double patenting). While applicant argues that the US Patent does not recite the features of Claims 3, 18, or 19, applicant provides no arguments against obviousness of the US Patent claims in view of Juan, for example.
Previous 112a rejections stand. Regarding Claim 4, applicant again points to the paragraphs starting at Page 107, Line 17 and Page 109, Line 29, both describing that aspects of the disclosed inventions may be broadly applied to prior art. This broad disclosure is insufficient evidence to show that the specification reasonably conveys to one skilled in the relevant art that the inventor, at the time the application was filed, had possession of the claimed invention. As per MPEP 2163, a “laundry list” disclosure of every possible moiety does not necessarily constitute a written description of every species in a genus because it would not “reasonably lead” those skilled in the art to any particular species. Applicant also points to the paragraph starting at line 5 of Page 109. While examiner agrees that the claims do not necessarily include intermeshing rotors having frusto-spherical geometry, the disclosure of the inner surfaces of the high/low pressure gates being cylindrical does not immediately lend itself to either co-linear shafts or a rotor/stationary member embodiment. The cylindrical shape does not convey an orientation of the complementary members. Applicant is relying on vague, possible modifications disclosed in the specification to construct embodiments that require more explicit disclosure to reasonably convey possession to one of ordinary skill.
Previous 112b rejections are withdrawn due to applicant’s amendment. New 112b rejections are provided below, necessitated by the addition of Claim 25.
Previous 102 rejections over Won stand. Applicant argues that when the check valve of Won is closed, it means the compressor is not operating, and thus the check valve is not “repositionable”. Examiner respectfully disagrees. The two positions of the check valve are shown in Figure 6 of Won. While scroll compressors are known to minimize pulsations, their operation does provide pulses of compressed fluid. Once a compression chamber volume is fully discharged, the next compression chamber volume is opened to the discharge chamber, but the pressure of this subsequent compression chamber volume may not be at discharge pressure yet because the volume is still being compressed as the scroll compressor rotates. As such, the check valve closes to prevent back flow. Applicant argues that this repositioning does not lead to selective alignment with either the high pressure port or the low pressure port. Examiner respectfully disagrees. Examiner reminds applicant that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. Alignment does not necessarily require a circumferential alignment as disclosed. Merriam-Webster defines alignment as the proper position or state of adjustment of parts in relation to each other. The check valve repositioning itself between open and closed positions places the aperture (discharge port 60) in alignment with the high pressure port (discharge pipe 81) in that the check valve places the two in the proper position for fluid communication with one another. This is ultimately the same goal as the gate of the disclosed invention.
Previous 102 rejections of Claim 1 and its dependents over Juan stand. Applicant argues that the neckband is fixed to the idler rotor and the intake gate is fixed to the driver rotor, preventing a repositioning of either. Examiner respectfully disagrees. The neckband (26) may be fixed to and rotate with the idler rotor (Paragraph 375). This means that the neckband, gates (170, 172), and the holes/apertures (192, 196, 188) circumferentially therebetween also rotate. This rotation qualifies as a repositioning of the neckband relative to the housing. As described in Paragraphs 375, 376, during operation, these holes/apertures (192, 196, 188) of the neckband rotate to selectively align with intake passageway (186, and thus intake connection 112) and discharge passageway (194, and thus discharge connection 234) to facilitate intake and discharge.
Previous 102 rejections of Claim 20 and its dependents over Juan are withdrawn. Applicant’s arguments regarding offset advanced involute curves not being taught in Juan are persuasive.
Specification / Drawings
The amendment filed 5/14/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure – both in the specification and in the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
Figures 139 – 152 and the two new paragraphs inserted at line 21 of page 112.
Applicant is required to cancel the new matter in the reply to this Office Action.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 2, 4 – 11, 14 – 17, and 20 – 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7, 11 – 14, 16, 17, 22, and 23 of US Patent No 12180960. Although the claims at issue are not identical, they are not patentably distinct from each other as shown in the comparative table below:
Claim 1 of Instant Application
Claim 7 of US 12180960
A rotary positive displacement device, comprising:
a housing having a low pressure port and a high pressure port;
first and second complementary members, wherein the first complementary member is a first rotor, the first rotor comprising a first body connected to a first shaft that is rotatable about a first rotational axis, the first body comprising an outer surface and an axial surface, the second complementary member comprising a second body connected to a second shaft, the second body comprising an outer surface and an axial surface, and
at least one repositionable gate comprising a sealing surface and an aperture, the aperture of the repositionable gate being selectively aligned with one of the high pressure port or the low pressure port of the housing to comprise at least one of an adjustable high pressure opening and an adjustable low pressure opening between the first and second bodies and the high pressure or low pressure port, and
wherein the axial surfaces of the first and second bodies intermesh with one another to form at least two chambers therebetween when at least the first rotor is rotating via the first shaft, each chamber of the at least two chambers having a variable volume as each chamber orbits around the first rotational axis, and
wherein the at least one of the adjustable high pressure opening and adjustable low pressure opening is configured to selectively communicate with one or more of the at least two chambers as the at least two chambers orbit around the first rotational axis.
A rotary positive displacement device, comprising:
a housing having a low pressure port and a high pressure port;
a first rotor having a frusto-spherical outer surface, an axial surface, a first rotor shaft and a first rotational axis passing through the first rotor shaft, wherein the axial surface comprises at least one teardrop surface and at least one involute surface, the at least one teardrop surface and at least one involute surface together defining at least one lobe and a corresponding valley;
a second rotor having a frusto-spherical outer surface, an axial surface, a second rotor shaft and a second rotational axis passing through the second rotor shaft, the axial surface comprises at least one teardrop surface and at least one involute surface, the at least one teardrop surface and at least one involute surface together defining at least one lobe and a corresponding valley, the second rotational axis intersecting with the first rotational axis;
a high pressure opening extending between the first and second rotors and the high pressure port of the housing;
a low pressure opening extending between the first and second rotors and the low pressure port of the housing,
wherein the low pressure opening is configured to selectively communicate with one or more chambers of at least two chambers; wherein the second rotor is configured to intermesh with the first rotor such that the at least two chambers are separated by the axial surfaces of the first and second rotors, each chamber of the at least two chambers having a variable volume as the first and second rotors rotate about their respective rotational axes; and wherein a lobe tip of each rotor is in contact with, so as to form a seal against, the corresponding teardrop surface of the other rotor; and wherein the involute surface of each rotor is in contact with, so as to form a seal against, the corresponding involute surface of the other rotor; and
wherein the high pressure opening comprises a lower edge, the lower edge positioned along an outer diameter of the frusto-spherical outer surface of the second rotor, wherein the lower edge is positioned between the second rotor shaft and the at least one valley of the first rotor;
wherein the high pressure opening comprises an aperture in a repositionable high pressure gate, the high pressure gate sandwiched between the intermeshed first and second rotors and the housing, wherein the aperture of the high pressure gate may be selectively circumferentially positioned relative to the position of the at least two chambers formed between the intermeshed first and second rotors.
As seen above, the present claim 1 is a broader version of the patented claim 7, with the patented claim 7 fully anticipating all features of the present claim 1 (see underlined sections of patented claim matching the language of the present claim 1). The features of the at least two chambers orbiting around the first axis in the present claim 1 are functional language which are not explicitly recited in the patented claim 7 but inherent in the operation of the patented claim 7 given the intermeshing rotor arrangement.
Although no comparative table is shown, all other rejected claims are rejected over the US Patent, or over the US Patent in view of one of the prior art references relied on below using the obviousness rationale of the prior art rejections below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 4 and 5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 4 recites the first and second shafts are co-linear. First, none of the drawings depict a co-linear relationship between the shafts, making it difficult to ascertain operability. Second, given the structural geometry of the first and second rotors/complementary members, and the arrangement of their intermeshing surfaces, it is unclear how a co-linear arrangement between the shafts would work. Applicant only casually mentions a co-linear arrangement once in the specification, with all other discussion belonging to the offset arrangement shown in the Figures. As such, applicant has not described the co-linear relationship between the shafts in the specification in such a way as to reasonably convey to one skilled in the relevant art that they, at the time the application was filed, had possession of the claimed invention.
Claim 5 recites the second complementary member is a stator. Read in light of the specification, stator is taken to mean the body “remains stationary and does not rotate about the shaft”. given the structural geometry of the first and second complementary members, and the arrangement of their intermeshing surfaces, it is unclear how the second complementary member can be stationary. The intermeshing surfaces would not allow for one of the members to be stationary. This is further compounded by Claim 1, upon which Claim 5 depends, requiring that the second complementary member comprises a second body connected to a second shaft. Applicant only casually mentions a stator feature of the second complementary member once in the specification, with all other discussion belonging to the regular rotary embodiment. As such, applicant has not described the stator feature of the second complementary member in the specification in such a way as to reasonably convey to one skilled in the relevant art that they, at the time the application was filed, had possession of the claimed invention.
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.
Claim 25 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 25 recites the at least one of the adjustable high pressure opening and adjustable low pressure opening is positioned at the outer surface of the first and second bodies of the first and second complementary members. The metes and bounds of the claim are unclear because, as per the spec, the high pressure opening is positioned at an outer surface of one of the first and second bodies, not both. The same applied to the low pressure opening. For the sake of examination, the claim will be interpreted as the at least one of the adjustable high pressure opening and adjustable low pressure opening is positioned at the outer surface of at least one of the first and second bodies of the first and second complementary members.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 4, and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Won et al. (hereafter “Won” – US 6056523).
With regards to Claim 1:
Claim 1 is broad enough that even a scroll compressor reads on it.
Won discloses a rotary positive displacement device (Figures 1 – 5), comprising: a housing (casing 2) having a low pressure port (suction inlet 37) and a high pressure port (discharge outlet 81);
first and second complementary members (orbiting scroll 14, fixed scroll 20), wherein the first complementary member is a first rotor (orbiting scroll 14), the first rotor comprising a first body (orbiting scroll wrap) connected to a first shaft (shaft 10) that is rotatable about a first rotational axis (axis of shaft 10), the first body comprising an outer surface (tips 14a of the orbiting scroll wrap) and an axial surface (sides of orbiting scroll wrap that contacts fixed scroll wrap), the second complementary member comprising a second body (fixed scroll wrap) connected to a second shaft (see Figures 2, 5, 6, portion of fixed scroll 20 that protrudes up in direction of check valve 70), the second body comprising an outer surface (tips 20a of fixed scroll wrap) and an axial surface (sides of fixed scroll wrap that contacts orbiting scroll wrap, and
at least one repositionable gate (check valve 70 with plate 72, see positions in Figure 6) comprising a sealing surface (see Figure 6 closed position of plate 70 sits on sealing surfaces of the fixed scroll and plate 72) and an aperture (discharge port 60), the aperture of the repositionable gate being selectively aligned with one of the high pressure port or the low pressure port of the housing (selectively aligned with discharge outlet 81 when in open position) to comprise at least one of an adjustable high pressure opening (high pressure openings of check valve 70 as seen in Figure 6) and an adjustable low pressure opening between the first and second bodies and the high pressure or low pressure port (see Figures 1, 2, and 6), and
wherein the axial surfaces of the first and second bodies intermesh with one another to form at least two chambers (interior spaces 8, see e.g. Figure 32 showing the wraps intermeshing and forming at least two chambers) therebetween when at least the first rotor is rotating via the first shaft, each chamber of the at least two chambers having a variable volume as each chamber orbits around the first rotational axis (as known in scroll compressor art, the chambers reduce in size as the fluid flows towards the center, see Figure 32 for example), and wherein the at least one of the adjustable high pressure opening and adjustable low pressure opening is configured to selectively communicate with one or more of the at least two chambers as the at least two chambers orbit around the first rotational axis (see Figures and Col. 6, Lines 66+, high pressure openings of check valve 70 communicate with interior space 8 of the scrolls).
With regards to Claim 4:
Won discloses the shafts are co-linear (see Figure 1 of Won, shaft 10 and axial protrusion of fixed scroll 20 are co-linear).
With regards to Claim 5:
Won discloses the second complementary member is a stator (“non-orbiting scroll plate 20”, Col. 5, Line 5).
Claims 1 – 3, 6, 8 – 11, and 25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Juan et al. (hereafter “Juan” – US 2019/0271317).
With regards to Claim 1:
Juan discloses a rotary positive displacement device, comprising:
a housing (housing 55A, Figure 1) having a low pressure port (intake passageway 186 through intake connection 112, Figure 34) and a high pressure port (discharge passageway 194 through discharge connection 234, Figure 36);
first and second complementary members (driver rotor 76, idler rotor 28, Figure 39), wherein the first complementary member is a first rotor (driver rotor 76), the first rotor comprising a first body (as seen in Figure 39) connected to a first shaft (shaft 64, Figure 39) that is rotatable about a first rotational axis (axis 639, Figure 2), the first body comprising an outer surface (outer surfaces 62, Figure 39) and an axial surface (axial surfaces 84B), the second complementary member (idler rotor 28) comprising a second body (as seen in Figure 39) connected to a second shaft (shaft 40), the second body comprising an outer surface (surfaces 36) and an axial surface (axial surfaces 84A), and
at least one repositionable gate (neckband 26 with gates 170, 172, Figures 9 – 32) comprising a sealing surface (Figures 8, Paragraphs 297, 298) and an aperture (holes 196, openings 192, 188), the aperture of the repositionable gate being selectively aligned with one of the high pressure port or the low pressure port of the housing to comprise at least one of an adjustable high pressure opening and an adjustable low pressure opening between the first and second bodies and the high pressure or low pressure port (see Figures 34, 36 and Paragraphs 298, 376) and
wherein the axial surfaces of the first and second bodies intermesh with one another to form at least two chambers (chambers 144A – 144C, Figures 9 – 32) therebetween when at least the first rotor is rotating via the first shaft (Paragraphs 217, 218), each chamber of the at least two chambers having a variable volume as each chamber orbits around the first rotational axis (see Figures 9 – 32 and Paragraphs 217, 218), and
wherein the at least one of the adjustable high pressure opening and adjustable low pressure opening is configured to selectively communicate with one or more of the at least two chambers as the at least two chambers orbit around the first rotational axis (see Figures 9 – 32 and Paragraphs 375, 376).
With regards to Claim 2:
Juan discloses the outer surfaces of the first and second bodies are both selected from a group comprising: frusto-spherical, frusto-cylindrical, frusto-conical, swept, planar (see Figures 9 – 32 and Paragraph 229: “rotor outer frusto-spherical surfaces (36 and 62)”).
With regards to Claim 3:
Juan discloses the adjustable high pressure opening or adjustable low pressure opening further comprises a circumferential conduit in the housing (secondary intake passageway 190, Figure 34 for low pressure opening, and discharge passageway 194 for high pressure opening) and a stationary aperture (intake passageway 186 for low pressure opening, and discharge connection 234 for high pressure opening) in the housing, the circumferential conduit and the stationary aperture in the housing both in fluid communication with one of the corresponding high pressure port or the low pressure port and the aperture in the at least one repositionable gate so as to increase a flow area located between the high pressure port or low pressure port and the at least two chambers (see Figures and Paragraphs 375, 376).
With regards to Claim 6:
Juan discloses the second body is a second rotor (idler rotor 28) and the second shaft is rotatable about a second rotational axis (axis 637, Figure 2), and the first rotational axis intersects the second rotational axis (Paragraph 218: “with non-parallel intersecting axes 637 and 639 as seen in FIG. 2”), and wherein each of the axial surfaces (axial surfaces 84A, 84B, Figure 39) of the first and second bodies of the first and second rotors comprises at least one teardrop surface (see Figures 39, 42, 50, 53, portion of axial surfaces 84A, 84B form a “teardrop” shape, see also Paragraph 373 for discussion of teardrop volume 145) and at least one engagement surface (tips of lobes 78, Figures 39, 42), the at least one teardrop surface and the at least one engagement surface together defining at least one lobe (lobes 78A, 78B) and a corresponding valley (valleys 82A, 82B), and
wherein each outer surface of the first and second bodies of the first and second rotors is frusto-spherical (see Figures 9 – 32 and Paragraph 229: “rotor outer frusto-spherical surfaces (36 and 62)”), and
wherein the axial surfaces of the first and second rotors are each configured to intermesh with one another such that the at least two chambers formed therebetween are separated by the axial surfaces of the first and second rotors (Figures 9 – 32 and Paragraphs 217, 218), and
wherein the at least one of the adjustable high pressure opening and low pressure opening is positioned along the outer surface of the first rotor and adjacent to at least one side of the valley of the first rotor (Paragraph 375: “the neckband 26 may be fastened to the idler rotor 28 such that holes 196 in the neckband 26 remain immediately radially of the idler rotor valleys 84A”).
With regards to Claim 8:
Juan discloses the at least one repositionable gate is sandwiched between the first rotor and the housing (see Figures 8A, 8B, gates 170, 172 sandwiched between rotor and housing) and wherein the aperture of the repositionable gate may be selectively circumferentially positioned relative to the position of the at least two chambers (Paragraph 375: “circumferential adjustment of the primary gate 170”).
With regards to Claim 9:
Juan discloses the at least one repositionable gate is selectively circumferentially positioned so as to align the aperture of the at least one repositionable gate with each chamber of the at least two chambers such that each chamber will pass the corresponding aperture at a selected volume ratio and volumetric capacity of each chamber of the at least two chambers (Paragraph 375: “a control system may be used that attempts to minimize the input driver power consumption by adjusting the position of the primary gate 170 in that opening the chamber 144 early or late to the discharge passageway 194 may result in increased power consumption. In the example shown in FIGS. 11-20, the secondary gate 172 is positioned so that there may not be capacity control, and the primary gate 170 was positioned for a high compression ratio case. When comparing the example shown in FIGS. 9-11 to the example shown in FIGS. 21-23 which is also at the 0 degree rotational position, it can be understood that the intake cavity 188 is extended circumferentially by adjusting the position of the secondary gate 172. The circumferential adjustment of the primary gate 170 may be somewhat comparable to that of the secondary gate 172 to allow for a comparable compression ratio”, see also Paragraphs 378, 379).
With regards to Claim 10:
Juan discloses a stationary aperture (intake passageway 186 for low pressure opening, and discharge connection 234 for high pressure opening) in the housing having stationary leading and trailing edges (see Figures 34, 36), and wherein the aperture in the at least one repositionable gate comprises adjustable leading and trailing edges (via openings 196, 192, 188, see discussion of adjustment in Paragraph 375), and wherein the configuration of the at least one adjustable high pressure opening and low pressure opening may be changed by selectively positioning the aperture of the at least one repositionable gate relative to the at least one corresponding stationary aperture in the housing (Paragraphs 378 – 380).
With regards to Claim 11:
Juan discloses the at least one repositionable gate is positioned to selectively form a seal between the high pressure port and low pressure port by selectively repositioning the aperture and the sealing surface of the at least one repositionable gate (the aperture and the sealing surface are both part of the circumferentially adjustable gate, such that adjusting one of the aperture or sealing surface would adjust the other – see also Paragraph 298: “the surfaces of the intake gate 54 may seal the chamber 144A between rotors after the maximum volume position”).
With regards to Claim 25:
Juan discloses the at least one of the adjustable high pressure opening and adjustable low pressure opening is positioned at the outer surface of at least one of the first and second bodies of the first and second complementary members (see e.g. Figure 17, hole 196 aligned with rotor valley, meaning one of the ends of the hole is located at an outer surface of the rotor 28 – note that being located at the surface does not mean being located on the surface).
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 of this title, 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 7 is rejected under 35 U.S.C. 103 as being unpatentable over Juan et al. (hereafter “Juan” – US 2019/0271317) in view of Klassen (WO 99-61753).
With regards to Claim 7:
Juan does not explicitly disclose the at least one engagement surface of the axial surface of at least one rotor of the first and second rotors includes a radial recess extending along the at least one engagement surface, the radial recess extending to an outer diameter of the at least one rotor. Klassen (Figures 19A – 19C) teaches a similar rotary positive displacement device including rotors (204, 206) comprising lobes and corresponding valleys as well as axial teardrop shaped surfaces (see Figures 19A – 19C). Klassen further teaches the at least one engagement surface (sealing surface 200) of the axial surface of at least one rotor of the first and second rotors includes a radial recess (recess 208) extending along the at least one engagement surface, the radial recess extending to an outer diameter of the at least one rotor (see Page 35: “a recess or channel area 208 which extends radially across the rotor base”). Klassen teaches that “the channels 208 eliminate direct contact between the two sealing surfaces so as to form a relief gap 220, as is shown in FIG. 19C. The relief gap reduces sheer stresses on fluid in this area, and also allows particulate or abrasive material to pass therethrough without causing wear against the sealing surfaces. Furthermore, the relief gap reduces wear by eliminating a potential content between the sealing surfaces during the intermediate phases of the engine cycle, even in applications not being used with abrasive fluids” (Page 35). MPEP 2143A teaches it is obvious to combine prior art elements according to known methods in order to yield predictable results. In this case, the addition of radially extending recesses at the engagement surfaces is known in the art to reduce wear and it would have been obvious to one of ordinary skill in the art to modify the system of Juan by adding such recesses in order to yield the predictable benefits described above.
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Juan et al. (hereafter “Juan” – US 2019/0271317).
With regards to Claims 14 and 15:
Juan does not explicitly disclose the at least one repositionable gate is selectively circumferentially positionable via an actuator, wherein the actuator drives a worm drive and wherein the at least one repositionable gate comprises a worm wheel of the worm drive. Juan does teach that a “control system may… [adjust] the position of the primary gate 170” (Paragraph 375) but provides no structure of the control system. In another embodiment (Figures 103 – 136), Juan teaches another repositionable gate (171) performing a similar function as that of the primary gate in the embodiment of Figures 1 – 39. In this other embodiment, Juan teaches that “[t]he circumferential position of the primary gate 171 shown in FIGS. 131-135 may be controlled by methods known in the art, such as by hydraulic or electric actuation. In FIG. 103, a small worm gear 187 on an input shaft 189 is shown to be intermeshed with gear 185. The input shaft 189 may be rotated manually, or by other methods known in the art to relatively slowly adjust the rotational/circumferential position of the primary gate 171 via the gear 185” (Paragraph 391). MPEP 2143A teaches it is obvious to combine prior art elements according to known methods in order to yield predictable results. In this case, the use of a worm drive actuator to reposition a gate is known in the art, and it would have been obvious to one of ordinary skill in the art to modify Juan by automating the repositioning of the gates using a worm drive actuator in order to yield the predictable result of changing output flow characteristics and improving device performance/efficiency (Paragraph 391).
Allowable Subject Matter
Claims 12 and 13 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 16 and 17 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and upon filing and approval of a terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d).
Claims 18 and 19 are allowed.
Claims 20 – 24 would be allowable upon filing and approval of a terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/Laert Dounis/
Primary Examiner, Art Unit 3746
Friday, May 29, 2026
/MARK A LAURENZI/Supervisory Patent Examiner, Art Unit 3746
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