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 .
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 2 – 21 are entitled to a priority date of May 12, 2021.
Title
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. Examiner suggests amending the title to incorporate a rotor with a surface recess and multiple fluid passageways.
Claim Interpretations Under 35 USC § 112
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.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
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.
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.
Similarly, an application may include 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.
The following Claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
Claim 21: first means (generic placeholder) for providing fluidic communication between the surface recess and the first fluid port of the housing (function).
Claim 21: second means (generic placeholder) for providing fluidic communication between the surface recess and the first fluid port of the housing (function).
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.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
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 2 – 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 28 of US Patent No. 12203474. Although the claims at issue are not identical, they are not patentably distinct from each other as shown in the comparative table below:
Claim 2 of Instant Application
Claim 1 of US 12203474
A pump comprising:
a housing having an interior surface, the housing comprising a first fluid port and a second fluid port; and
a rotor installed in the housing, the rotor comprising: a housing engaging surface area forming a sealing interference fit with the interior surface of the housing;
a surface recess that forms a fluid-conveying chamber with the interior surface of the housing that, on rotation of the rotor within the housing, conveys fluid from the first fluid port to the second fluid port;
a first fluid passageway extending partially through the surface recess and having a first opening at a first end of the rotor, the first opening being in fluidic communication with the first fluid port of the housing; and
a second fluid passageway extending partially through the surface recess and having an opening at a second, opposite, end of the rotor, the second opening being in fluidic communication with the second fluid port of the housing.
A pump comprising,
a first fluid port and a second fluid port,
a housing having an interior surface defining a cavity,
a rotor, being rotatably mounted within the housing and having a longitudinal axis of rotation, and comprising, a housing engaging surface area forming a sealing interference fit with the interior surface of the housing, and a surface recess that forms with said interior surface of the housing a fluid-conveying chamber that, on rotation of the rotor, conveys fluid from the first fluid port to the second fluid port,
a plurality of resiliently deformable diaphragms each providing part of the interior surface of the housing, each diaphragm comprising a rotor engaging surface and a rear surface opposite the rotor engaging surface, the rotor engaging surface of each diaphragm being urged into contact with the rotor by a spring force acting on the rear surface of the diaphragm, a number of resiliently deformable diaphragms exceeds a number of surface recesses on the rotor,
the rotor comprising an elongate body and a drive shaft, which body is substantially hollow and comprises separate first and second rotor cavities, the first rotor cavity having an opening at a first end of the rotor and the second rotor cavity having an opening at a second end of the rotor, the rotor further comprising a first opening between the first rotor cavity and the surface recess and a second opening between the surface recess and the second rotor cavity,
the pump being arranged such that when the rotor is located within the cavity in the housing, the first fluid port is in fluid flow communication with the first rotor cavity via the opening at the first end of the rotor, and the second fluid port is in fluid flow communication with the second rotor cavity via the opening at the second end of the rotor, and
the pump being arranged such that at least one of the resiliently deformable diaphragms always bisects the first opening and the second opening on the rotor surface recess as the rotor rotates.
As seen above, the instant claim is a broader version of the US Patent claim, with the recited first and second passageway corresponding to the first and second openings of the US Patent. As such, the US Patent claim anticipates the instant claim.
Although no comparative table is shown, the other claims are also rejected over the US Patent claims or over the US Patent in view of one of the prior art references relied on below.
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.
Claims 2 – 11 and 20 are 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 2 recites the second opening. The metes and bounds of the claim are unascertainable because the second opening lacks antecedent basis. The claim introduces an opening at a second, opposite, end of the rotor. For examination purposes, the second opening will be interpreted as the opening at a second, opposite end of the rotor. Examiner suggests amending to …having [[an]] a second opening at a second, opposite, end of the rotor, the second opening…
Claims 3 – 11 are rejected by virtue of their dependence on Claim 2.
Claim 20, Last line recites the opening. The metes and bounds of the claim are unascertainable because the claim requires first and second openings and it is unclear which opening is being referred to by the opening. For examination purposes, the opening will be interpreted as each opening, and examiner suggests amending to …as each opening passes through the respective end of the rotor.
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 2, 9, 12, and 21 are rejected under 35 U.S.C. 102(A)(1) as being anticipated by Wheeler et al. (hereafter “Wheeler” – US 6976832).
With regards to Claims 2 and 21:
Wheeler discloses a pump (Figures 1 – 18) comprising:
a housing (outer housing 14) having an interior surface, the housing comprising a first fluid port (at inlet end 20) and a second fluid port (at outlet end 22); and
a rotor (inner housing 12) installed in the housing (note that although Wheeler mostly describes the outer housing rotating relative to the inner housing, Col. 4, Lines 53+ discloses: “the outer housing 14 is formed as a rotor (ie rotates) while the inner housing 12 acts as a stator (ie is fixed). However, this can be easily reversed so that the outer housing 14 is stationary and the inner housing 12 rotates” – in this rejection, the inner housing is relied on as the rotor), the rotor comprising:
a housing engaging surface area (lobes 30) forming a sealing interference fit with the interior surface of the housing (see abstract, lobes 30 constrain movement of fluid, thus a sealing fit must be present);
a surface recess (outer circumferential surface 28 of inner housing 12, between the lobes 30, see stepped configuration in Figure 11) that forms a fluid-conveying chamber (chambers 34, 36) with the interior surface of the housing that, on rotation of the rotor within the housing, conveys fluid from the first fluid port to the second fluid port (see Figure 4);
a first means for providing fluidic communication between the surface recess and the first fluid port of the housing, the first means including a first fluid passageway (see Figure 11, note stepped diameter of inner hosing 20, see step down from outermost, non-lobe radial surface on inner housing, leading to intake ports 24) extending partially through the surface recess and having a first opening (intake ports 24) at a first end of the rotor, the first opening being in fluidic communication with the first fluid port of the housing (see Figure 4, fluid enters at inlet end 20 and flows through intake ports 24 before being directed to chambers 34, 36); and
a second means for providing fluidic communication between the surface recess and the first fluid port of the housing, the second means including a second fluid passageway (see Figure 11, note stepped diameter of inner hosing 20, see step down from outermost, non-lobe radial surface on inner housing, leading to exhaust ports 24) extending partially through the surface recess and having an opening (exhaust port 26) at a second, opposite, end of the rotor (as seen in Figure 4), the second opening being in fluidic communication with the second fluid port of the housing (see Figure 4, fluid enters from chambers 34, 36 and flows through exhaust ports 26 before being directed to outlet end 22).
With regards to Claim 9:
Wheeler discloses the rotor comprises a substantially cylindrical body (see inner housing 12 including lobes 30) in which the surface recess is formed (recesses between lobes 30), and the housing engaging surface area comprises the whole cylindrical surface of the rotor except the surface recess (all recesses between the lobes are non-engaging with the interior wall of the housing, while the lobes are engaged).
With regards to Claim 12:
Wheeler discloses a pump (Figures 1- 18) comprising:
a housing (outer housing 14) having an interior surface, the housing comprising a first fluid port (at inlet end 20) and a second fluid port (at outlet end 22); and
a rotor (inner housing 12) installed in the housing (note that although Wheeler mostly describes the outer housing rotating relative to the inner housing, Col. 4, Lines 53+ discloses: “the outer housing 14 is formed as a rotor (ie rotates) while the inner housing 12 acts as a stator (ie is fixed). However, this can be easily reversed so that the outer housing 14 is stationary and the inner housing 12 rotates” – in this rejection, the inner housing is relied on as the rotor), and having a longitudinal axis of rotation (see dashed line running through center of inner housing 12 in Figure 4), the rotor comprising:
a housing engaging surface area (lobes 30) forming a sealing interference fit with the interior surface of the housing (see abstract, lobes 30 constrain movement of fluid, thus a sealing fit must be present);
a first fluid passageway (see Figure 11, note stepped diameter of inner hosing 20, see step down from outermost, non-lobe radial surface on inner housing, leading to intake ports 24) having a first opening (intake ports 24) at a first end of the rotor, the first opening being in fluidic communication with the first fluid port of the housing (see Figure 4, fluid enters at inlet end 20 and flows through intake ports 24 before being directed to chambers 34, 36);
a second fluid passageway (see Figure 11, note stepped diameter of inner hosing 20, see step down from outermost, non-lobe radial surface on inner housing, leading to exhaust ports 24) having an opening (exhaust port 26) at a second, opposite, end of the rotor (as seen in Figure 4), the second opening being in fluidic communication with the second fluid port of the housing (see Figure 4, fluid enters from chambers 34, 36 and flows through exhaust ports 26 before being directed to outlet end 22); and
a plurality of surface recesses (outer circumferential surfaces 28 of inner housing 12, between the lobes 30, see stepped configuration in Figure 11), each forming a fluid-conveying chamber (chambers 34, 36) with the interior surface of the housing that, on rotation of the rotor within the housing, conveys fluid from the first fluid port to the second fluid port, wherein the first fluid passageway extends partially through each surface recess, and the second fluid passageway extends partially through each surface recess (see Figure 4).
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.
Claims 4 – 7, 13 – 15, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Wheeler et al. (hereafter “Wheeler” – US 6976832) in view of Hayes-Pankhurst et al. (hereafter “Hayes-Pankhurst” – US 2015/0260195).
With regards to Claims 4, 13, and 19:
Wheeler discloses at least two surface recesses (outer circumferential surfaces 28 of inner housing 12, between the lobes 30, see stepped configuration in Figure 11), and at least three elements (swinging gates 16) providing part of the interior surface of the housing (as shown in Figure 2, located on interior surface of outer housing 14), each element comprising a rotor engaging surface (se Figures 2, 3, and abstract: “the gates (16) are biased so as to ordinarily seal against the inner housing (12)”). and a rear surface opposite the rotor engaging surface see Figures 2, 3), wherein the rotor engaging surface of each element is urged into contact with the rotor by a spring force (via spring 18) acting on the rear surface of the element.
Wheeler does not explicitly disclose the elements are resiliently deformable diaphragms. Hayes-Pankhurst (Figure 6) teaches another rotary machine including an element essentially providing the same function as the gates of Wheeler, separating an inlet and an outlet during rotation of the rotor. In Hayes-Pankhurst, the element is a resiliently deformable diaphragm (diaphragm seal 24, deformable as shown in Figure 6, and described in Paragraph 22: “an elastomeric material that is compliant, flexible and resilient, such as silicone rubber”) and including a spring (23) to bias the deformable diaphragm. A deformable diaphragm would conform better to the shape of a rotor and would provide a better seal relative to a rigid seal. Given the teachings of Hayes-Pankhurst, it would have been obvious to one of ordinary skill in the art to modify the system of Wheeler by replacing the gates with deformable diaphragms as shown in Hayes-Pankhurst in order to yield the predictable benefits described above.
With regards to Claims 5 and 14:
The Wheeler modification of Claim 4 teaches a number of resiliently deformable diaphragms exceeds a number of surface recesses on the rotor (see Figure 2 of Wheel, gates 16 outnumber the recesses between the lobes 30, and upon modification with Hayes-Pankhurst to replace the gates with diaphragms, they would still outnumber the recesses).
With regards to Claims 6 and 15:
The Wheeler modification of Claim 4 teaches the spring force is applied by at least one of: a spring (spring 23 of Hayes-Pankhurst, spring 18 of Wheeler), a resilient member, or a fluid acting on the rear surface of each of the resiliently deformable diaphragms.
With regards to Claim 7:
The Wheeler modification of Claim 4 teaches one or each resiliently deformable diaphragm comprises a linear rib (sidewalls 28a, 28b, Figure 6 of Hayes-Pankhurst) extending longitudinally along a length of the rear surface of the diaphragm (see Figure 6 and Paragraph 22).
Claims 13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Wheeler et al. (hereafter “Wheeler” – US 6976832) in view of Hayes-Pankhurst et al. (hereafter “Hayes-Pankhurst” – US 2019/0048871).
With regards to Claims 13 and 16:
Wheeler discloses a plurality of elements (swinging gates 16) providing part of the interior surface of the housing (as shown in Figure 2, located on interior surface of outer housing 14), each element comprising a rotor engaging surface (se Figures 2, 3, and abstract: “the gates (16) are biased so as to ordinarily seal against the inner housing (12)”). and a rear surface opposite the rotor engaging surface see Figures 2, 3), wherein the rotor engaging surface of each element is urged into contact with the rotor by a spring force (via spring 18) acting on the rear surface of the element.
Wheeler does not explicitly disclose the elements are resiliently deformable diaphragms or the spring force is applied by a fluid acting on the rear surface of each of the resiliently deformable diaphragms, and wherein the fluid is a pumped fluid. Hayes-Pankhurst (Figure 1C) teaches another rotary machine including an element essentially providing the same function as the gates of Wheeler, separating an inlet and an outlet during rotation of the rotor. In Hayes-Pankhurst, the element is a resiliently deformable diaphragm (diaphragm portion 110, deformable as shown in Figure 1C, and described in Paragraphs 31, 32) and including a spring force (biasing member 400) to bias the deformable diaphragm, the biasing member being a fluid acting on the rear surface of each of the resiliently deformable diaphragms, and wherein the fluid is a pumped fluid (Paragraph 32: “the resilient biasing mechanism may comprise some of the pumped fluid being re-directed to apply force onto the diaphragm portion, urging it against a rotor; or it may comprise the same kind of fluid as that being pumped, or a different kind of fluid, being supplied from an external source to apply force onto the diaphragm portion against the rotor”). A deformable diaphragm would conform better to the shape of a rotor and would provide a better seal relative to a rigid seal. Given the teachings of Hayes-Pankhurst, it would have been obvious to one of ordinary skill in the art to modify the system of Wheeler by replacing the gates with deformable diaphragms and its fluid-based biasing member as shown in Hayes-Pankhurst in order to yield the predictable benefits described above.
Allowable Subject Matter
Claims 3, 8, 10, 11, and 20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims, and upon timely filing of a terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d).
Claims 17 and 18 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and upon timely filing of a terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d).
Additional References
Please see attached PTO-892 form for additional references which are made of record but not relied upon for the current grounds of rejection.
Maria (WO 2015/001571) – see Figures 10 – 16, pump mechanism wherein fluid traverses both inside and outside of rotor in a manner similar to the claimed invention.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAERT DOUNIS whose telephone number is (571)272-2146. The examiner can normally be reached on Mon. - Thurs: 10a - 4:30p.
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/Laert Dounis/
Primary Examiner, Art Unit 3746
Wednesday, January 28, 2026