DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of Species 2, Fig 16 & Sub-species A, Fig 1-10 in the reply filed on 02/03/2026 is acknowledged. The traversal is on the ground(s) that the election of species is not proper because none of the claim have limitations directed to the location of the motor or the means of determining motor speed, and that none of the claims have limitations directed to the specific arrangement of the control sliders, and because of this none of the pending claims are withdrawn as a result of the election requirement.
This is not found persuasive because the purpose of an election of species is not merely to reduce the number of claims being examined, but to eliminate undue search burden. Furthermore, based on the current record, the different species and the different sub-species are not obvious variants, and Applicants remarks do not indicate that the different species and the different sub-species are obvious variants, thus it is understood that the election requirement is proper. Accordingly Applicants arguments are not persuasive.
The requirement is still deemed proper and is therefore made FINAL.
Claim Interpretation
The examiner notes that, because of the disclosure of ¶0195 of the SPEC filed on 01/27/2025 which states:
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Is understood to be a special definition, and that phasing of the motor is defined as the direction of rotation of the motor, when the claims are read in light of the SPEC.
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 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:
Compressor operational control unit in claims 1 & 26. It is noted that since the independent claims state that the compressor operational control unit is configured to perform a compressor operating function – it is understood that the compressor operational control unit is configured to perform all of the claimed compressor operating functions recited in dependent claims 2-9, 25, 27-33, and 49.
Injection element in claims 7 & 31.
for compressed medium for the purpose of additional cooling.
Communication unit in claims 12 & 36.
for exchanging data with external devices.
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.
Regarding the compressor operational control unit – the corresponding structure is not disclosed, see the 112(b) rejections below.
Regarding the injection element – the corresponding structure is not disclosed, see the 112(b) rejections below.
Regarding the communication unit – the corresponding structure is not disclosed, see the 112(b) rejections below.
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 Objections
Claim 5 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 3.
Claim 30 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 28.
When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claims 17-21, 24-49 are objected to because of the following informalities:
Claims 3, 5 & 6 Line 1-2 currently states in part:
“wherein the compressor operating function is a protective function”.
Should be changed to state:
--wherein the compressor operating function [[is]] additionally includes a protective function--.
Claim 17 Line 14 currently states:
“the direction of displacement parallel to the two screw rotor axes, and is configured such that the”.
Should be changed to state:
--the direction of displacement parallel to the two screw rotor axes of the two screw rotors, and is configured such that the--.
Claim 24 Line 3-10 currently states:
“unit takes into account at least one of the parameters:
pressure level on an input side at low pressure;
pressure level on an output side at high pressure;
temperature of the gaseous medium on the input side at the low pressure; temperature of the gaseous medium on the output side at the high pressure; speed of rotation of the at least one screw rotor;
power consumption of a drive motor; and
parameters of the gaseous medium.”.
Should be changed to state:
--unit takes into account at least one of the parameters:
pressure level on an input side at low pressure;
pressure level on an output side at high pressure;
temperature of the gaseous medium on the input side at the low pressure;
the temperature of the gaseous medium on the output side of the screw compressor at the high pressure;
speed of rotation of the at least one screw rotor;
power consumption of a drive motor; and
parameters of the gaseous medium.--.
This change is made to make clear all the items which are included in the list of the parameters being claimed.
Claim 25 Line 4-6 currently states:
“monitoring function, a parameter detected by at least one parameter determining function and/or a control operation of at least one control function and/or at least one protective function is recorded over time.”.
Should be changed to state:
--monitoring function, a [[parameter detected]] function parameter determined by [[at least one]] the parameter determining function and/or a control operation of at least one control function and/or at least one protective function is recorded over time.--.
Claim 26 Line 13 currently states:
“herein the screw compressor has a compressor operational control unit configured to”.
Should be changed to state:
--[[herein]] wherein the screw compressor has a compressor operational control unit configured to--.
Claim 27 Line 1-3 currently states:
“wherein the operation assisting function, that assists the at least one operation of the compressor unit, is a parameter determining function and, in order to perform the parameter determining function, determines at”.
Should be changed to state:
--wherein the parameter determining function determines at--.
Claim 29 Line 1-3 currently states:
“wherein the operation assisting function, that assists the at least one operation of the compressor unit, is a parameter determining function, and in order to perform the parameter determining function, the operation”.
Should be changed to state:
--wherein
Claim 29 Line 4-10 currently states:
“assisting function determines at least one of the following function parameters:
pressure of the gaseous medium on an input side of the screw compressor;
temperature of the gaseous medium on the input side of the screw compressor;
pressure of the gaseous medium on an output side of the screw compressor;
a position of the at least one control slider; speed of rotation of a drive motor;
voltage at the drive motor; and
current consumption of the drive motor. ”.
Should be changed to state:
--assisting function determines at least one of the following function parameters:
pressure of the gaseous medium on an input side of the screw compressor;
temperature of the gaseous medium on the input side of the screw compressor;
pressure of the gaseous medium on an output side of the screw compressor;
a position of the at least one control slider;
speed of rotation of a drive motor;
voltage at the drive motor; and
current consumption of the drive motor.--.
This change is made to make clear all the items which are included in the list of the function parameters being claimed.
Claim 41 Line 5 currently states:
“on the compressor housing to be rotatable about the respective screw rotor axis, engage in”.
Should be changed to state:
--on the compressor housing to be rotatable about axes, engage in--.
Claim 41 Line 16 currently states:
“direction of displacement parallel to the two screw rotor axes, and is configured such that the”.
Should be changed to state:
--direction of displacement parallel to the two screw rotor axes of the two screw rotors, and is configured such that the--.
Claim 48 Line 3-10 currently states:
“account at least one of the parameters:
pressure level on an input side at low pressure; pressure level on an output side at high pressure;
temperature of the gaseous medium on the input side at the low pressure; temperature of the gaseous medium on the output side at the high pressure; speed of rotation of the at least one screw rotor;
power consumption of a drive motor; and
parameters of the gaseous medium.”.
Should be changed to state:
--account at least one of the following parameters:
pressure level on an input side at low pressure; pressure level on an output side at high pressure;
temperature of the gaseous medium on the input side at the low pressure; temperature of the gaseous medium on the output side at the high pressure; speed of rotation of the at least one screw rotor;
power consumption of a drive motor; and
parameters of the gaseous medium.--.
Claim 49 Line 4-5 currently states:
“function, a parameter detected by at least one parameter determining function and/or a control operation of at least one control function is recorded over time.”.
Should be changed to state:
-- function, a [[parameter detected]] function parameter determined by [[at least one]] the parameter determining function and/or a control operation of at least one control function is recorded over time.--.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-49 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 7: Line 1-3 states in part: “wherein the operation assisting function, that assists the at least one operation of the compressor unit, is a control function”. It is unclear the exact limitations the applicant is introducing here, specifically in independent claim 1 the operation assisting function has already been defined as being a parameter determining function, thus it is unclear if Applicant intends to refer back to the same operation assisting function, or if Applicant intends to claim a different operation assisting function? However, when looking back to the SPEC (¶0086) indicates that the parameter determining function and the control function can be recorded at the same time, thus they must be different functions. Accordingly for the purpose of examination the language in question will be read as: --wherein [[the]] an additional operation assisting function, that assists the at least one operation of the compressor unit, is a control function--.
Regarding Claim 8: Line 1-4 states in part: “wherein the operation assisting function, that assists the at least one operation of the compressor unit, is an operating state predetermining function in which a control function is performed on the basis of at least one request signal”. It is unclear the exact limitations the applicant is introducing here, specifically in independent claim 1 the operation assisting function has already been defined as being a parameter determining function, thus it is unclear if Applicant intends to refer back to the same operation assisting function, or if Applicant intends to claim a different operation assisting function? However when looking back to the SPEC (¶0086) indicates that the parameter determining function and the operating state predetermining function can be recorded at the same time, thus they must be different functions. Accordingly for the purpose of examination the language in question will be read as:-- wherein [[the]] another operation assisting function, that assists the at least one operation of the compressor unit, is an operating state predetermining function in which a control function is performed on the basis of at least one request signal--.
Regarding Claim 9: Line 1-3 states in part: “wherein the operation assisting function, that assists the at least one operation of the compressor unit, is an operating state monitoring function”. It is unclear the exact limitations the applicant is introducing here, specifically in independent claim 1 the operation assisting function has already been defined as being a parameter determining function, thus it is unclear if Applicant intends to refer back to the same operation assisting function, or if Applicant intends to claim a different operation assisting function? However when looking back to the SPEC (¶0086) indicates that the parameter determining function and the operating state monitoring function can be recorded at the same time, thus they must be different functions. Accordingly for the purpose of examination the language in question will be read as:--wherein [[the]] a supplemental operation assisting function, that assists the at least one operation of the compressor unit, is an operating state monitoring function--.
Regarding Claim 10: Line 1-3 states: “wherein a control operation of the control function is recorded, and the recording of the parameter and/or a performance of the at least one control function takes place over time.” It is unclear the exact limitations the applicant is introducing here, because the limitation "the recording of the parameter " in Line 2 & the limitation "the at least one control function" in Line 3, have insufficient antecedent basis in the claim. However, when looking back to the SPEC (¶0027) it states that the control function and the parameter determining function can be recorded at the same time during the operating state monitoring function. Accordingly for the purpose of examination the language in question will be read as: --wherein a control operation of the control function is recorded, and determining function and/or a performance of the at least one control function takes place over time.--.
Regarding Claim 17: Claim 17 recites the limitation "the respective screw rotor axis" in Line 3. There is insufficient antecedent basis for this limitation in the claim.
Regarding Claim 25: Line 1-3 states in part: “wherein the operation assisting function, that assists the at least one operation of the compressor unit, is an operating state monitoring function”. It is unclear the exact limitations the applicant is introducing here, specifically in independent claim 1 the operation assisting function has already been defined as being a parameter determining function, thus it is unclear if Applicant intends to refer back to the same operation assisting function, or if Applicant intends to claim a different operation assisting function? However when looking back to the SPEC (¶0086) indicates that the parameter determining function and the operating state monitoring function can be recorded at the same time, thus they must be different functions. Accordingly for the purpose of examination the language in question will be read as:--wherein [[the]] a supplemental operation assisting function, that assists the at least one operation of the compressor unit, is an operating state monitoring function--.
Regarding Claim 26: Line 16-18 states: “wherein the operation assisting function, that assists the at least one operation of the compressor unit, is a parameter determining function, and in order to perform the parameter determining function determines at least one of the following function parameters:”. It is unclear the exact limitations the applicant is introducing here, specifically the language and in order to perform the parameter determining function determines at least one of the following function parameters: does not make sense as currently written. However since the language of claim 26 is similar to claim 1, and the language of claim 1 Line 16-19 makes sense as written, for the purpose of examination, the claim language in question will be read as: --wherein the operation assisting function, that assists the at least one operation of the compressor unit, is a parameter determining function, and in order to perform the parameter determining function, the parameter determining function determines at least one of the following function parameters:--.
Regarding Claims 28 & 30, : Line 1-2 states in part: “wherein the compressor operating function is a protective function”. It is unclear the exact limitations the applicant is introducing here, specifically in independent claim 26 the compressor operating function has already been defined as being a parameter determining function, thus it is unclear if Applicant intends to refer back to the same compressor operating function, or if Applicant intends to claim a different compressor operating function? However, when looking back to the SPEC (¶0082-¶0083) indicates that the protective function is a compressor operating function that is provided in addition to the compressor operating function that is the parameter determining function. Accordingly for the purpose of examination the language in question will be read as: --wherein [[the]] a further compressor operating function is a protective function--.
Regarding Claim 31: Line 1-3 states in part: “wherein the operation assisting function, that assists the at least one operation of the compressor unit, is a control function”. It is unclear the exact limitations the applicant is introducing here, specifically in independent claim 26 the operation assisting function has already been defined as being a parameter determining function, thus it is unclear if Applicant intends to refer back to the same operation assisting function, or if Applicant intends to claim a different operation assisting function? However, when looking back to the SPEC (¶0086) indicates that the parameter determining function and the control function can be recorded at the same time, thus they must be different functions. Accordingly for the purpose of examination the language in question will be read as: --wherein [[the]] an additional operation assisting function, that assists the at least one operation of the compressor unit, is a control function--..
Regarding Claim 32: Line 1-4 states in part: “wherein the operation assisting function, that assists the at least one operation of the compressor unit, is an operating state predetermining function in which a control function is performed on the basis of at least one request signal”. It is unclear the exact limitations the applicant is introducing here, specifically in independent claim 26 the operation assisting function has already been defined as being a parameter determining function, thus it is unclear if Applicant intends to refer back to the same operation assisting function, or if Applicant intends to claim a different operation assisting function? However when looking back to the SPEC (¶0086) indicates that the parameter determining function and the operating state predetermining function can be recorded at the same time, thus they must be different functions. Accordingly for the purpose of examination the language in question will be read as:-- wherein [[the]] another operation assisting function, that assists the at least one operation of the compressor unit, is an operating state predetermining function in which a control function is performed on the basis of at least one request signal--.
Regarding Claim 33: Line 1-3 states in part: “wherein the operation assisting function, that assists the at least one operation of the compressor unit, is an operating state monitoring function”. It is unclear the exact limitations the applicant is introducing here, specifically in independent claim 26 the operation assisting function has already been defined as being a parameter determining function, thus it is unclear if Applicant intends to refer back to the same operation assisting function, or if Applicant intends to claim a different operation assisting function? However when looking back to the SPEC (¶0086) indicates that the parameter determining function and the operating state monitoring function can be recorded at the same time, thus they must be different functions. Accordingly for the purpose of examination the language in question will be read as:--wherein [[the]] a supplemental operation assisting function, that assists the at least one operation of the compressor unit, is an operating state monitoring function--.
Regarding Claim 34: Line 1-2 states: “wherein the recording of the parameter and/or a performance of the at least one control function take place over time.” It is unclear the exact limitations the applicant is introducing here, because the limitation "the recording of the parameter" in Line 1-2 & the limitation "the at least one control function" in Line 2, have insufficient antecedent basis in the claim. However, when looking back to the SPEC (¶0027) it states that the control function and the parameter determining function can be recorded at the same time during the operating state monitoring function. Accordingly for the purpose of examination the language in question will be read as:-- wherein determining function and/or a performance of the at least one control function take place over time.--.
Regarding Claim 49: Line 1-3 states in part: “wherein the operation assisting function, that assists the at least one operation of the compressor unit, is an operating state monitoring function”. It is unclear the exact limitations the applicant is introducing here, specifically in independent claim 26 the operation assisting function has already been defined as being a parameter determining function, thus it is unclear if Applicant intends to refer back to the same operation assisting function, or if Applicant intends to claim a different operation assisting function? However when looking back to the SPEC (¶0086) indicates that the parameter determining function and the operating state monitoring function can be recorded at the same time, thus they must be different functions. Accordingly for the purpose of examination the language in question will be read as:--wherein [[the]] a supplemental operation assisting function, that assists the at least one operation of the compressor unit, is an operating state monitoring function--.
The claim limitations “compressor operational control unit”, “injection element”, and “communication unit” each invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
Additionally, regarding the 112(b) rejections above, the examiner notes that the claims in general need to be clarified with regards to there being plural separate functions.
Regarding the compressor operational control unit – the corresponding structure for the compressor operational control unit is not disclosed in the SPEC. Additionally, as claimed the “compressor operational control unit” is required to perform the parameter determining functions (Claim 1, 2, 4, Claim 26, 27, and 29), the compressor operating functions (Claim 1, 3, 5-6, Claim 26, 28, and 30), and the operation assisting functions (Claim 1, 2, 4, 7-9, 25, Claim 26, 29, 31-33, and 49). When looking back to the SPEC, the written description fails to describe any particular structure used for the compressor operational control unit. Additionally, when looking back to the SPEC the written description fails to describe any relationship/algorithm that the compressor operational control unit uses to perform the claimed functions recited in the claims.
It has been held that: For a computer-implemented 35 U.S.C. 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b). See Net MoneyIN, Inc. v. Verisign. Inc., 545 F.3d 1359, 1367, 88 USPQ2d 1751, 1757 (Fed. Cir. 2008). See also In re Aoyama, 656 F.3d 1293, 1297, 99 USPQ2d 1936, 1939 (Fed. Cir. 2011) . See MPEP §2181 II B.
Regarding the injection element – the corresponding structure is not disclosed in the SPEC.
Regarding the communication unit – the corresponding structure is not disclosed in the SPEC.
Therefore, the claims are indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
Claim 1-49 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.
Regarding the compressor operational control unit – As discussed above, the claims in the instant application modify the non-structural term compressor operational control unit – with various functions. However, when looking back to the SPEC to determine the particular structure associated with the non-structural term the inventor uses to carry out the claimed functions, a PHOSITA is unable to say with reasonable certainty WHAT the associated structure is because the SPEC describes the compressor operational control unit by its function, without describing what the ACTUAL structure the inventor intends to use, or how the intended structure is used to carry out the claimed functions.
Additionally, it has been held that: When a claim containing a computer-implemented 35 U.S.C. 112(f) claim limitation is found to be indefinite under 35 U.S.C. 112(b) for failure to disclose sufficient corresponding structure (e.g., the computer and the algorithm/computer program) in the specification that performs the entire claimed function, it will also lack written description under 35 U.S.C. 112(a). MPEP §2181 II B.
Finally; depending claim(s) inherit deficiencies from the parent claim(s). Appropriate correction is required.
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 26-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-3 of U.S. Patent No. 11460026. Although the claims at issue are not identical, they are not patentably distinct from each other because the narrower claims of USPN 11460026 are able to anticipate claims 26-30.
Instant application
USPN 11460026
Claim 26
Claim 2 teaches all of the limitations
Claim 27
Claim 2 is able to anticipate the claim, since the “at least one” language in Line 3 make optional the limitation “[determining] temperature of the gaseous medium on the output side of the screw compressor”
Claim 28
Claim 3 teaches all of the limitations
Claim 29
Claim 2 teaches all of the limitations
Claim 30
Claim 3 teaches all of the limitations
Claims 1-6, 22-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 11460026 in view of Holt USPN 6139280.
Instant application
USPN 11460026
Claim 1
Claim 2 teaches all the limitations of claim 1 except for: “[determining] temperature of the gaseous medium on the output side of the screw compressor” – see analysis below with Holt USPN 6139280.
Claim 2
Claim 2 teaches all of the limitations
Claim 3
Claim 3 teaches all of the limitations
Claim 4
Claim 2 teaches all of the limitations
Claim 5
Claim 3 teaches all of the limitations
Claim 6
Claim 3 teaches all of the limitations
Claims 22-24
See explanation below.
46-48
See explanation below.
Regarding Claim 1: Claim 2 of USPN 11460026 discloses the limitations set forth in claim 1 except for: the compressor operational control unit (i.e. the compressor operational controller in claim 1 of USPN 11460026) determines temperature of the gaseous medium on the output side of the screw compressor.
However Holt USPN 6139280 does disclose the limitations: the compressor operational control unit (compressor operational control unit = 90; Column 6 Line 22-49, Column 6 Line 57-64, Column 7 Line 35-67, Column 8 Line 1-13, Fig 1 and Fig 3) determines temperature of the gaseous medium on the output side of the screw compressor (the screw compressor = 2, Column 4 Line 28-62; the output side of the screw compressor = 22,24; the operational control unit 90 determines temperature of the gaseous medium on the output side of the screw compressor via temperature sensor 25, Column 4 Line 60-62, Column 6 Line 44-46, Column 7 Line 50-53; the operational control unit uses the temperature signal to either shutdown the compressor and prime mover (Column 6 Line 44-46) OR to decrease the capacity of the compressor (Column 7 Line 35-55) by moving the slide valve 96 of the compressor, Column 6 Line 65-67).
Hence it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the compressor unit, and the compressor operational control unit recited in claim 2 of USPN 11460026 with the temperature sensor 25 at the output side of the screw compressor, and the compressor operational controller 90 of Holt USPN 6139280 in order to prevent the prime mover from overloading and breaking down (Column 7 Line 35-67).
Regarding Claim 22: wherein the compressor operational control unit controls a control slider drive for the at least one control slider (Holt – given the disclosure at Column 7 Line 46-55 – the control slider drive is inherently controlled, and the movement is inherently determined before the control sider is moved | USPN – claim 2 teaches sensing the position of the control slider), and determines movement of the at least one control slider using a position determining unit (Holt – determines if the slider is in the right position based on the suction pressure signal from sensor 98, Column 7 Line 46-55 | USPN – claim 2 teaches sensing the pressure on the input side of the compressor).
Regarding Claim 46: Claim 2 of USPN 11460026 discloses: wherein the compressor operational control determines movement of the at least one control slider using a position determining unit (since claim 2 states that the position of the control slider is determined, and since position determining unit is understood to broadly be a device that determines a position, claim 2 discloses the limitations claimed). Thus Claim 2 of USPN 11460026 discloses the limitations set forth in claim 46 except for: the compressor operational control unit controls a control slider drive for the at least one control slider.
However Holt USPN 6139280 does disclose the limitations: the compressor operational control unit (compressor operational control unit = 90; Column 6 Line 22-49, Column 6 Line 57-64, Column 7 Line 35-67, Column 8 Line 1-13, Fig 1 and Fig 3) controls a control slider drive for the at least one control slider (given the disclosure at Column 7 Line 46-55 – the control slider drive is inherently controlled, and the movement is inherently determined before the control sider is moved).
Hence it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the compressor unit, and the compressor operational control unit recited in claim 2 of USPN 11460026 with the temperature sensor 25 at the output side of the screw compressor, and the compressor operational controller 90 of Holt USPN 6139280 in order to prevent the prime mover from overloading and breaking down (Column 7 Line 35-67).
Regarding Claims 23 & 47: wherein the compressor operational control unit positions the at least one control slider with position control (the combination teaches these limitations since USPN – claim 2 teaches sensing the position of the control slider; and Holt – teaches controlling the position of the control slider at Column 7 Line 46-55).
Regarding Claims 24 & 48: wherein, when determining a position of the at least one control slider (Holt – determining if the compressor should be unloaded by moving the control slider), the compressor operational control unit takes into account at least one of the parameters: pressure level on an input side at low pressure (Holt – using sensor 98, Fig 3, Column 7 Line 46-50); pressure level on an output side at high pressure (Holt – using sensor 100, Fig 3, Column 7 Line 56-61); the temperature of the gaseous medium on the output side of the screw compressor at the high pressure (Holt – using sensor 25, Fig 3, Column 7 Line 50-55); power consumption of a drive motor (Holt – using sensor 104, Fig 3, Column 7 Line 62-67); and parameters of the gaseous medium (Holt – using sensor 102 which determines the load (i.e. parameters) the gaseous medium places on the compressor and adjusts the slider based on the load, Fig 3, Column 7 Line 32-45).
Claims 39-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 of U.S. Patent No. 11460026 and further in view of Nemit US 2012/0227437.
Instant application
USPN 11460026
Claims 39-40
Claim 2 teaches all the limitations of claims 39-40 except for “a controller housing” – see analysis below with Nemit US 2012/0227437.
Regarding Claims 39-40: Since claim 1 of USPN 11460026, indicates that: the compressor operational control unit (i.e. the compressor operational controller in claim 1 of USPN 11460026) is provided on the compressor housing – it is understood that: the compressor operational control unit is arranged on the compressor housing as required in claim 40. Thus, Claim 2 of USPN 11460026 discloses the limitations set forth in claims 39-40 except for: the compressor has a controller housing in which the compressor operational control unit is arranged.
However Nemit US 2012/0227437 does disclose the limitations: a screw compressor (23,38, ¶0025) having a compressor housing (50, ¶0026); wherein the compressor has a controller housing (22, Fig 2, ¶0025) in which the compressor operational control unit is arranged (as known in the art controllers are located inside controller housings).
Hence it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the compressor housing and the compressor operational control unit recited in claim 2 of USPN 11460026 with the controller housing 22 of Nemit US 2012/0227437 in order to protect the controller from the environment surrounding the compressor.
Claims 15-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 of U.S. Patent No. 11460026 in view of Holt USPN 6139280 and further in view of Nemit US 2012/0227437.
Instant application
USPN 11460026
Claims 15-16
Claim 2 as modified by Holt USPN 6139280 teaches all the limitations of claims 15-16 except for “a controller housing” – see analysis below with Nemit US 2012/0227437.
Regarding Claims 15-16: Since claim 1 of USPN 11460026, indicates that: the compressor operational control unit (i.e. the compressor operational controller in claim 1 of USPN 11460026) is provided on the compressor housing – it is understood that: the compressor operational control unit is arranged on the compressor housing as required in claim 16. Thus, Claim 2 of USPN 11460026 as modified by Holt USPN 6139280 discloses the limitations set forth in claims 15-16 except for: the compressor has a controller housing in which the compressor operational control unit is arranged.
However Nemit US 2012/0227437 does disclose the limitations: a screw compressor (23,38, ¶0025) having a compressor housing (50, ¶0026); wherein the compressor has a controller housing (22, Fig 2, ¶0025) in which the compressor operational control unit is arranged (as known in the art controllers are located inside controller housings).
Hence it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to modify the compressor housing and the compressor operational control unit recited in claim 2 of USPN 11460026 with the controller housing 22 of Nemit US 2012/0227437 in order to protect the controller from the environment surrounding the compressor.
Claims 41-42 and 44 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 of U.S. Patent No. 11460026 and further in view of Pillis USPN 4609329.
Instant application
USPN 11460026
Claim 41
Claim 2 does not teach the limitations of claim 41 – see analysis below with Pillis USPN 4609329.
Claim 42
Claim 1 further teaches the limitations recited in claim 42
Claim 44
Claim 1 teaches that the position indicator element is coupled to the control slider, and this recitation is broad enough to cover mechanical coupling.
Regarding Claim 41: Claim 2 of USPN 11460026 does not disclose the limitations recited in claim 41.
However Pillis USPN 4609329 does disclose the limitations: wherein the screw compressor 10 has two screw rotors (18,19) that are arranged in the screw rotor chamber (Fig 3), are mounted on the compressor housing to be rotatable about respective screw rotor axes (rotor 18 is rotatable about the axis of element 18, and rotor 19 is rotatable about axis of element 19, both rotors are mounted for rotation by suitable bearings in outlet casing 13, Column 2 Line 24-37), engage in one another by their helical contours (Column 2 Line 24-57) and each interact with compression wall surfaces (surface of bore 15 interacts with rotor 18 and surface of bore 16 interacts with rotor 19) that are adjacent to and partly surround the helical contours (they do, see Figures, especially Fig 3) in order to receive the gaseous medium (i.e. refrigerant) having the initial volume (volume of refrigerant in inlet passageway 25) that is supplied by way of the low-pressure chamber (inlet passageway 25) arranged in the compressor housing and to discharge the gaseous medium, compressed to the final volume (the compressed volume of refrigerant in discharge passageway 28), in the region of the high-pressure chamber (discharge passageway 28) arranged in the compressor housing, in that the gaseous medium is enclosed, at low pressure and with the initial volume, in compression chambers formed between the helical contours and the compression wall surfaces adjacent thereto, and is compressed to the final volume at high pressure (Column 3 Line 45-54, also see Figs 1-5), wherein the at least one control slider (slide valve 32), which is arranged in the slider channel of the compressor housing (arranged in recess 30), is adjacent to both screw rotors (it is, see Figures, also see Column 2 Line 48-65) by slider compression wall surfaces (surfaces 35 of slide valve 32 that are in confronting relation with the outer peripheries of rotors 18,19, Column 2 Line 48-65), and is movable in the direction of displacement (left right direction in Figure 1) parallel to the two screw rotor axes of the two screw rotors (the left right direction that the slide valve moves in Figure 1 is parallel to the axis of shaft 20 and the axis of the rotor illustrated in Figure 1, the left right direction would also be parallel to the other rotor as screws 18,19 are parallel Column 2 Line 27-31), and is configured such that the at least one control slider affects the final volume and/or the initial volume (volumetric capacity is varied by moving the slide valve 32, varying the amount of refrigerant which is compressed (i.e. the initial volume which is acted on by the compressor) and/or the maximum pressure attained (i.e. the final volume of refrigerant displaced by the compressor) is determined by the position of the slide valve 32, Column 3 Line 55- Column 4 Line 15).
Hence it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to replace the screw compressor recited in claim 2 of USPN 11460026 with the screw compressor 10 of Pillis USPN 4609329 in order compress the fluid between the male and female rotors (Column 2 Line 24-31, Column 3 Line 45-54).
Claims 17-18 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 of U.S. Patent No. 11460026 in view of Holt USPN 6139280 and further in view of Pillis USPN 4609329.
Instant application
USPN 11460026
Claim 17
Claim 2 does not teach the limitations of claim 17 – see analysis below with Pillis USPN 4609329.
Claim 18
Claim 1 further teaches the limitations recited in claim 18
Claim 20
Claim 1 teaches that the position indicator element is coupled to the control slider, and this recitation is broad enough to cover mechanical coupling.
Regarding Claim 17: Claim 2 of USPN 11460026 does not disclose the limitations recited in claim 41.
However Pillis USPN 4609329 does disclose the limitations: wherein the screw compressor 10 has two screw rotors (18,19) that are arranged in the screw rotor chamber (Fig 3), are mounted on the compressor housing to be rotatable about respective screw rotor axes (rotor 18 is rotatable about the axis of element 18, and rotor 19 is rotatable about axis of element 19, both rotors are mounted for rotation by suitable bearings in outlet casing 13, Column 2 Line 24-37), engage in one another by their helical contours (Column 2 Line 24-57) and each interact with compression wall surfaces (surface of bore 15 interacts with rotor 18 and surface of bore 16 interacts with rotor 19) that are adjacent to and partly surround the helical contours (they do, see Figures, especially Fig 3) in order to receive the gaseous medium (i.e. refrigerant) having the initial volume (volume of refrigerant in inlet passageway 25) that is supplied by way of the low-pressure chamber (inlet passageway 25) arranged in the compressor housing and to discharge the gaseous medium, compressed to the final volume (the compressed volume of refrigerant in discharge passageway 28), in the region of the high-pressure chamber (discharge passageway 28) arranged in the compressor housing, in that the gaseous medium is enclosed, at low pressure and with the initial volume, in compression chambers formed between the helical contours and the compression wall surfaces adjacent thereto, and is compressed to the final volume at high pressure (Column 3 Line 45-54, also see Figs 1-5), wherein the at least one control slider (slide valve 32), which is arranged in the slider channel of the compressor housing (arranged in recess 30), is adjacent to both screw rotors (it is, see Figures, also see Column 2 Line 48-65) by slider compression wall surfaces (surfaces 35 of slide valve 32 that are in confronting relation with the outer peripheries of rotors 18,19, Column 2 Line 48-65), and is movable in the direction of displacement (left right direction in Figure 1) parallel to the two screw rotor axes of the two screw rotors (the left right direction that the slide valve moves in Figure 1 is parallel to the axis of shaft 20 and the axis of the rotor illustrated in Figure 1, the left right direction would also be parallel to the other rotor as screws 18,19 are parallel Column 2 Line 27-31), and is configured such that the at least one control slider affects the final volume and/or the initial volume (volumetric capacity is varied by moving the slide valve 32, varying the amount of refrigerant which is compressed (i.e. the initial volume which is acted on by the compressor) and/or the maximum pressure attained (i.e. the final volume of refrigerant displaced by the compressor) is determined by the position of the slide valve 32, Column 3 Line 55- Column 4 Line 15).
Hence it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to replace the screw compressor recited in claim 2 of USPN 11460026 with the screw compressor 10 of Pillis USPN 4609329 in order compress the fluid between the male and female rotors (Column 2 Line 24-31, Column 3 Line 45-54).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Seghers US 2017/0298937 – Discloses a controller for an oil injected screw compressor.
Dieterich US 2005/0013702 – Discloses a position detector for a slide control valve in a screw compressor.
Gianni USPN 4383802 – Discloses lubricant level sensing in a screw compressor.
EP 1245912 – Discloses a controller for a compressor.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH S HERRMANN whose telephone number is (571)270-3291. The examiner can normally be reached 8:00 AM - 5:00 PM EST.
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/CHARLES G FREAY/Primary Examiner, Art Unit 3746
/JOSEPH S. HERRMANN/ Examiner, Art Unit 3746