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 .
DETAILED ACTION
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.
CLAIM INTERPRETATION
The presence of claim limitations that are preceded by the phrases “wherein” often raises a question as to the limiting effect of the claim limitations (see MPEP §2111.04). The Examiner has interpreted the limitations following the phrase “wherein” as positively being claimed (i.e. the claim limitations are required and/or the claim limitations following the “wherein clause” limits the structure), where “wherein” is being used as a transitional phrase.
Election/Restrictions
Applicant’s election without traverse of Species I shown in Figures 2-5 and 25 in the reply filed on February 19, 2026 is acknowledged. Applicant states that claims 1, 18-21, and 23-26 are directed to the elected species. Claims 2-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species. Election was made without traverse in the reply filed on February 19, 2026.
Claim Rejections - 35 USC § 102
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by MA (Chinese Patent Publication CN 114562454 A, a machine translation is provided with the foreign patent publication on December 23, 2025 in the PTO-892 Notice of References Cited and is utilized in the analysis below).
Regarding claim 1, MA discloses: a driving member (131) for a scroll compressor (see Figures 1 and 2, the Examiner would like to note that a “driving member” is given the broadest reasonable interpretation, where MA’s orbiting scroll is considered as a driving member), comprising:
a hub portion (120) having an inner hole (see Figure 1), the hub portion comprising a first end and a second end opposite to each other (see Figures 1 and 2 that shows a first end near (130) and a second end at the end of the scroll wrap); and
a flange portion (130) extending outward from the first end of the hub portion in a radial direction of the hub portion (see Figures 1-3), the flange portion having a surface facing in a direction from the first end to the second end (see Figures 1-3), the surface of the flange portion having an annular thrust surface (131) and an oil groove (133).
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.
Application 18/725475
Claims 1 and 23 are each provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over any one of claims 14-16 and 18-21 of copending Application No. 18/725475. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim is broader in scope from the copending Application.
Claim 18 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 33 of copending Application No. 18/725475 in view of MA. Copending Application No. 18/725475 discloses the claimed invention where the driving member has a flange portion that is disclosed as contacting the second end plate, which the functions as acting as a “thrust surface” would be inherent by this contact. Copending Application No. 18/725475 does not disclose the flange having an oil groove in the claim tree with the wedge-shaped protrusion, however, it would be obvious based on MA.
Regarding claim 18, MA discloses: a driving member (131) for a scroll compressor (see Figures 1 and 2, the Examiner would like to note that a “driving member” is given the broadest reasonable interpretation, where MA’s orbiting scroll is considered as a driving member), comprising: a hub portion (120) having an inner hole (see Figure 1), the hub portion comprising a first end and a second end opposite to each other (see Figures 1 and 2 that shows a first end near (130) and a second end at the end of the scroll wrap); and a flange portion (130) extending outward from the first end of the hub portion in a radial direction of the hub portion (see Figures 1-3), the flange portion having a surface facing in a direction from the first end to the second end (see Figures 1-3), the surface of the flange portion having an annular thrust surface (131) and an oil groove (133).
It would have been obvious to a person having ordinary skill in the art at the time of the invention was made to have the flange having an oil groove in the driving member of copending Application No. 18/725475, in order to reduce the friction between moving components. Furthermore, having an oil groove with oil between moving components is known, as evidence by MA, and therefore, requires only routine skill in the art to utilize a known technique to reduce friction and increase movement between components.
Claim 19 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 37 of copending Application No. 18/725475 in view of MA. Copending Application No. 18/725475 and MA disclose the claimed invention as discussed above in claim 18. The limitations in claim 19 are further disclosed in claim 34.
Claim 21 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 35 of copending Application No. 18/725475 in view of MA. Copending Application No. 18/725475 and MA disclose the claimed invention as discussed above in claim 18. The limitations in claim 21 are further disclosed in claim 35.
Claim 24 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over and one of claims 18-21 of copending Application No. 18/725475. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim is broader in scope from the copending Application, where the “support” is the “scroll cover” of the current claim set.
Claim 25 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over and one of claims 18-21 of copending Application No. 18/725475. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim is broader in scope from the copending Application, where claim 25’s limitations are in claim 6, which is part of the dependency of claim 18/12/6/5/1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Application 18/725937
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over any one of claims 3-5, 30 and 31 of copending Application No. 18/725937. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim is broader in scope from the copending Application. Copending Application No. 18/725937 discloses contact between the hub of the drive member and the flange of the support where the oil groove is at this contact location. This contact is considered to be the thrust surface as claimed.
Claims 23 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over any one of claims 30 and 31 of copending Application No. 18/725937. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim is broader in scope from the copending Application. Copending Application No. 18/725937 discloses contact between the hub of the drive member and the flange of the support where the oil groove is at this contact location. This contact is considered to be the thrust surface as claimed.
Claim 25 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over and one of claims 30 and 31 of copending Application No. 18/725475. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim is broader in scope from the copending Application, where claim 25’s limitations are in claim 25, which is part of the dependency of claim 30/29/25/22.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Application 19/099069
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over any one of claims 19, 25, 31, and 37 of copending Application No. 19/099069. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim is broader in scope from the copending Application.
Claim 18 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 37 of copending Application No. 19/099069. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim is broader in scope from the copending Application.
Claim 23 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of copending Application No. 19/099069. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claim is broader in scope from the copending Application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 20 and 26 are currently objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The Examiner would like to note that the limitations in claims 20 and 26 are in the copending applications, however, they are not in a claim tree that has all of the claim limitations.
Additional Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARY DAVIS whose telephone number is (571)272-9965. The examiner can normally be reached M-F, 8 am-4pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Essama Omgba can be reached at (469) 295-9278. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Mary A Davis/Primary Examiner, Art Unit 3746