OFFICE ACTION
This application has been assigned or remains assigned to Technology Center 1700, Art Unit 1774 and the following will apply for this application:
Please direct all written correspondence with the correct application serial number for this application to Art Unit 1774.
Telephone inquiries regarding this application should be directed to the Electronic Business Center (EBC) at http://www.uspto.gov/ebc/index.html or 1-866-217-9197 or to the Examiner at (571) 272-1139. All official facsimiles should be transmitted to the centralized fax receiving number (571)-273-8300.
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 .
Information Disclosure Statement
Note the attached PTO-1449 forms submitted with the Information Disclosure Statement filed 6 MAY 2025.
Drawings
The sheets of drawings filed on 6 MAY 2025 are approved by the examiner.
Specification
The substitute specification filed 6 MAY 2025 is approved for entry but has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The substitute abstract is acceptable.
The title is acceptable.
Claim Rejections - 35 U.S.C. § 112(b)
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
The inquiry during examination is patentability of the invention as the inventor or a joint inventor regards such invention. If the claims do not particularly point out and distinctly claim that which the inventor or a joint inventor regards as his or her invention, the appropriate action by the examiner is to reject the claims under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. In re Zletz, 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989).
Claims 1-20 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, or for pre-AIA the applicant regards as the invention.
NOTE: Per 37 CFR 1.75(c), dependent claims shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim. Accordingly, by definition, any claims that depend from a claim that is deemed indefinite under 35 USC 112(b) will also be considered indefinite and identified in the list of rejected claims above, even if such claims are themselves free of indefiniteness under § 112(b).
Claim 1, line 16: “the temperature” lacks antecedent basis - it appears --a temperature-- would suffice; in line 19, it appears “chemical” should be --chemically-- for clarity.
Claim 6, line 3 indicates step “viii” yet steps v - vii are skipped leading to confusion. Note claim 6 depends from claim 1 and claims 4 and 5 set forth the missing steps v-vii.
Claim 7, line 3: “the temperature” lacks antecedent basis - it appears --a temperature-- would suffice; in line 6, it appears “chemical” should be --chemically-- for clarity.
Claim 8, line 7: “the centrifugal separator” should be --the light phase output of the centrifugal separator-- to agree with lines 3-4 and line 14.
Claim Objections
Claims 3 and 12 are objected to under 37 CFR 1.75 as being a substantial duplicate of each other and both claims depend from claim 1. When two claims in an application are duplicates or else are so close in content or scope 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). Since “hermetic” can be defined as “air-tight”, claims 3 and 12 essentially recite the same subject matter and both claims depend from claim 1.
Claim Rejections - 35 USC § 103
The terms used in this respect are given their broadest reasonable interpretation in their ordinary usage in context as they would be understood by one of ordinary skill in the art, in light of the written description in the specification, including the drawings, without reading into the claim any disclosed limitation or particular embodiment. See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). The Examiner interprets claims as broadly as reasonable in view of the specification, but does not read limitations from the specification into a claim. Elekta Instr. S.A.v.O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000).
To determine whether subject matter would have been obvious, "the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved .... Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented." Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).
The Supreme Court has noted:
Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.
KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1740-41 (2007). "Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." (Id. at 1742).
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The instant office action conforms to the policies articulated in the Federal Register notice titled “Updated Guidance for Making a Proper Determination of Obviousness” at 89 Fed. Reg. 14449, February 27, 2024, wherein the Supreme Court’s directive to employ a flexible approach to understanding the scope of prior art is reflected in the frequently quoted sentence, ‘‘A person of ordinary skill is also a person of ordinary creativity, not an automaton.’’ Id. at 421, 127 S. Ct. at 1742. In this section of the KSR decision, the Supreme Court instructed the Federal Circuit that persons having ordinary skill in the art (PHOSITAs) also have common sense, which may be used to glean suggestions from the prior art that go beyond the primary purpose for which that prior art was produced. Id. at 421–22, 127 S. Ct. at 1742. Thus, the Supreme Court taught that a proper understanding of the prior art extends to all that the art reasonably suggests, and is not limited to its articulated teachings regarding how to solve the particular technological problem with which the art was primarily concerned. Id. at 418, 127 S. Ct. at 1741 (‘‘As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.’’). ‘‘The obviousness analysis cannot be confined . . . by overemphasis on the importance of published articles and the explicit content of issued patents.’’ Id. at 419, 127 S. Ct. at 1741. Federal Circuit case law since KSR follows the mandate of the Supreme Court to understand the prior art— including combinations of the prior art—in a flexible manner that credits the common sense and common knowledge of a PHOSITA. The Federal Circuit has made it clear that a narrow or rigid reading of prior art that does not recognize reasonable inferences that a PHOSITA would have drawn is inappropriate. An argument that the prior art lacks a specific teaching will not be sufficient to overcome an obviousness rejection when the allegedly missing teaching would have been understood by a PHOSITA—by way of common sense, common knowledge generally, or common knowledge in the relevant art. For example, in Randall Mfg. v. Rea, 733 F.3d 1355 (Fed. Cir. 2013), the Federal Circuit vacated a determination of nonobviousness by the Patent Trial and Appeal Board (PTAB or Board) because it had not properly considered a PHOSITA’s perspective on the prior art. Id. at 1364. The Randall court recalled KSR’s criticism of an overly rigid approach to obviousness that has ‘‘little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications.’’ Id. at 1362, citing KSR, 550 U.S. at 415–22, 127 S. Ct. at 1727. In reaching its decision to vacate, the Federal Circuit stated that by ignoring evidence showing ‘‘the knowledge and perspective of one of ordinary skill in the art, the Board failed to account for critical background information that could easily explain why an ordinarily skilled artisan would have been motivated to combine or modify the cited references to arrive at the claimed inventions.’’ Id.
From Norgren Inc. v. Int’l Trade Comm’n, 699 F.3d 1317, 1322 (Fed. Cir. 2012) (‘‘A flexible teaching, suggestion, or motivation test can be useful to prevent hindsight when determining whether a combination of elements known in the art would have been obvious.’’); Outdry Techs. Corp. v. Geox S.p.A., 859 F.3d 1364, 1370–71 (Fed. Cir. 2017) (‘‘Any motivation to combine references, whether articulated in the references themselves or supported by evidence of the knowledge of a skilled artisan, is sufficient to combine those references to arrive at the claimed process.’’). In keeping with this flexible approach to providing a rationale for obviousness, the Federal Circuit has echoed KSR in identifying numerous possible sources that may, either implicitly or explicitly, provide reasons to combine or modify the prior art to determine that a claimed invention would have been obvious. These include ‘‘market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.’’ Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013), quoting KSR, 550 U.S. at 418–21, 127 S. Ct. at 1741–42.
The Federal Circuit has also clarified that a proposed reason to combine the teachings of prior art disclosures may be proper, even when the problem addressed by the combination might have been more advantageously addressed in another way. PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014) (‘‘Our precedent, however, does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away.’’) (emphasis in original). One aspect of the flexible approach to explaining a reason to modify the prior art is demonstrated in the Federal Circuit’s decision in Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 796 (Fed. Cir. 2021), which confirms that a proposed reason is not insufficient simply because it has broad applicability. Patent challenger Intel had argued in an inter partes review before the Board that some of Qualcomm’s claims were unpatentable because a PHOSITA would have been able to modify the prior art, with a reasonable expectation of success, for the purpose of increasing energy efficiency. Id. at 796–97. The Federal Circuit explained that ‘‘[s]uch a rationale is not inherently suspect merely because it’s generic in the sense of having broad applicability or appeal.’’ Id. The Federal Circuit further pointed out its pre-KSR holding ‘‘that because such improvements are ‘technology independent,’ ‘universal,’ and ‘even common-sensical,’ ‘there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves.’ ’’ Id., quoting DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (emphasis added by the Federal Circuit in Intel). When formulating an obviousness rejection, the PTO may use any clearly articulated line of reasoning that would have allowed a PHOSITA to draw the conclusion that a claimed invention would have been obvious in view of the facts. MPEP 2143, subsection I, and MPEP 2144. Acknowledging that, in view of KSR, there are ‘‘many potential rationales that could make a modification or combination of prior art references obvious to a skilled artisan,’’ the Federal Circuit has also pointed to MPEP 2143, which provides several examples of rationales gleaned from KSR. Unwired Planet, 841 F.3d at 1003.
When considering the prior art in its entirety, note Allied Erecting v. Genesis Attachments, 825 F.3d 1373, 1381, 119 USPQ2d 1132, 1138 (Fed. Cir. 2016) ("Although modification of the movable blades may impede the quick change functionality disclosed by Caterpillar, ‘[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.’" (quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165, 77 USPQ2d 1865, 1870 (Fed Cir. 2006) (citation omitted))). However, "the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
In view of the above guidance, claims 1-4, 6, 7, 11, 12, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over EP 2181744 A1 in view of Pitkämäki et al. (US 9358554 B2).
EP 2181744 A1 discloses a system and method for purifying an oil containing contaminants, comprising: a supply of contaminated oil 1; a supply of the recited separation aid 3 and/or 4; a static mixer 4 with baffles configured to mix the oil from the oil supply 1 with the separation aid from source 3 and/or 4 ¶ [0035]; a centrifugal separator 6 having a separator bowl comprising a separation chamber with discs 7 therein for receiving the mixture of contaminated oil and separation aid; the centrifugal separator 6 further comprising fluid phase outlets 8, 8’, 11, 11’; inlet port at 5. EP ‘744 does not specifically disclose the tank or the centrifugal separator being formed as a hermetic type separator. EP ‘744 does disclose holding tanks 12 or 20 for storage of a fluid, thus since the supply of the separation aid must originate from some supply container or source, it would have been obvious to one skilled in the art before the effective filing date of the invention to have employed a tank for storing the separation aid to enable the separation aid to be stored until supplied into the mixer and separator.
Pitkämäki et al. discloses an analogous centrifugal separator in Figure 1 wherein the separation fluid during the separation process is kept under special hygienic conditions and/or without any air entrainment and high shear forces, such as when the separated product is sensitive to such influence. Examples of that kind are separation of dairy products, beer and in biotechnology applications. For such applications, such hermetic separators have been developed and in production for a number of years. In this hermetic separator, the separator bowl or centrifuge rotor is completely filled with liquid during operation. This means that no air or free liquid surfaces is meant to be present in the bowl. As can be seen in FIG. 1 which discloses a typical hermetic centrifugal separator, the fluid to be separated enters the centrifuge rotor 1 from the bottom through a hollow spindle pipe 2 forming a hermetic inlet 3. This provides a gentle acceleration of the fluid having shear-sensitive contents. The feed is then accelerated in a distributor 4 before entering a disc stack 5 comprising separator discs where the separation takes place. The liquid phase moves towards the center of the centrifuge rotor 1, where the liquid phase is pumped out under pressure by means of a built-in pump disc 6 to at least obtain a required outlet pressure. The separated heavier solids phase is collected at the periphery of the centrifuge rotor 1, from where the solids are discharged intermittently through solids ports 7. The hermetic inlet 3 is disposed a lower end of a hollow spindle 2 defining the inlet port into the separation chamber at 5, an end of the fluid conduit within 2 is disposed in the interior of the inlet port, and a seal (below 4 in Figure 1) hermetically seals a junction of the hermetic inlet and the end of the fluid conduit such that the junction is air-tight and liquid-tight to thereby create such a hermetic inlet.
FIGS. 2A and 2B discloses a vertical sectional view of a preferred embodiment of a hermetical separator 100. In the embodiment in FIGS. 2A and 2B, the centrifugal separator 100 comprises a centrifuge rotor 11, which is fixedly attached on a torque transmitting part 12 designed as a hollow spindle in which an inlet channel 13 is arranged. The inlet channel 13 is provided to supply separation fluid into a separation space 18 in the centrifugal separator 100, which fluid is to be cleaned by centrifugal separation. The centrifugal separator 100 also comprises a disc stack 15 comprising a set of separation discs which are provided in the inner separation space 18 of the centrifugal separator 100 and rotate with the centrifuge rotor 11. In one embodiment, the discharge of the cleaned product takes place through an outlet channel 22 at the upper end of the centrifuge rotor 11. The outlet channel 22 is defined by a bore 22B of the stationary casing 30, an area of reduced cross section 22R of the bore 22R and an outlet branch 22P. In a narrow passage (e.g., the area of reduced cross section 22R) of the outlet channel 22 is an outlet sealing 23 arranged for sealing off the [hermetic] outlet channel 22 from the centrifuge rotor 11 to preclude possible penetration of air and contamination from the environment. A pumping means 19 arranged in the bore 22B with a portion thereof proximate a chamber 29 that is in communication with the separation space 18. In the embodiment disclosed in FIGS. 2A and 2B and FIG. 3, the pumping means 19 is defined by an elongate cylindrical body having a plurality of legs 20 (e.g., stem-like members). Each of the legs 20 axially extend from a base 31 towards a terminal end 41 of the cylindrical body. The legs 20 are attached to the center of a disc 25. Each of the legs 20 extend from a surface of the disc 25 facing away from the separation space 18. The base 31 is attached to the stationary casing 30. The pumping means 19 extends through the bore 22B and has a symmetry axis coinciding with an extension of the rotational axis of the centrifugal rotor 11. Adjacent pairs of the legs define an axial extending opening 20X therebetween. The cylindrical body defines a first surface 19A proximate the base 31. The first surface 19A has a first diameter D1. The cylindrical body has an area of reduced cross section 40 includes a second surface 19B defined by a second diameter D2. The area of reduced cross section 40 is located between the first surface 19A and the terminal end 41. The second diameter D2 is of a lesser magnitude than the first diameter D1. The area of reduced cross section 40 is proximate the area of reduced cross section 22R of the bore 22B. Each of the legs 20 has a radially outward and circumferentially curved extension 21 (e.g., radially outwardly arc-formed teeth) proximate the terminal end 41. The surface of the disc 25 is in contact with the circumferentially curved extensions 21 which thus form arc-formed ridges protruding from the surface. The circumferentially curved extensions 21 are evenly spaced along the circumference of the disc 25 and may be identically curved and may as in FIGS. 2A and 2B extend outside the periphery of the disc 25. The circumferentially curved extensions 21 (e.g., arc-formed teeth) are directed in a counter-rotational direction. In one embodiment, the circumferentially curved extensions 21 (e.g., arc-formed teeth) are attached to the surface of the disc 25.
The function of the pumping means 19 is as follows. The rotating separated fluid is led from the separation space 18 to the chamber 29 and as it still has rotational energy it is rotating in the chamber 29. The arc-formed teeth 21 are leading a certain amount of the rotating fluid along the arc-shapes inwardly towards the stem-like member 20 and the center axis. Some of the kinetic energy in the rotating fluid is thus converted to pressure energy by the pumping means 19. The fluid is further led along the stem-like member 20 past the narrow passage where the outlet sealing 23 is situated and further to an outlet orifice in the outlet channel 22. The pumping means 19 is thus compensating for the pressure drop caused by the narrow passage of the outlet sealing 23.
Accordingly, it would have been obvious to one skilled in the art before the effective filing date of the invention to have substituted the centrifugal separator in EP ‘744 with a hermetic/air-tight type disc centrifugal separator with a hermetic inlet as taught by Pitkämäki et al. for the purposes of keeping the substances being separated under special hygienic conditions and without any detrimental air entrainment and high shear forces imparted to the substances by virtue of the air-tight sealed environment within the hermetic separator (col. 1, lines 32-56).
Allowable Subject Matter
Claims 5, 8-10, and 14-20 are 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited prior art discloses separation systems and methods for separating oil mixtures.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES COOLEY whose telephone number is (571) 272-1139. The examiner can normally be reached M-F 9:30 AM - 6:00 PM.
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. New USPTO policy limits time for interviews to one per new application or RCE (utility), when during prosecution, the examiner conducts an interview. More than one interview and additional time will only be granted if it is ensured “that the interviews are being used to advance prosecution”.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CLAIRE X. WANG can be reached at 571-272-1700. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHARLES COOLEY/
Examiner, Art Unit 1774
DATED: 2 JULY 2026
Prosecution Insights