DETAILED ACTION
This is the first office action on the merits with reference to the above identified patent application filed on 13 June 2025. Claims 20 – 26, 29, 30, 37 and 39 are pending and currently being examined.
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 of Species E in the reply filed on 27 July 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 27, 28, 31 – 36 and 38 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Claims 20 – 26, 29, 30, 37 and 39 are being examined on the merits.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
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: “drive device” in claim 20.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
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.
Claims 24 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.
In Re Claim 24, The term “high-strength and higher-strength steels” in the claim a relative term which renders the claim indefinite. The term “high-strength and higher-strength” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree of strength that would be within the scope of the invention, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purpose of prior art analysis, the limitation would be understood to mean any spring-steel material.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 20, 25, 26 and 37 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Muller (German Patent DE 102020109993 A1, Machine Translation provided).
In Re Claim 20, Muller discloses a radial piston compressor (Figure 4; Translation paragraph [0042]), comprising: a compressor unit (10); a drive device (11) for driving the compressor unit (10); and a piston guide ring (18 or 18’; paragraphs [0041],[0042]); wherein the compressor unit (10) includes at least two piston-and-cylinder-bore assemblies (12, 13) arranged radially around an eccentric shaft (14 or 15); wherein the eccentric shaft (14, 15) is driven by the drive device (11); wherein each piston-and-cylinder-bore assembly includes a piston (13, 28) in contact with the piston guide ring (18, 18’); wherein the piston guide ring (18 or 18’) is configured to be at least partially elastic (paragraph [0042] describes 18’ as a “spring ring” which means it is elastic) (Machine Translation paragraphs [0041],[0042],[0045]; Figure 4).
In Re Claim 25, Muller discloses that the piston guide ring (18 or 18’) has an inside lateral surface (that contacts the piston portion 28).
In Re Claim 26, Muller discloses that the pistons (13, 28) each have a contact surface (of 28, interface between 28 and 18) that engages the piston guide ring (18, 18’).
In Re Claim 37, Muller discloses that the piston guide ring (18, 18’) is a closed ring as depicted in Figure 4.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
Claim(s) 21 – 24, 29 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Muller (German Patent DE 102020109993 A1, Machine Translation provided) in view of Balsells (US Patent 5,160,122 A).
In Re Claims 21 – 24, 29 and 30, Muller discloses all the limitations of Claim 20, and it discloses that the compressor unit (10) includes the piston guide ring (18 or 18’), wherein the pistons are in positive engagement with the piston guide ring (at 28), but it does not disclose details of the piston guide ring (i.e. spring ring 18 or 18’) including elasticity, stiffness and steel material.
However, Balsells discloses a spring ring (10) for a piston (Column 8, Lines 46 – 49: “groove 250 being in a piston or housing, not shown”; Figure 22),
the ring (10) is completely elastic in the radial direction (label 76 shows both radially inward and radially outward directions; Figure 6; Column 4, Lines 17 – 19; Abstract: “An elastic material is provided which is disposed around and between the plurality of coils and has a hollow cross section for modifying the force exerted by the spring assembly in response to the deflection of the spring assembly along the loading direction”),
wherein the elasticity of the piston guide ring is set by the geometry of the piston guide ring (since it is a circular coil spring) and/or the modulus of elasticity of the piston guide ring (at least the elastic material 18 must have a modulus of elasticity),
the elastomer (18) must have a radial stiffness (Column 7, Line 41: “stiffness of the elastomer”; although not specifically disclosed – the claimed range of 100 N/mm to 1000 N/mm for the radial stiffness would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed the invention because it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980); and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233),
it is well known (Official Notice has been taken – MPEP 2144.03) that the spring (14) is made of steel and the selection of steel as the material would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed the invention because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use (See MPEP 2144.07 In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960)),
the spring ring (10) is wider than it is high (an elliptical shape is disclosed in Figure 10; Column 6, Lines 40 – 41),
the spring ring (10) in its mounted state (Figure 22 shows it is mounted in a groove 250 related to a piston) has a greater extent in the axial direction (major axis of the elliptical shape, i.e. a horizontal line) than the radial direction (minor axis of the elliptical shape, i.e. a vertical line).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed the invention to incorporate the spring ring (10) of Balsells as the piston guide ring (18) of Muller because it is only a matter of substituting the broadly disclosed spring ring (Muller) with the specifically disclosed spring ring (Balsells), therefore the results of the substitution are predictable – MPEP 2141, Section III, Rationale B.
Claim(s) 39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Muller (German Patent DE 102020109993 A1, Machine Translation provided) in view of Balsells et al (PG Pub US 20100289198 A1).
In Re Claim 39, Muller discloses all the limitations of Claim 37, but it does not specifically disclose the method steps of how the piston guide ring (described as “spring ring”) is mounted.
However, paragraph [0068] of Balsells et al discloses a method of mounting a spring ring (136; paragraph [0004]: “spring ring”; Figure 10A), comprising: putting the piston guide ring from a relaxed state (“In an at rest configuration”) into a mounting state (as shown in Figure 10A), thereby increasing an inside diameter of the piston guide ring (136) from a first inside diameter (the interior diameter of the spring 136 in the at rest configuration) to a second inside diameter (the inside diameter becomes the diameter of shaft 130 as it is being mounted: “The spring 136 deforms as it expands to accommodate the diameter of the shaft 130”); applying the piston guide ring, with the inside lateral surface thereof, to the contact surface (of 130 when it clears the tapered portion 144); putting the piston guide ring into a mounted state (by further sliding it into the groove 135), thereby decreasing the inside diameter to a third inside diameter (“The exterior diameter of the annular groove 135 in the shaft 130 is greater than the interior diameter of the spring 136 in the at rest configuration” which means the internal diameter of the spring ring in the mounted state is greater than the internal diameter in the rest state); and bringing the inside lateral surface of the spring ring (136) into positive engagement with the contact surface (135).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed the invention to mount the piston guide ring of Muller by first increasing its internal diameter to a second diameter (to clear the extent of the bolts 28) than decreasing the internal diameter to a third diameter as it contacts the piston contact surface (surface of 28) as taught by Balsells et al for the purpose of efficiently assembling the piston guide ring. Note that this is also only a matter of substituting the broadly implied mounting procedure of Muller with the specifically disclosed mounting procedure of Balsells et al, therefore the results of the substitution are predictable – MPEP 2141, Section III, Rationale B.
Pertinent Prior Art
The following prior art is not being relied upon, it is being made of record because it is considered to be pertinent to applicant’s disclosure. Balsells806 (US Patent 5,161,806 A) discloses a spring ring (10; Figure 1a; Title).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DNYANESH G KASTURE whose telephone number is (571)270-3928. The examiner can normally be reached Mon-Thu, 7:30 AM to 6:00 PM.
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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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/D.G.K/Examiner, Art Unit 3746
/NATHAN C ZOLLINGER/Primary Examiner, Art Unit 3746
