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 .
Claim Rejections - 35 USC § 112
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claim 21 is 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.
In claim 21, applicant claims a securing ring is located longitudinally between one of the three bearings and a portion of the eccentric shaft such that the bearings do not absorb axial forces from the eccentric shaft.
There are insufficient details provided as to the structure of the securing ring and insufficient details provided as to how the bearings do not absorb axial forces from the eccentric shaft. Applicant’s specification at e.g. Fig 6 shows an eccentric shaft supported by three bearings 3, 4, 5. Applicant’s specification states “It can further be seen that in each case a bearing 3, 4, 5, in particular a ball bearing, is fitted at three different axial positions of the eccentric shaft 23, 24, in particular a first bearing 3 in the region of one end of the eccentric shaft, a second bearing 4 approximately at the center of the eccentric shaft and a third bearing 5 at the other end of the eccentric shaft”, and “According to the invention, it is proposed that the eccentric shaft is supported in the radial piston compressor by means of at least three bearings, preferably three bearings”. Given the actual structures disclosed in applicant’s specification as filed, it would be self-evident common sense that the bearings would experience axial force from eh eccentric shaft fitted therein when the axial shaft itself experienced as axial force and/or when the eccentric shaft was moved axially.
MPEP2163 II. A. 3. at paragraph three states: "An applicant may show possession of an invention by disclosure of drawings or structural chemical formulas that are sufficiently detailed to show that applicant was in possession of the claimed invention as a whole." Regarding the written description requirement for claim 21, insufficient details of the securing ring are shown in the drawings and insufficient details of how the bearings do not absorb axial forces from the eccentric shaft are shown in the drawings.
MPEP 2163 I. at paragraph two states: "To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention." Regarding the written description requirement for claim 21, insufficient details of the securing ring are provided in the written description and insufficient details of how the bearings do not absorb axial forces from the eccentric shaft are provided in the written description.
As set forth in MPEP 2166 at form paragraph 7.31.01, the questions the examiner asked which were not satisfactorily resolved and consequently raised doubt as to possession of the claimed invention at the time of filing, include:
What in particular is the structure of the securing ring?
How in particular do the bearings not absorb axial forces from the eccentric shaft?
If an axial force is applied to the eccentric shaft fitted on and supported by the three bearings, do the bearings not experience an axial force from the eccentric shaft?
If the eccentric shaft moves axially while fitted on and supported by the three bearings, do the bearings not experience the axial force from the eccentric shaft mounted therein?
Claim 18 specifically claims one of the three bearings is an axial bearing. What is the purpose of an axial bearing if not for absorbing axial forces from the eccentric shaft? How can one of the three bearings be an axial bearing yet the bearings do not absorb axial forces from the eccentric shaft?
Therefore, for the reasons detailed above, claim 21 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 21 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 claim 21, applicant claims a securing ring is located longitudinally between one of the three bearings and a portion of the eccentric shaft such that the bearings do not absorb axial forces from the eccentric shaft.
Applicant’s specification at e.g. Fig 6 shows an eccentric shaft supported by three bearings 3, 4, 5. Applicant’s specification states “It can further be seen that in each case a bearing 3, 4, 5, in particular a ball bearing, is fitted at three different axial positions of the eccentric shaft 23, 24, in particular a first bearing 3 in the region of one end of the eccentric shaft, a second bearing 4 approximately at the center of the eccentric shaft and a third bearing 5 at the other end of the eccentric shaft”, and “According to the invention, it is proposed that the eccentric shaft is supported in the radial piston compressor by means of at least three bearings, preferably three bearings”. Since the bearings are the only support shown and described for the eccentric shaft, if an axial force is applied to the eccentric shaft supported by the three bearings, the bearings would experience an axial force from the eccentric shaft. Likewise, if the eccentric shaft moves axially while supported by the three bearings, the bearings would experience the axial force from the eccentric shaft. In contradiction to the actual structures disclosed in the specification as filed, in claim 21 applicant now claims “the bearings do not absorb axial forces from the eccentric shaft”. Claim 18 specifically claims one of the three bearings is an axial bearing. What is the purpose of an axial bearing if not for absorbing axial forces from the eccentric shaft? How can one of the three bearings be an axial bearing yet the bearings do not absorb axial forces from the eccentric shaft? See MPEP 2173.03: "A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. In re Moore, 439 F.2d 1232, 1235-36,169 USPQ 236, 239 (CCPA 1971); In re Cohn, 438 F.2d 989,169 USPQ 95 (CCPA 1971); In re Hammock, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970).". Because applicant appears to show no structure in the specification consistent with the claim language, these claims are indefinite when read in light of the specification. See In Re Paul G. Anderson, John A. Mcmennamy, Andrew P. Burke and Thomas A. Rak, 106 F.3d 425 (Fed. Cir. 1997) (“Because appellants show no structure in their specification consistent with this claim language [the claim] is indefinite”).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 10-12, 14-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakazawa US 20030138333 in view of Bauer US 20030099417.
Nakazawa discloses:
10. (New) A radial piston compressor, comprising: a compressor unit 1; and a drive device 2 for driving the compressor unit; wherein the compressor unit includes at least one piston 3a arranged radially around an eccentric shaft 21; wherein each piston is displaceably received in a respective working space 4, wherein the piston is driven by the eccentric shaft 21; wherein the eccentric shaft is rotatably supported in the radial piston compressor by at least three bearings (see e.g. Figs 1-2 at 71, 72, 73).
Nakazawa does not appear to disclose wherein a securing ring is located longitudinally between one of the three bearings and a portion of the eccentric shaft.
Bauer discloses a securing ring 106 (see e.g. 0053).
Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to utilize a securing ring as taught by Bauer in the system of Nakazawa to gain the benefit of maintaining the bearing e.g. 71 and/or 73 in the bearing support. With this modification of Nakazawa in view of Bauer, the securing ring would be located longitudinally between one of the three bearings (71 and/or 73) and a portion of the eccentric shaft (see e.g. annotated Fig 2 below).
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11. (New) The radial piston compressor as claimed in claim 10, wherein the compressor unit includes a plurality of pistons arranged radially around the eccentric shaft and wherein the eccentric shaft is rotatably supported in the radial piston compressor by exactly three bearings (see e.g. Figs 1-2 at 71, 72, 73).
12. (New) The radial piston compressor as claimed in claim 10, wherein the radial piston compressor includes a drive housing 2c, a compressor housing 1, and a compressor housing cover (see annotated Fig 1 herein).
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14. (New) The radial piston compressor as claimed in claim 12, wherein a first bearing and a second bearing are received in the compressor housing (see e.g. 73 and 72 of Nakazawa in Figs 1-2) and a third bearing is received in the drive housing (see e.g. Figs 1-2 of Nakazawa wherein 71 is in drive housing).
16. (New) The radial piston compressor as claimed in claim 10, wherein the bearings are in the form of plain or roller bearings (see e.g. Fig 2).
17. (New) The radial piston compressor as claimed in claim 10, wherein the bearings are in the form of cylinder roller bearings or ball bearings (see e.g. Fig 2).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakazawa US 20030138333 in view of Bauer US 20030099417 in further view of Hsieh US 20120009073.
Regarding claim 13, Nakazawa discloses a second bearing is received in the compressor housing (see e.g. 72 of Nakazawa in Fig 2 and 121 of Hsieh in Fig 4), and a third bearing is received in the drive housing (see e.g. 71 in Fig 2 of Nakazawa
Hsieh discloses wherein a second bearing is received in the compressor housing (see e.g. 72 of Nakazawa in Fig 2), and a third bearing is received in the drive housing (see e.g. 71 in Fig 2 of Nakazawa).
Nakazawa does not disclose a first bearing is received in the compressor housing cover.
However, Hsieh discloses the use of a housing cover (13) having a bearing therein (see e.g. 130 in Fig 4 of Hsieh received in cover 13).
Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to utilize a cover as taught by Hsieh in the system of Nakazawa to gain the benefit of facilitating maintenance, replacement, and/or cleaning of components in the housing.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakazawa US 20030138333 in view of Bauer US 20030099417 in further view of Ferris US 1901501.
Nakazawa as modified above does not disclose the limitations of claim 18.
Ferris discloses wherein a single bearing 32 is in the form of an axial bearing.
Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to utilize a thrust bearing as taught by Ferris in the system of Nakazawa to gain the benefit of accounting for axial forces on the shaft.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakazawa US 20030138333 in view of Bauer US 20030099417 in further view of Koda US 20170110928.
Regarding claim 19, a person of ordinary skill in the art would understand the bearings would be press fit into the housing to avoid spinning of the bearings which would damage the housing and/or bearing. In any event, Koda discloses press fitting bearings into a housing (see e.g. claim 1).
Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to press fit the bearings as taught by Koda in the system of Nakazawa to gain the benefit of ensuring the bearings don’t spin in the housing.
Response to Arguments
Applicant’s arguments with respect to the pending claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. A new reference, Bauer, is now being used to teach the limitations which applicant argues.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS ANDREW FINK whose telephone number is (571)270-3373. The examiner can normally be reached on M-Th 9-7.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Laurenzi can be reached on (571) 270-7878. The fax phone number for the organization where this application or proceeding is assigned is 571-270-4373.
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/Thomas Fink/Primary Examiner, Art Unit 3746
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