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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 1-7 are objected to because of the following informalities: in claim 1 line 1 after “air compressor” “package” should be inserted in order to differentiate the package from the compressor of line 4; further, in line 1 of each of claims 2-7 “package” should similarly be inserted. Appropriate correction is required.
Claims 4, 6 and 7 are objected to because of the following informalities: in claim 4 line 2, after “pressure-reducing valve” “of the pressurizing passage” should be inserted; similar changes should be made in claims 6 and 7. Appropriate correction is required.
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: “sealing mechanism” of claim 2.
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 1-7 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.
Claim 1 is vague and indefinite because in the last three lines of the claim the “thereby allowing oil in the gear casing to be recovered to the intake portion via the oil recovery passage” is confusing. In particular it is unclear what the term “allowing” is meant to imply or how it limits the claim. Throughout the disclosure particular pressure conditions are described (see for example the conditions set forth in claim 4). It is unclear if some or all of these conditions are being referenced or if just the existence of a flow path would satisfy the “allowing” limitation. It is additionally noted that in lines 9 and 10 the oil in the tank is set forth as being “separated from the compressed air”. The oil from the separator of the disclosure is at a particular pressure and it is unclear if this pressure condition is part of the “allowing” limitation (it is noted that in lines 9 and 10 an oil separator is not positively claimed and thus any oil in a tank would satisfy the limitation).
Claims not specifically mentioned are indefinite since they depend from one of the above claims.
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) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over JPS64-5100 (hereafter JP’100, cited by the applicant).
JP’100 discloses an air compressor package that compresses air (the gas being compressed being air is considered an intended use of the gas compressor and does not further limit the claimed invention, see Ex parte Masham, 2 USPQ2d 1647 (1987)) taken in through an intake portion (11) and discharges compressed air through a discharge port (12), comprising: a compressor (5,6) that compresses the air, a drive source (8) that drives the compressor, a gear (9,10) that transmits drive of the drive source to the compressor, a gear casing (encasing the space 7 around the gears) that houses the gear, an oil tank (21,22) that stores oil separated from the compressed air, an oil supply passage (13) that to the gear casing, an oil recovery passage (14) that extends from the gear casing to the intake portion, and a pressurizing passage (2) that extends from the discharge port to the gear casing, wherein oil is supplied from the oil tank to the gear casing via the oil supply passage by the discharge pressure of the air compressor, and the gear casing is pressurized via the pressurizing passage by the discharge pressure (the oil in passage 2 is acted upon by the discharge pressure), thereby allowing (for purposes of examination this limitation will be considered as a desired result) oil in the gear casing to be recovered to the intake portion via the oil recovery passage.
JP’100 does not specifically disclose that the oil supply passage extends from the oil tank to the gear casing. However, at the time of the effective filing date of the instant application it would have been obvious to one of ordinary skill in the art to utilize the oil located in the bottom of oil tank 21 shown in Fig. 3 of JP’100 as a readily available source of oil.
Claim(s) 2 is is/are rejected under 35 U.S.C. 103 as being unpatentable over JP’100 in view of Staat et al (USPN 6,612,820).
As set forth above JP’100 discloses the compressor as set forth in claim 1 and additionally discloses a drive shaft (8), a compressor shaft (shown for example in Fig. 2 connected to rotor 6) but does not describe that the gear casing includes sealing mechanisms. Staat et al discloses a similar gear driven compressor and in Fig. 2 discloses a gear casing formed around gears 54, 56 and teaches that sealing mechanisms around the drive shaft (clearly shown), and around the rotor shafts (such as seal 82 of Fig. 3).
At the time of the effective filing date of the instant application it would have been obvious to one of ordinary skill in the art to provide sealing mechanisms as taught by Staat et al to the shafts of the JP’100 compressor in order to insure that the lubricant and the compressed gas do not mix in improper ratios or at all if desired.
Allowable Subject Matter
Claims 3-7 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the closest prior art is JP’100 as applied above but this reference discloses that the pressurizing passage is directly connected from the discharge portion to the gear casing with no suggestions of placing pressure reducing valves in this passage. It is the Examiner’s opinion that modification of the available prior art in the claimed manner is neither contemplated nor foreseeable without the benefit of the disclosure of the instant application.
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Aoki et al discloses a gear driven screw compressor with lubrication of the gears.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES G FREAY whose telephone number is (571)272-4827. The examiner can normally be reached Mon - Fri: 8:00 - 5:00.
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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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/CHARLES G FREAY/ Primary Examiner, Art Unit 3746
CGF
August 8, 2026
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