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.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: ECCENTRIC SCREW PUMP WITH MOLDED FEATURES TO PROVIDE ELASTICITY.
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.
Claims 1, 4-5, 13-14, and 18- 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EGLMEIER (WIPO Publication WO 2017/186495, a machine translation is provided with the PTO-892 and is utilized in the rejection below along with the Figures in the foreign publication).
Regarding claim 1, EGLMEIER discloses: an eccentric screw pump (101) with a rotor (102, 105) of a drive shaft ((109) circulating essentially about a fixed axis (107) in relation to the stator (108) in a bearing block (115) (see Figure 5), a power train (the powertrain includes (111, 109, 209)) and a screw conveyor (105, 205), which revolves in a rotating-oscillating manner in a screw flight of the stator (108), wherein the power train provides the screw conveyor with its drive torque and the power train adjusts the differences of the motion sequences of the screw conveyor and of the drive shaft (see Figures 5 and 9a-9b, Pages 7-8), characterized in that the power train consists essentially of a one-piece rotational body (see Figures 5 and 9a-9b that shows essentially a one-piece rotational body), which is substantially molded from a material selected from a group comprising plastic, metal and combinations of them (see Pages 6 and 8 that discloses that the power train is made of plastic) which provide it with elasticity to rotate (the claimed limitation directed to “which provide it with elasticity to rotate” is considered as a functional limitation It should be appreciated that the applicant’s functional language in the claims does not serve to impart patentability. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Apparatus claims cover what a device is, not what a device does. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior apparatus teaches all the structural limitations of the claims. See MPEP 2114. Furthermore, EGLMEIER is capable of performing the claimed function, since plastics have a certain elasticity to them and the part rotates, thereby meeting the claimed limitation).
Regarding claim 4, EGLMEIER discloses: the power train has multiple weakening recesses (see Figure 5 that shows (111), and see Figures 9a and 9b that shows weakened recesses that are open (209)), which interrupt its outer surface to provide rotational elasticity (see Figure 5 and see Abstract that discloses the powertrain is flexible, and Pages 6 and 10 that disclose that the power train is “spring bar”, which inherently has elasticity and the part is rotatable. The limitation directed to “to provide rotational elasticity” is considered as a functional limitation. It should be appreciated that the applicant’s functional language in the claims does not serve to impart patentability. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Apparatus claims cover what a device is, not what a device does. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior apparatus teaches all the structural limitations of the claims. See MPEP 2114. Furthermore, EGLMEIER is capable of performing the claimed function, since the power train is disclosed as a “spring bar”, which inherently has elasticity and the part is rotatable, thereby meeting the claimed limitation of “providing rotational elasticity”).
Regarding claim 5, EGLMEIER discloses: the power train rotates about an axis which curves in a periodically recurring manner at least in sections (see Figures 5 and 9a-9b).
Regarding claim 13, EGLMEIER discloses: a power train (the powertrain includes (111, 109, 209)) for transmitting torque between first and second components (206, 205) which carry out rotational movements about different axes (see Figures 3 and 5, Page 9 that discloses that the alternative rotor (205) uses a spring bar shaft instead of the bending hinges, where the bending hinges shows that there are two different axis (see Figure 3), and therefore, the spring bar shaft also would bend to create the same output as the embodiment in Figure 3), wherein the power train adjusts differences of motion sequences of the first and second components through its internal elasticity provided by being substantially molded from malleable material (EGLMEIER discloses using plastic (see Pages 6 and 8) which is considered to be a malleable material) in an essentially single piece (see Figures 9a and 9b) which has multiple weakening recesses (see Figure 5 that shows (111), and see Figures 9a and 9b that shows weakened recesses that are open (209)) in its outer surface (see Figures 5, 9a, and 9b) which allow it to twist while it rotates (see Figures 5, 9a, and 9b, Pages 9-10, the claimed limitation directed to “which allow it to twist while it rotates” is considered as a functional limitation. It should be appreciated that the applicant’s functional language in the claims does not serve to impart patentability. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Apparatus claims cover what a device is, not what a device does. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior apparatus teaches all the structural limitations of the claims. See MPEP 2114. Furthermore, EGLMEIER is capable of performing the claimed function, since it has weekended recesses or hinges that allow for it to twist while it rotates).
Regarding claim 14, EGLMEIER discloses: the malleable material is selected from the group comprising plastic, metal, and combinations of them (see Pages 6 and 8).
Regarding claim 18, EGLMEIER discloses: the first component is a drive shaft (206 and/or 209).
Regarding claim 19, EGLMEIER discloses: the second component is a screw conveyor (205).
Claim Rejections - 35 USC § 103
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.
Claims 2 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over EGLMEIER in view of KIM (German Patent Publication DE 10 2016 216 457 A1, a machine translation is provided with the foreign reference in the PTO-892, Notice of References Cited, and is utilized in the rejection below).
Regarding claims 2 and 15, EGLMEIER discloses the claimed invention, however, fails to disclose the power train is formed from polyamide.
Regarding claims 2 and 15, KIM teaches: the power train (310, 320) is formed from polyamide (see Page 6).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the power train is formed from polyamide, since 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 as a matter of obvious design choice. Furthermore, KIM teaches using a polyamide for a power train. 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 power train is formed from polyamide in the power train of EGLMEIER, since it requires only routine skill in the art to utilize similar materials for power trains, as well as, produce predictable results (i.e. the flexibility of the power train).
Claims 3, 6-8, 10-12, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over EGLMEIER in view of MATHIS (U.S. Patent Publication US 2017/0184155 A1).
Regarding claim 3, EGLMEIER discloses the claimed invention, including the power train is substantially molded in one piece (see Figures 5 and 9a-9b), however, fails to specifically disclose the molding is from a powder.
Regarding claim 3, MATHIS teaches: a component (102, 104, 106) is substantially molded in one piece (see Figure 1) from a powder (¶0022).
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 power train being molded from a powder in the power train of EGLMEIER, in order to provide design flexibility in creating a component, such as the power train. Furthermore, utilizing well known processes such as 3D printing using a powder, requires only routine skill in the art and produces predictable results (i.e. the ability to produce a component quickly).
Regarding claims 6 and 17, the claimed limitation directed to “the molded power train is provided by 3D printing” is considered as a product by process limitation. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 111 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113).
Alternatively, MATHIS teaches forming a component (102, 104, 106) by 3D printing (additive manufacturing) (see ¶0023).
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 molded power train by 3D printing in the eccentric screw pump of EGLMEIER, since applying a known technique (i.e. 3D printing), as taught by MATHIS, to a known device (i.e. power train of EGLMEIER) would have yielded predicable results. The results are predictable and provide the improvement of producing a part quickly and accurately.
Regarding claim 7, EGLMEIER discloses: an eccentric screw pump (101) with a rotor (102, 105) of a drive shaft ((109) at top in the bearings (115)) circulating essentially about a fixed axis (107) in relation to the stator (108) in a bearing block (115) (see Figure 5), a power train (the powertrain includes (111, 109, 209)) and a screw conveyor (105, 205), which revolves in a rotating-oscillating manner in a screw flight of the stator (108), wherein the power train provides the screw conveyor with its drive torque and the power train adjusts the differences of the motion sequences of the screw conveyor and of the drive shaft (see Figures 5 and 9a-9b, Pages 7-8), characterized in that the power train consists essentially of a one-piece rotational body (see Figures 5 and 9a-9b that shows essentially a one-piece rotational body), which is substantially molded in one piece (see Figures 5 and 9a-9b that shows essentially a one-piece rotational body, the limitation directed to “substantially molded in one piece” is considered as a product by process limitation. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 111 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113. EGLMEIER shows a one piece power train that is capable of being molded in one piece) which provides it with elasticity to rotate (the claimed limitation directed to “which provide it with elasticity to rotate” is considered as a functional limitation It should be appreciated that the applicant’s functional language in the claims does not serve to impart patentability. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Apparatus claims cover what a device is, not what a device does. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior apparatus teaches all the structural limitations of the claims. See MPEP 2114. Furthermore, EGLMEIER is capable of performing the claimed function, since EGLMEIER is made of plastics (see Pages 6 and 7), which have a certain elasticity to them and the part rotates, thereby meeting the claimed limitation).
EGLMEIER discloses the claimed limitations, however, fails to specifically disclose the power train being molded from a powder.
Regarding claim 7, MATHIS teaches: forming a component (102, 104, 106) by 3D printing (additive manufacturing) using a powder (see ¶0023).
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 molded power train by 3D printing with a powder in the eccentric screw pump of EGLMEIER, since applying a known technique (i.e. 3D printing using a powder), as taught by MATHIS, to a known device (i.e. power train of EGLMEIER) would have yielded predicable results. The results are predictable and provide the improvement of producing a part quickly and accurately.
Regarding claim 8, EGLMEIER discloses: the powder is comprised of material selected from a group including plastic, metal, and combinations of these (see Pages 6 and 8).
Regarding claim 10, EGLMEIER discloses: the power train has multiple weakening recesses (see Figure 5 that shows (111), and see Figures 9a and 9b that shows weakened recesses that are open (209)), which interrupt its outer surface to provide rotational elasticity (see Figure 5 and see Abstract that discloses the powertrain is flexible, and Pages 6 and 10 that disclose that the power train is “spring bar”, which inherently has elasticity and the part is rotatable. The limitation directed to “to provide rotational elasticity” is considered as a functional limitation. It should be appreciated that the applicant’s functional language in the claims does not serve to impart patentability. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Apparatus claims cover what a device is, not what a device does. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior apparatus teaches all the structural limitations of the claims. See MPEP 2114. Furthermore, EGLMEIER is capable of performing the claimed function, since the power train is disclosed as a “spring bar”, which inherently has elasticity and the part is rotatable, thereby meeting the claimed limitation of “providing rotational elasticity”).
Regarding claim 11, EGLMEIER discloses: the power train rotates about an axis which curves in a periodically recurring manner at least in sections (see Figures 5 and 9a-9b).
Regarding claim 12, MATHIS further teaches: the molded power train is provided by 3D printing (see ¶0023).
Regarding claim 16, EGLMEIER discloses the claimed limitations, however, fails to specifically disclose the power train being molded from a powder.
Regarding claim 16, MATHIS teaches: forming a component (102, 104, 106) by 3D printing (additive manufacturing) using a powder (see ¶0023).
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 molded power train by 3D printing with a powder in the eccentric screw pump of EGLMEIER, since applying a known technique (i.e. 3D printing using a powder), as taught by MATHIS, to a known device (i.e. power train of EGLMEIER) would have yielded predicable results. The results are predictable and provide the improvement of producing a part quickly and accurately.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over the modified eccentric screw pump of EGLMEIER/ MATHIS as applied to claim 7 above, and further in view of KIM.
Regarding claim 9, the modified eccentric screw pump of EGLMEIER/ MATHIS discloses the claimed invention, however, fails to disclose the power train is formed from polyamide.
Regarding claim 9, KIM teaches: the power train (310, 320) is formed from polyamide (see Page 6).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the power train is formed from polyamide, since 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 as a matter of obvious design choice. Furthermore, KIM teaches using a polyamide for a power train. 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 power train is formed from polyamide in the modified eccentric screw pump of EGLMEIER/ MATHIS, since it requires only routine skill in the art to utilize similar materials for power trains, as well as, produce predictable results (i.e. the flexibility of the power train).
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.
Claims 1, 4, 5, 13, 14, and 18-19 are each rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2/1 of U.S. Patent No. 12,535,070 B2. 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 patented claim.
Claims 2, 9, and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2/1 of U.S. Patent No. 12,535,070 B2 in view of KIM.
Regarding claims 2, 9, and 15, U.S. Patent No. 12,535,070 B2 discloses the claimed invention, however, fails to disclose the power train is formed from polyamide.
Regarding claims 2, 9, and 15, KIM teaches: the power train (310, 320) is formed from polyamide (see Page 6).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the power train is formed from polyamide, since 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 as a matter of obvious design choice. Furthermore, KIM teaches using a polyamide for a power train. 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 power train is formed from polyamide in the power train of U.S. Patent No. 12,535,070 B2, since it requires only routine skill in the art to utilize similar materials for power trains, as well as, produce predictable results (i.e. the flexibility of the power train).
Claims 3, 7, 8, 10-12, 16, and 17 are each rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10/1 of U.S. Patent No. 12,535,070 B2. 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 patented claim.
Additional Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
BRUN (U.S. Patent 8,152,499 B2) utilizing bellows (30) made of metal or plastic to provide an elasticity to rotate the shaft (20) (see Figure 1).
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
Prosecution Insights