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 .
Status of the Claims
Examiner acknowledges receipt of Applicant’s amendments and arguments filed with the Office on June 9th, 2026 in response to the Non-Final Office Action mailed on March 9th, 2026. Per Applicant's response, Claims 1-2, 5-6, 10-11, 13, & 17-19 have been amended. All other claims have been left in their previously-presented form. Consequently, Claims 1-20 still remain pending in the instant application. The Examiner has carefully considered each of Applicant’s amendments and/or arguments, and they will be addressed below.
Claim Objections
Claims 1-19 were objected to for minor informalities. Applicant has remedied these issues, but issues remain.
Claims 1-19 are again objected to because of the following informalities:
Claim 1, line 10 should read “the other
Claim 1, line 14 should read “passageway of the electric motor housing.”
Claim 12, line 1 should read “are formed about the second set of bearings and”
Claim 17, line 10 should read “the other rotor of the two rotors”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 2, 5-6, 10-13, & 18-19 were 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. Applicant’s amendments to the claims have remedied these issues, rendering the 112(b) rejections moot.
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 17-19 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 17, line 15 recites the limitation “the first plurality of projection" in line 15. There is insufficient antecedent basis for this limitation in the claim. In this case, it is not clear whether this limitation 1) intended to refer to the “first plurality of protrusions” recited earlier in the claim or 2) is introducing another plurality of elements altogether. As such, the metes and bounds of the claim cannot be determined. As far as the examiner understands the invention, the first interpretation appears most likely correct, and thus, for examination purposes herein, the first interpretation has been applied by the examiner.
Appropriate correction is required.
Response to Arguments
Applicant's arguments filed June 9th, 2026 have been fully considered but they are not persuasive. The Examiner’s responses can be seen below.
In regards to Applicant’s argument that “Hoshi at least does not teach or suggest wherein the roots device housing includes a coolant cavity at least partially surrounding a set of bearings of the rotors, the set of bearings supporting the rotors, and wherein the coolant cavity is in fluid communication with the coolant passageway of the electric motor. A person of ordinary skill in the art would not modify Mitsubishi in view of Hoshi. First, Hoshi is a vacuum pump and not a roots blower. Further Hoshi's system include a coolant that flows entirely through the housing of the motor. It is unclear how a person of ordinary skill in the art would or could modify Mitsubishi's blower to include a coolant cavity without disrupting the sealing of the gear case. Further, a person of ordinary skill in the art would not look to Hoshi's screw vacuum pump which is being utilized to prevent the generation of deposits in semi-conductor producing process and not to cool bearings supporting a rotor. See Col. 2 Line 43-52. Combining Mitsubishi with Hoshi would not have led to the claimed subject matter because Mitsubishi and Hoshi, either individually or in combination, at least do not disclose or suggest wherein the roots device housing includes a coolant cavity at least partially surrounding a set of bearings of the rotors, the set of bearings supporting the rotors, and wherein the coolant cavity is in fluid communication with the coolant passageway of the electric motor, as recited by Claim 1. Claim 20 includes a similar recitation. Accordingly, independent Claims 1 and 20 are distinguishable over the cited art”, the Examiner must respectfully disagree. Applicant’s assertions that “Hoshi at least does not teach or suggest wherein the roots device housing includes a coolant cavity at least partially surrounding a set of bearings of the rotors, the set of bearings supporting the rotors, and wherein the coolant cavity is in fluid communication with the coolant passageway of the electric motor” and “Combining Mitsubishi with Hoshi would not have led to the claimed subject matter because Mitsubishi and Hoshi, either individually or in combination, at least do not disclose or suggest wherein the roots device housing includes a coolant cavity at least partially surrounding a set of bearings of the rotors, the set of bearings supporting the rotors, and wherein the coolant cavity is in fluid communication with the coolant passageway of the electric motor, as recited by Claim 1” are both incorrect. The previous office action clearly details that the features being argued as absent by Applicant are present in Hoshi (see page 7 of the previous office action), and thus, would, in fact, be present in the combination with Mitsubishi (see pages 7-8 of the previous office action). In particular, the office action clearly describes that Hoshi discloses another roots-type pump similar to that of Mitsubishi (Abstract; Fig. 5) having an electric motor assembly (5) (a motor housing and electric motor are both shown in Fig. 5) driving a roots device (1-3, 6-8) (includes roots device housing 1-3 and rotors 8) via a gear transmission (4, 24) (col. 1, lines 12-63). Hoshi further discloses that the electric motor housing includes a coolant passageway (15), the roots device housing (1-3) includes a coolant cavity (19) at least partially surrounding a set of bearings (12) of the rotors (Fig. 5), the set of bearings (12) supporting the rotors (Fig. 5; col. 1, lines 34-39), and wherein the coolant cavity (19) is in fluid communication with the coolant passageway (15) of the electric motor (Figs. 5-6; col. 1, line 56 - col. 2, line 23). Thus, Applicant’s two assertions have been shown in the previous office action to be clearly false. Applicant also asserts “A person of ordinary skill in the art would not modify Mitsubishi in view of Hoshi. First, Hoshi is a vacuum pump and not a roots blower. Further Hoshi's system include a coolant that flows entirely through the housing of the motor. It is unclear how a person of ordinary skill in the art would or could modify Mitsubishi's blower to include a coolant cavity without disrupting the sealing of the gear case. Further, a person of ordinary skill in the art would not look to Hoshi's screw vacuum pump which is being utilized to prevent the generation of deposits in semi-conductor producing process and not to cool bearings supporting a rotor. See Col. 2 Line 43-52”. These arguments are not well taken either. Applicant’s argument that “Hoshi is a vacuum pump and not a roots blower” amounts to nothing more than arguing intended use for the two apparatus Claims 1 & 20. Whether the device in the prior art produces vacuum or pressure is irrelevant as it relates to the claimed pumps of Claims 1 & 20 because the structure of the recited invention remain the same in either case. The Examiner further notes that neither Claim 1 nor Claim 20 recites any particular pressurization function (i.e. vacuum, blower, etc.) and as such, Applicant is also arguing unclaimed elements. Applicant’s argument that “Hoshi's system include a coolant that flows entirely through the housing of the motor. It is unclear how a person of ordinary skill in the art would or could modify Mitsubishi's blower to include a coolant cavity without disrupting the sealing of the gear case” is also not well taken. Applicant’s assertion that “a coolant that flows entirely through the housing of the motor” appears to be not only incorrect (Figure 5 clearly shows a cooling jacket containing a rectangular coolant chamber 15 containing the coolant, and thus, coolant does not flow entirely through the housing of the motor as alleged by Applicant), but also irrelevant to the claimed invention at hand (the claim language does not specify nor define the extent of the coolant passageway). Furthermore, Applicant’s assertion that “It is unclear how a person of ordinary skill in the art would or could modify Mitsubishi's blower to include a coolant cavity without disrupting the sealing of the gear case” is not well taken because Hoshi’s Figure 5 and corresponding disclosures, when compared with Mitsubishi’s Figure 4, would clearly show one of skill in the art how (and why) to modify Mitsubishi to arrive at a new roots pump with greatly improved cooling. In this case, one of skill in the art would simply 1) modify Mitsubishi’s motor housing 13 with Hoshi’s coolant jacket/chamber 15, 2) modify Mitsubishi’s roots device housing portion 10 with Hoshi’s coolant cavity 19, and finally 3) place them in serial fluid communication with one another, as taught in Hoshi, in order to improve motor/bearing cooling of the roots pump device (see also pages 7-8 of the previous office action). Hoshi provides not only the structure necessary, but also provides the motivation (improved motor and bearing cooling) for why one would desire such cooling chambers/cavities in roots device pumps. Therefore, Applicant’s arguments are not persuasive.
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.
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.
Claim(s) 1-4, 6, & 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over JPS62-200188U to Mitsubishi in view of US 6,315,535 to Hoshi et al.
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In regards to independent Claims 1 & 20, and with particular reference to Figures 4-5, Mitsubishi discloses:
1. A pump (Fig. 4) comprising: an electric motor assembly (8) including an electric motor (8a, 8b) disposed within an electric motor housing (13); a roots device (1-3) coupled to the electric motor (Fig. 4), the roots device including a roots device housing (3) defining an internal volume (S; Fig. 5); two rotors (1, 2) disposed in the internal volume (seen best in Fig. 5), one of the two rotors being connected to the electric motor (Fig. 4; rotor 1 is connected to motor shaft 4); and a transmission assembly (6, 7) including a drive gear (6) attached to the rotor coupled to the electric motor (Fig. 4), the transmission assembly including a driven gear (7) meshed with the drive gear (Fig. 4), the driven gear coupled to the other one rotor of the two rotors (Fig. 4), wherein the transmission assembly is positioned on an opposing side of the roots device housing relative to the electric motor (apparent in Fig. 4)…… a set of bearings of the rotors (the right pair of bearings 14; see Fig. 4), the set of bearings supporting the rotors (Fig. 4)
20. A pump (Fig. 4) comprising: an electric motor assembly (8) including an electric motor (8a, 8b) disposed within an electric motor housing (13); a roots device (1-3) coupled to the electric motor (Fig. 4), the roots device including a roots device housing (3) defining an internal volume (S; Fig. 5); rotors (1, 2) disposed in the internal volume (seen best in Fig. 5), one of the rotors being connected to the electric motor (Fig. 4; rotor 1 is connected to motor shaft 4); a bearing plate (9) attached to the roots device housing (Fig. 4), wherein the bearing plate and an outer cover (11) attached to the bearing plate define an oil cavity (12) (Fig. 4); a transmission assembly (6, 7) positioned on an opposing side of the roots device housing relative to the electric motor and in the oil cavity (apparent in Fig. 4); an adapter (10)
Although Mitsubishi discloses the majority of Applicant’s recited invention, he does not further disclose:
“the electric motor housing including a coolant passageway, the roots device housing includes a coolant cavity at least partially surrounding the set of bearings, wherein the coolant cavity is in fluid communication with the coolant passageway of the electric motor” (Claim 1) or
“the electric motor housing including a coolant passageway, an adapter including a coolant inlet and a coolant outlet for introducing coolant and defining a coolant cavity for the coolant, wherein the coolant cavity is in fluid communication with the coolant passageway” (Claim 20)
However, Hoshi et al. (Hoshi hereinafter) discloses another pump similar to that of Mitsubishi (Abstract; Fig. 5) having an electric motor assembly (5) (a motor housing and electric motor are both shown in Fig. 5) driving a roots device (1-3, 6-8) (includes roots device housing 1-3 and rotors 8) via a gear transmission (4, 24) (col. 1, lines 12-63). Hoshi further discloses that the electric motor housing includes a coolant passageway (15), the roots device housing (1-3) includes a coolant cavity (19) at least partially surrounding a set of bearings (12) of the rotors (Fig. 5; i.e. the set of bearings 12 nearest the motor), the set of bearings (12) supporting the rotors (Fig. 5; col. 1, lines 34-39), and wherein the coolant cavity (19) is in fluid communication with the coolant passageway (15) of the electric motor (Figs. 5-6; col. 1, line 56 – col. 2, line 23). Similarly, Hoshi discloses an adapter (i.e. end plate/adapter 3) including a coolant inlet (18; Fig. 6) and a coolant outlet (20; Fig. 6) for introducing coolant and defining a coolant cavity (19) for the coolant, wherein the coolant cavity (19) is in fluid communication with the coolant passageway of the electric motor (Figs. 5-6; col. 1, line 56 – col. 2, line 23). Hoshi makes clear that by providing such water cooling system for the pump (Fig. 6), the entirety of the rotor pump, including the motor 5, the bearings 12, and the pump rotors 8, is reliably cooled and protected from overheating damage. Therefore, to one of ordinary skill desiring a more reliable rotor-type gas pump that prevents overheating, it would have been obvious to utilize the techniques disclosed in Hoshi in combination with those seen in Mitsubishi in order to obtain such a result. Consequently, it would have been obvious to one of ordinary skill in the art at a time before the effective filing date of the claimed invention to have modified Mitsubishi’s motor housing (13), end plate/adapter (10), roots device housing (3), and end plate/adapter (9) with the cooling water circuit taught in Hoshi in order to obtain predictable results; those results being a more durable and reliable EGR pump that prevents overheating damage to oil seals, bearings, and rotors (as taught by Hoshi at col. 1, lines 56-63; this is especially beneficial for Mitsubishi, who is pumping hot exhaust gasses).
In regards to Claim 2, Mitsubishi further discloses a bearing plate (i.e. end plate 9) attached to the roots device housing (Fig. 4), the bearing plate including journals (i.e. recesses, seen in Fig. 4) formed therein receiving a second set of bearings (i.e. the set of bearings 14 farthest from the motor; Fig. 4).
In regards to Claim 3, the bearing plate (9) and an outer cover (11) attached to the bearing plate define an oil cavity (12) (Fig. 4).
In regards to Claim 4, the transmission assembly is positioned in the oil cavity (Fig. 4).
In regards to Claim 6, Mitsubishi further discloses a transmission retainer plate (labeled by the Examiner in Fig. 4 above) positioned about the second set of bearings and attached to the bearing plate.
Claim(s) 5 & 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitsubishi-Hoshi (applied above) in view of WO 2019/141766 to Hughes.
In regards to Claim 5, Mitsubishi discloses the pump of claim 3, but does not further disclose that the bearing plate (9) includes an oil path formed therein, the oil path including oil inlets extending to a single oil outlet, said oil inlets and said oil outlet coupled to an engine oil circulation system, wherein the oil path lubricates the second set of bearings and the transmission assembly.
However, Hughes provides a very similar roots-type blower/pump assembly (Figs. 1-2) in which an electric motor (32) drives a roots device (38) arranged within a housing (40) via a gear transmission (46), wherein a bearing plate (126) is attached to the housing (Figs. 1-2, 9-10), the bearing plate including journals (98) formed therein and receiving bearings (100; para. 52). Hughes goes on to disclose wherein the bearing plate (126) includes an oil path (108) formed therein (Figs. 9-10), the oil path including oil inlets (114) extending to a single oil outlet (112; Fig. 9; para. 52), said oil inlets and outlet coupled to an engine oil circulation system, wherein the oil path lubricates the bearings and the transmission assembly (paras. 47-48, 52). Hughes makes clear that by integrating oil channels into the bearing plate, the bearings and transmission are easily linked with an engine oil circulation system in order to ensure the bearings and transmission remain well-lubricated. Therefore, to one of ordinary skill desiring a more reliable roots pump, it would have been obvious to utilize the techniques disclosed in Mitsubishi in combination with those seen in Hughes in order to obtain such a result. Consequently, it would have been obvious to one of ordinary skill in the art at a time before the effective filing date of the claimed invention to have modified Mitsubishi’s bearing plate (9) with the oil path (108) of Hughes (thus linking Mitsubishi’s bearing plate 9 to an engine oil circulation system, as taught in Hughes) in order to obtain predictable results; those results being a more reliable transmission/bearing assembly that prevents overheating during operations.
In regards to Claim 7, Hughes discloses that oil is introduced into the oil path from an oil slot formed in the bearing plate (i.e. the vertically extending slot/conduit of path 108, seen in Fig. 10). The same would remain when combined with Mitsubishi.
In regards to Claim 8, Hughes discloses that oil is introduced into the oil path from an oil conduit (i.e. the vertically extending slot/conduit of path 108, seen in Fig. 10) formed in the bearing plate at a lower portion of the oil cavity, the oil conduit including holes (i.e. holes 114, which form the inlet paths) formed therein (Fig. 10). The same would remain when combined with Mitsubishi.
In regards to Claim 9, Hughes discloses that oil is introduced into the oil path from an oil conduit (i.e. the vertically extending slot/conduit of path 108, seen in Fig. 10) formed in the bearing plate at an upper portion of the oil cavity, the oil conduit including holes (i.e. holes 114, which form the inlet paths) formed therein (Fig. 10). The same would remain when combined with Mitsubishi.
Claim(s) 10-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitsubishi-Hoshi (applied above), and further in view of US 2002/0172612 to Okada et al.
In regards to Claims 10-13, Mitsubishi as modified by Hoshi discloses the pump of claim 2, including a roots device housing (3; Mitsubishi), the roots device housing having a coolant cavity (19; Hoshi) in communication with a cooling passageway (15; Hoshi) of the motor (via the teachings of Hoshi, as described above for Claim 1). However, Mitsubishi as modified by Hoshi does not further disclose that the roots device housing includes fin structures formed thereon about the second set of bearings, as claimed.
However, Okada et al. (Okada) provides a similar roots-type pump (Fig. 7) in which a roots device (1, 2) is arranged within a housing (4) and driven via a gear transmission (33, 34), wherein a bearing plate (7) is attached to the housing (Fig. 7), the bearing plate including journals (i.e. recesses) formed therein receiving bearings (21; para. 22). Okada goes on to disclose wherein the housing (4) includes fin structures (61) formed radially about (i.e. perpendicularly to/toward) the bearings and within a cooling water passage (41) for the purpose of enhanced cooling thereof (paras. 31-32), thereby enhancing bearing life. Therefore, to one of ordinary skill desiring a more reliable roots pump bearing system, it would have been obvious to utilize the techniques disclosed in Okada in combination with those seen in Mitsubishi-Hoshi in order to obtain such a result. Consequently, it would have been obvious to one of ordinary skill in the art at a time before the effective filing date of the claimed invention to have modified Mitsubishi’s bearing plate (9) with the radial fins (61) arranged about the second set of bearings (14) (as taught in Okada) in order to obtain predictable results; those results being more effective bearing cooling system.
In regards to Claim 14, see Claim 20 above, as these features are taught by Hoshi.
In regards to Claim 15, Hoshi’s coolant inlet (18) and the coolant outlet (20) are formed on opposing sides of a separator (i.e. the walls of bearing plate/adapter 3 form separators). The same would remain in the combination with Mitsubishi.
In regards to Claim 16, Hoshi’s coolant inlet (18) and the coolant outlet (20) are defined by bores (“pipes”; col. 2, lines 11-17) extending through the adapter (3). However, Hoshi does not disclose that each bore is formed through the adapter at an angle, such that each bore is not angled perpendicularly relative to the adapter. However, it would have been an obvious matter of design choice to have provided Hoshi’s coolant inlet/outlet pipes at angles, as claimed, since applicant has not disclosed that an angled inlet/outlet arrangement solves any stated problem or is for any particular purpose and it appears that the invention would perform equally well with the inlet/outlet arrangement (18, 20) of Hoshi. Furthermore, the courts have held that where the only difference between the prior art and the claimed invention is the recitation of relative dimensions of the claimed device, the device having the claimed relative dimensions would not perform differently than the prior art device and is therefore not patentably distinct (See MPEP § 2144.04 - Paragraph IV.A). Please note that in paragraph 45 of the instant application, this angled inlet/outlet arrangement has been disclosed, but Applicant has failed to disclose any criticality for the claimed limitations. For all of these reasons, Claim 16 is rendered obvious by Mitsubishi as modified by Hoshi and Okada.
Claim(s) 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over JPS62-200188U to Mitsubishi in view of US 6,315,535 to Hoshi et al. and JP 2003-247495 to Miyake et al. (attached herein with machine translation).
In regards to independent Claim 17, and with particular reference to Figures 4-5 shown previously above, Mitsubishi discloses:
17. A pump (Fig. 4 depicts a root-style blower/pump) comprising: an electric motor assembly (8) including an electric motor (8a, 8b) disposed within an electric motor housing (13); a roots device (1-3) coupled to the electric motor (Fig. 4), the roots device including a roots device housing (3) defining an internal volume (S; Fig. 5); rotors (1, 2) disposed in the internal volume (seen best in Fig. 5), one of the two rotors being connected to the electric motor (Fig. 4; rotor 1 is connected to motor shaft 4); and a transmission assembly (6, 7) including a drive gear (6) attached to the rotor coupled to the electric motor (Fig. 4), the transmission assembly including a driven gear (7) meshed with the drive gear (Fig. 4), the driven gear coupled to the other one of the rotors (Fig. 4), wherein the transmission assembly is positioned on an opposing side of the roots device housing relative to the electric motor (apparent in Fig. 4)
Although Mitsubishi discloses much of claim 17, he does not further disclose 1) the electric motor housing including a coolant passageway, or 2) the transmission assembly including an insulated coupling joining a rotor shaft to an electric motor shaft, as claimed.
However, Hoshi and Miyaki remedy these deficiencies.
As noted previously above, Hoshi discloses another roots pump similar to Mitsubishi (Abstract; Fig. 5) having an electric motor assembly (5) (a motor housing and electric motor are both shown in Fig. 5) driving a roots device (1-3, 6-8) (includes roots device housing 1-3 and rotors 8) via a gear transmission (4, 24) (col. 1, lines 12-63). Hoshi further discloses that the electric motor housing includes a coolant passageway (15), the roots device housing (1-3) includes a coolant cavity (19), and wherein the coolant cavity (19) is in fluid communication with the coolant passageway (15) of the electric motor (Figs. 5-6; col. 1, line 56 – col. 2, line 23). Hoshi makes clear that by providing such water cooling system for the pump (Fig. 6), the entirety of the rotor pump, including the motor 5, the bearings 12, and the pump rotors 8, is reliably cooled and protected from overheating damage. Therefore, to one of ordinary skill desiring a more reliable rotor-type gas pump that prevents overheating, it would have been obvious to utilize the techniques disclosed in Hoshi in combination with those seen in Mitsubishi in order to obtain such a result. Consequently, it would have been obvious to one of ordinary skill in the art at a time before the effective filing date of the claimed invention to have modified Mitsubishi’s motor housing (13), end plate/adapter (10), roots device housing (3), and end plate/adapter (9) with the cooling water circuit taught in Hoshi in order to obtain predictable results; those results being a more durable and reliable EGR pump that prevents overheating damage to oil seals, bearings, and rotors (as taught by Hoshi at col. 1, lines 56-63; this is especially beneficial for Mitsubishi, who is pumping hot exhaust gasses). Hoshi is silent towards the insulated coupling.
However, Miyake discloses another electric-motor-driven roots pump device (10, 12) having both an electric motor assembly (10) consisting of a motor (22, 24) and a motor housing (26), as well as a roots device (12) having a roots device housing (32) containing two rotos (34, 36) therein. Miyake goes on to disclose the use of an insulated coupling (44; Figs. 1 & 4) joining a rotor shaft (40) to an electric motor shaft (24) (paras. 18-20). The insulated coupling (44) includes a connector (50) (Fig. 4), the connector including a plurality of first protrusions (50a; Fig. 4), wherein a plurality of second protrusions (46a, 48a; Fig. 4) formed on each of the electric motor shaft and rotor shaft interlock with the first plurality of projection of the connector to form the insulated coupling (Fig. 4; paras. 18-20). Miyake makes clear that use of such an insulated coupling prevents heat transfer from the roots pump to the electric motor, thereby enhancing motor durability and longevity (para. 20). Therefore, to one of ordinary skill desiring a more durable roots pump that prevents damaging heat transfer towards the electric motor, it would have been obvious to utilize the techniques disclosed in Miyake in combination with those seen in Mitsubishi in order to obtain such a result. Consequently, it would have been obvious to one of ordinary skill in the art at a time before the effective filing date of the claimed invention to have modified Mitsubishi’s motor/roots shaft connection with the insulated adapter coupling arrangement (44) of Miyake in order to obtain predictable results; those results being a more reliable electric motor that avoids potential for overheating during operations.
In regards to Claim 18, Miyake clearly discloses that the plurality of second protrusions (46a, 48a) includes a pair of separated extending wedges (48a; Fig. 4; three wedges are shown) formed on the electric motor shaft (Fig. 4). The same would remain when combined with Mitsubishi.
In regards to Claim 19, Miyake clearly discloses that the insulated coupling (44) includes a rotor shaft coupling (48, 48a; Fig. 4) including a circular body (48) that is attached to the rotor shaft (Fig. 4), the connector (50, 50a) including a central circular body (50) having the plurality of first protrusions (50a) formed radially about a perimeter (Fig. 4), wherein the plurality of first protrusions of the connector define openings (i.e. tapered slots; see Fig. 4) into which the plurality of second protrusions of the rotor shaft and the electric motor shaft are positioned to couple the rotor shaft and the electric motor shaft (Fig. 4; paras. 18-20). The same would remain when combined with Mitsubishi.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,338,817 to Deville et al. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application, if allowed, would improperly extend the "right to exclude" already granted in the patent. In other words, the subject matter claimed in the instant application is fully disclosed in the issued patent. Specifically, the patent and the instant application claim common subject matter as follows: a pump that includes an electric motor assembly having a motor, a housing, and a coolant passageway, a roots device having a housing and two rotors disposed within an internal cavity thereof, a transmission assembly including driven and drive gears disposed at opposite end of the roots device housing from the electric motor, a coolant cavity within the roots device in fluid communication with the coolant passageway, an insulated coupling joining a rotor shaft to an electric motor shaft, and all functional limitations associated with these common elements. Finally, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the previous application which matured into a patent.
Conclusion
Applicant's amendments filed on June 9th, 2026 have 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 ALEXANDER BRYANT COMLEY whose telephone number is (571)270-3772. The examiner can normally be reached Monday-Friday 9AM-6PM CST.
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, Mark Laurenzi can be reached at 571-270-7878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALEXANDER B COMLEY/Primary Examiner, Art Unit 3746
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