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 Objections
Claims 1-19 are objected to because of the following informalities:
Claim 1, line 10 should read “gear coupled to the other rotor of the two rotors”
Appropriate correction is required.
Claim Objections
Claims 5, 7-9, 13-16 were objected to for minor informalities. Applicant’s claim amendments render these objections moot.
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 2, 5-6, 10-13, & 18-19 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 2, line 3 recites “the bearings”; this limitation renders the claim indefinite for multiple reasons. Claims 5-6 and 10-13 recite this language as well. At the outset, Claim 1 (from which Claims 2, 5-6, & 10-13 ultimately depend) recites the language “a set of bearings” and “the set of bearings”. Thus, it is not made clear whether “the bearings” recited in the dependent claims is 1) part of the “set of bearings” recited in Claim 1 or 2) introducing additional bearings. This issue is further complicated by the fact that Claim 1 defines that the “coolant cavity” at least partially surrounds the “set of bearings”. Applicant’s originally filed specification makes clear that there are multiple bearing portions (first bearings 28 at the motor end & second bearings 38 at the oil cavity end) in the invention, and that it is the first bearings 28, specifically, which are surrounded by the coolant cavity 43. The second bearings 38 are not surrounded by the coolant cavity, but instead are located in the oil cavity 42. This lack of clarity between bearings in the claim language leads to further ambiguity in Claims 2 & 5-6, because it is not clear how the coolant-cavity-surrounded bearings from Claim 1 could also be “the bearings” in Claims 2 & 5-6, given Applicant’s depictions of the invention. Similar issues arise in Claims 10-13. As far as the examiner understands the invention, it appears that Claim 2 likely should have recited “a second set of bearings”, which would properly define the bearings 38 in Applicant’s depicted invention. However, the examiner can only guess at Applicant’s true intent. Thus, the metes and bounds of the claim cannot be determined. For examination purposes, the examiner has 1) interpreted “the bearings” in Claim 2 as referring to a second set of bearings different from the bearings recited in Claim 1.
Claims 18 & 19 recite the limitations “separated extending wedges” and “wedge-shaped bodies”; these limitations render the claims indefinite because the required structure/shape cannot be discerned. In this case, Applicant’s Figures 19-20 depict the insulated coupling 80, and depicts “wedge shaped bodies” at elements 92 & 98, which form corresponding openings 100. However, it is not understood how the depicted elements 92, 98, or 100 constitute “wedges” or “wedge-shaped bodies”. Merriam-Webster’s dictionary defines “wedge” as “a piece of a substance (such as wood or iron) that tapers to a thin edge and is used for splitting wood and rocks, raising heavy bodies, or for tightening by being driven into something” (https://www.merriam-webster.com/dictionary/wedge). It is not understood how elements 92 and 98 (which do not taper to a thin edge) of Applicant’s figures would constitute “wedges”, as claimed. In fact, Applicant’s elements 92 & 98 appear much better defined as simply “protrusions”, “tapered bodies”, or “extensions”. However, given this disconnect in claim terminology, it becomes impossible to know what particular shape/structure is required for the recited “wedges” and “wedge-shaped bodies”, rendering Claims 18-19 indefinite. For examination purposes herein, given the Examiner’s understanding of the specification and figures, the Examiner has intpereted “wedges” as simply “protrusions” and “wedge-shaped bodies” as simply “protrusion-shaped bodies”.
Appropriate corrections are required.
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 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)…… 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), 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 bearings (i.e. the left set of bearings 14; Fig. 4; see also the 112b rejection above).
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 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 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 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 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 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 WO 2019/141766 to Hughes.
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 the transmission assembly including an insulated coupling joining a rotor shaft to an electric motor shaft.
However, Hughes (detailed previously above) specifically discloses an insulated coupling (134; Figs. 1 & 15-18) joining a rotor shaft (80) to an electric motor shaft (136) (para. 53). Hughes makes clear that use of such an insulated coupling prevents heat transfer from the roots pump housing 40 to the electric motor 34, thereby enhancing motor durability and longevity. Therefore, to one of ordinary skill desiring a more durable and 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 motor/roots connection with the insulated adapter coupling arrangement of Hughes 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, see the 112b rejection above. In this case, Hughes makes clear that the insulated coupling (134) includes a pair of separated extending wedges (protrusions 142) formed on the electric motor shaft (para. 54; Fig. 15). The same would remain when combined with Mitsubishi.
In regards to Claim 19, see the 112b rejection above. In this case, Hughes makes clear that the insulated coupling (134) includes a rotor shaft coupling (Fig. 18) including a circular body (116) that is attached to the rotor shaft (Fig. 15) and a pair of separated extending wedges (protrusions 144) extending from the circular body (Fig. 18), wherein the insulated coupling includes a connector (Figs. 16-17) linking the extending wedges of the rotor shaft and the electric motor shaft (Fig. 15), the connector including a central circular body (138) having wedge shaped bodies (i.e. protrusion shaped openings 140) formed radially about a perimeter (Figs. 16-17), wherein the wedge shaped bodies of the connector define openings (140) into which the extending wedges of the rotor shaft and the electric motor shaft are positioned to couple the rotor shaft and the electric motor shaft (Fig. 15; paras. 53-54). 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See also US 2003/0059325 to Adams and US 2005/0112014 to Shiromaru, both of which disclose roots-type pumps having a gear transmission arranged opposite from an electric motor.
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.
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/ALEXANDER B COMLEY/Primary Examiner, Art Unit 3746
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