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 .
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 12,247,666 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Maintenance Fee Reminder
Applicant is reminded during the prosecution of the instant reissue patent application, maintenance fees must be kept up to date for the Patent No. 12,247,666 (“the ‘666 patent”). A review of the maintenance fee status for the ‘666 patent shows the first day to pay the 3.5 year fee opens March 11, 2028, the surcharge starts September 12, 2028, and the last day to pay is March 12, 2029.
Information Disclosure Statement
The information disclosure statement filed July 21, 2025 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered. The foreign references struck through on the IDS do not have any English explanation of reference, and thus, were struck through and not considered.
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 24, 29, and 38 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.
Regarding Claim 24, the limitation, “the annular body” in lines 3-4, renders the claim indefinite, because it is unclear if it is one of the annular bodies in line 2 of claim 21 or both of the annular bodies. It is suggested the limitation either be changed to - -at least one of the annular bodies- - or - -the annular bodies- -.
Claim 29 recites the limitation "the dynamic pressure generation groove portion" in line 3. There is insufficient antecedent basis for this limitation in the claim. For the Office Action below it is presumed claim 29 should depend from claim 22 to fix the lack of antecedent basis for the limitation.
Regarding Claim 29, the limitation, “the annular body” in line 4, renders the claim indefinite, because it is unclear if it is one of the annular bodies in line 2 of claim 21 or both of the annular bodies. It is suggested the limitation either be changed to - -at least one of the annular bodies- - or - -the annular bodies- -.
Regarding Claim 38, the limitation, “the annular body” in lines 3-4, renders the claim indefinite, because it is unclear if it is one of the annular bodies in line 2 of claim 36 or both of the annular bodies. It is suggested the limitation either be changed to - -at least one of the annular bodies- - or - -the annular bodies- -.
All claims should be revised carefully to correct all other deficiencies similar to the ones noted above.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 21, 25, 30, and 31 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tokunaga et al. (US-20180135699). Regarding Claim 21, Tokunaga et al. discloses a sliding component, comprising: a pair of annular bodies 4,7 arranged at relatively rotating positions to face each other when driving a rotating machine, wherein an annular recess portion (10 particularly in Figure 2A) opening continuously and radially over entire circumference is formed on an inner radial side of at least one of a pair of sliding surfaces (S of 4) of the sliding component and faces a remaining one of the sliding surfaces (S of 7), a supply groove 11 communicating with the annular recess portion and extending radially on the sliding surface is formed on at least one of the pair of sliding surfaces (S of 4), and a bottom surface (part of 10 radially innermost in 4) of the annular recess portion having at least an annular flat surface (radially innermost surface of 10 in 4) which is continuously formed throughout entire circumference of the one of the sliding surfaces (S of 4) (Figures 1-7).
Regarding Claim 25, Tokunaga et al. discloses wherein a plurality of the supply grooves are equally arranged in the circumferential direction of the sliding surface (see particularly Figure 3B) (Figures 1-7).
Regarding Claim 30, Tokunaga et al. disclose wherein the annular recess portion and the supply groove communicate with each other at a same depth (see particularly Figure 2A) (Figures 1-7).
Regarding Claim 31, Tokunaga et al. disclose wherein the sliding component constitutes an outside-typed mechanical seal which seals a leakage of a sealed fluid located on a radially inner peripheral side toward a radially outer peripheral side (Figures 1-7).
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.
Claim(s) 26-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tokunaga et al. (US-20180135699). Regarding Claims 26, Tokunaga et al. discloses the sliding component according to claim 21, as advanced above, wherein the annular recess and the supply grooves are formed on the annular body fixed to the rotating side of the rotating machine, not the fixed side of the rotating machine.
However, it would have been an obvious design choice reversal of parts to one of ordinary skill in the art before the effective filing date of the claimed invention to move the annular recess and supply grooves to the fixed side of the rotating machine to achieve the desired result of moving the lubricant across the sliding surfaces and properly lubricate the sliding surfaces.
Regarding Claim 27, Tokunaga et al. disclose the sliding component according to claim 21, the supply groove opens to an inner radial side or an outer radial side of at least one of the pair of sliding surfaces of the sliding component (Figures 1-7), but does not expressly disclose the supply groove is formed deeper than the annular recess portion.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the supply groove 11 is deeper than the annular recess 10, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 167 F.2d 272, 205 USPQ 215 (CCPA 1980). One skill in the art would realize that the depth of grooves in a sliding pair depends on the number of rotations, type of sealing fluid (viscosity), working pressure, etc. Since the claim is silent about the working environment, finding an appropriate ratio of the depth of supply groove to the depth of annular recess, based on the working environment, would yield the desired sealing effect.
Regarding Claim 28, Tokunaga et al. disclose the sliding component according to claim 21, the supply groove communicates with a side opposite to an opening (inner radial side) of the annular recess portion (Figures 1-7), but does not expressly disclose the supply groove is formed deeper than the annular recess portion.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the supply groove 11 is deeper than the annular recess 10, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 167 F.2d 272, 205 USPQ 215 (CCPA 1980). One skill in the art would realize that the depth of grooves in a sliding pair depends on the number of rotations, type of sealing fluid (viscosity), working pressure, etc. Since the claim is silent about the working environment, finding an appropriate ratio of the depth of supply groove to the depth of annular recess, based on the working environment, would yield the desired sealing effect.
Claim(s) 22-24, 29, and 32-39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tokunaga et al. (US-20180135699) in view of JP 2019-173956(referred to hereinafter as JP’956). Regarding Claim 22, Tokunaga et al. disclose the sliding component according to claim 21, as advanced above, but does not expressly disclose wherein a dynamic pressure generation groove portion is provided to communicate with the supply groove and to extend in a circumferential direction in which the annular bodies rotate relatively to each other.
However, JP’956 teaches a sliding component comprising a dynamic pressure generation groove portion 94 is provided to communicate with the supply groove 93 and to extend in a circumferential direction in which the annular bodies rotate relatively to each other (Figures 1-8). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the dynamic pressure grooves of JP’756 to the sliding component of Tokunaga et al. to move the lubricant across the sliding surfaces and properly lubricate the sliding surfaces.
Regarding Claim 29, Tokunaga et al. in view of JP’956 does not expressly disclose the supply groove is formed shallower than the dynamic pressure generation groove portion.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the supply groove 11/93 is shallower than the dynamic pressure generation groove portion 94, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 167 F.2d 272, 205 USPQ 215 (CCPA 1980). One skill in the art would realize that the depth of grooves in a sliding pair depends on the number of rotations, type of sealing fluid (viscosity), working pressure, etc. Since the claim is silent about the working environment, finding an appropriate ratio of the depth of supply groove to the depth of annular recess, based on the working environment, would yield the desired sealing effect.
Regarding claim 23, Tokunaga et al. disclose the sliding component according to claim 21, as advanced above, but does not expressly disclose a single annular groove extending in the circumferential direction communicates with a terminal end of the supply groove.
However, JP’956 teaches a sliding component comprising a single annular groove 96 extending in the circumferential direction communicates with a terminal end of the supply groove 93 (Figures 1-8). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the annular groove of JP’756 to communicate with the terminal end of the supply grooves of the sliding component of Tokunaga et al. to move the lubricant across the sliding surfaces and properly lubricate the sliding surfaces.
Regarding Claim 24, Tokunaga et al. disclose the sliding component according to claim 23, as advanced above, but does not expressly disclose at least one negative pressure generation groove portion is provided to communicate with the annular groove and to extend in a circumferential direction in which the annular body rotates relatively to each other.
However, JP’956 teaches a sliding component comprising at least one negative pressure generation groove portion 95 is provided to communicate with the annular groove 96 and to extend in a circumferential direction in which the annular body rotates relatively to each other (Figures 1-8). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the negative pressure grooves of JP’756 to communicate with the annular groove of the sliding component of Tokunaga et al. to move the lubricant across the sliding surfaces and properly lubricate the sliding surfaces.
Regarding Claim 32, Tokunaga et al. disclose a sliding component, comprising: a pair of annular bodies 4,7 arranged at relatively rotating positions to face each other when driving a rotating machine, wherein an annular recess portion (10 particularly in Figure 2A) opening continuously and radially over entire circumference is formed on an inner radial side of at least one of a pair of sliding surfaces (S of 4) of the sliding component and faces a remaining one of the sliding surfaces (S of 7), a supply groove 11 communicating with the annular recess portion and extending radially on the sliding surface is formed on at least one of the pair of sliding surfaces (S of 4) (Figures 1-7), but does not expressly disclose wherein a dynamic pressure generation groove portion is provided to communicate with the supply groove and to extend in a circumferential direction in which the annular bodies rotate relatively to each other.
However, JP’956 teaches a sliding component comprising a dynamic pressure generation groove portion 94 is provided to communicate with the supply groove 93 and to extend in a circumferential direction in which the annular bodies rotate relatively to each other (Figures 1-8). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the dynamic pressure grooves of JP’756 to the sliding component of Tokunaga et al. to move the lubricant across the sliding surfaces and properly lubricate the sliding surfaces.
Regarding claim 33, Tokunaga et al. does not expressly disclose a single annular groove extending in the circumferential direction communicates with a terminal end of the supply groove.
However, JP’956 teaches a sliding component comprising a single annular groove 96 extending in the circumferential direction communicates with a terminal end of the supply groove 93 (Figures 1-8). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the annular groove of JP’756 to communicate with the terminal end of the supply grooves of the sliding component of Tokunaga et al. to move the lubricant across the sliding surfaces and properly lubricate the sliding surfaces.
Regarding Claim 34, Tokunaga et al. does not expressly disclose at least one negative pressure generation groove portion is provided to communicate with the annular groove and to extend in a circumferential direction in which the annular body rotates relatively to each other.
However, JP’956 teaches a sliding component comprising at least one negative pressure generation groove portion 95 is provided to communicate with the annular groove 96 and to extend in a circumferential direction in which the annular body rotates relatively to each other (Figures 1-8). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the negative pressure grooves of JP’756 to communicate with the annular groove of the sliding component of Tokunaga et al. to move the lubricant across the sliding surfaces and properly lubricate the sliding surfaces.
Regarding Claim 35, Tokunaga et al. disclose the supply groove opens to an inner radial side or an outer radial side of at least one of the pair of sliding surfaces of the sliding component (Figures 1-7), but does not expressly disclose the supply groove is formed deeper than the annular recess portion.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the supply groove 11 is deeper than the annular recess 10, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 167 F.2d 272, 205 USPQ 215 (CCPA 1980). One skill in the art would realize that the depth of grooves in a sliding pair depends on the number of rotations, type of sealing fluid (viscosity), working pressure, etc. Since the claim is silent about the working environment, finding an appropriate ratio of the depth of supply groove to the depth of annular recess, based on the working environment, would yield the desired sealing effect.
Regarding Claim 36, Tokunaga et al. discloses disclose a sliding component, comprising: a pair of annular bodies 4,7 arranged at relatively rotating positions to face each other when driving a rotating machine, wherein an annular recess portion (10 particularly in Figure 2A) opening continuously and radially over entire circumference is formed on an inner radial side of at least one of a pair of sliding surfaces (S of 4) of the sliding component and faces a remaining one of the sliding surfaces (S of 7), a supply groove 11 communicating with the annular recess portion and extending radially on the sliding surface is formed on at least one of the pair of sliding surfaces (S of 4) (Figures 1-7), but does not expressly disclose wherein a single annular groove extending in the circumferential direction communicates with a terminal end of the supply groove.
However, JP’956 teaches a sliding component comprising a single annular groove 96 extending in the circumferential direction communicates with a terminal end of the supply groove 93 (Figures 1-8). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the annular groove of JP’756 to communicate with the terminal end of the supply grooves of the sliding component of Tokunaga et al. to move the lubricant across the sliding surfaces and properly lubricate the sliding surfaces.
Regarding Claim 37, Tokunaga et al. does not expressly disclose wherein a dynamic pressure generation groove portion is provided to communicate with the supply groove and to extend in a circumferential direction in which the annular bodies rotate relatively to each other.
However, JP’956 teaches a sliding component comprising a dynamic pressure generation groove portion 94 is provided to communicate with the supply groove 93 and to extend in a circumferential direction in which the annular bodies rotate relatively to each other (Figures 1-8). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the dynamic pressure grooves of JP’756 to the sliding component of Tokunaga et al. to move the lubricant across the sliding surfaces and properly lubricate the sliding surfaces.
Regarding Claim 38, Tokunaga et al. does not expressly disclose at least one negative pressure generation groove portion is provided to communicate with the annular groove and to extend in a circumferential direction in which the annular body rotates relatively to each other.
However, JP’956 teaches a sliding component comprising at least one negative pressure generation groove portion 95 is provided to communicate with the annular groove 96 and to extend in a circumferential direction in which the annular body rotates relatively to each other (Figures 1-8). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the negative pressure grooves of JP’756 to communicate with the annular groove of the sliding component of Tokunaga et al. to move the lubricant across the sliding surfaces and properly lubricate the sliding surfaces.
Regarding Claim 39, Tokunaga et al. disclose the supply groove opens to an inner radial side or an outer radial side of at least one of the pair of sliding surfaces of the sliding component (Figures 1-7), but does not expressly disclose the supply groove is formed deeper than the annular recess portion.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the supply groove 11 is deeper than the annular recess 10, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 167 F.2d 272, 205 USPQ 215 (CCPA 1980). One skill in the art would realize that the depth of grooves in a sliding pair depends on the number of rotations, type of sealing fluid (viscosity), working pressure, etc. Since the claim is silent about the working environment, finding an appropriate ratio of the depth of supply groove to the depth of annular recess, based on the working environment, would yield the desired sealing effect.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM E DONDERO whose telephone number is (571)272-5590. The examiner can normally be reached Monday-Friday 6 am - 4 pm ET, Alternate Fridays.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, EILEEN D LILLIS can be reached at 571-272-6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM E DONDERO/ Reexamination Specialist, Art Unit 3993
CONFEREES: /WILLIAM C DOERRLER/ Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/ SPRS, Art Unit 3993