DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Application Status
This office action is in response to amendments/arguments filed on August 28, 2026. Applicant has amended Claims 1, 3, 4, 5, and 7, and cancelled Claims 2 and 6. Claims 1, 3 – 5, and 7 are currently pending.
Response to Arguments
Applicant’s arguments have been fully considered.
Previous drawing objections are withdrawn due to applicant’s amendment.
Previous claim objections are withdrawn due to applicant’s amendment.
Previous 112 rejections are withdrawn due to applicant’s amendment. New 112 rejections are presented below, necessitated by amendment.
Previous prior art rejections are withdrawn given the new 112 rejections necessitated by amendment. Arguments pertaining to previous prior art rejections are moot given the above.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3 – 5, and 7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the first end being permanently connected to the inner surface of the peripheral wall of the stator chamber exclusively by means of the bearings and slides…There is no support for this language in the specification. The specification states that “one end of which is permanently connected to the inner surface of the respective stator chamber 1, 2 preferably by means of bearings and slides along the inner surface of the stator chamber” (see Paragraph 41). Use of the word “exclusively” amounts to a negative limitation. As per MPEP 2173.05(i), any negative limitation or exclusionary proviso must have basis in the original disclosure, and the mere absence of a positive recitation is not basis for an exclusion. As such, applicant’s disclosure of the permanent connection preferably being performed by the bearings and slides does not amount to a positive disclosure of the exclusion of other components/methods to secure the first end of the component to the inner surface of the stator chamber.
Use of the word “exclusively” also invokes a question of whether applicant has possession of the claimed invention. The terms “bearings and slides” only appear in the specification twice, in a verbatim copy of the claim language. Given the drawings and description, a reasonable interpretation was made in the previous rejection that the bearings and slides are essentially the inner surface of the stator as the component slides along said surface, the surface itself preventing a further radial extension of the component and thus acting as a bearing – especially since no other “bearings and slides” are depicted in the Figures. The claims require that the second end of the component moves radially within the rotor within the receptacle, the component rotates with the rotor, and the stator is stationary. Given these facts, it is unclear how the component can be “permanently connected” to the inner surface exclusively by the inner surface of the stator chamber itself. Rotation of the component with the rotor and reciprocation of the component radially along the receptacle of the rotor would not be possible with a “permanent” connection as recited. Thus, the previous interpretation no longer applies and it is now unclear what the bearings and slides of the claimed invention even are and how they are arranged on the inner surface of the stator chamber. In Paragraph 14 of the specification, applicant themselves relies on “springs… arranged at the end of the component facing the inner surface of the stator chamber” in order to “optimize sealing”. Thus, the bearings and slides, whatever they may be, do not exclusively connect the first end of the component to the inner surface of the stator chamber based on applicant’s own disclosure. Given the above, applicant has not shown that they have possession of the claimed invention.
All other pending claims are rejected by virtue of their dependence on Claim 1.
The above 112a rejection does not allow a suitable prior art rejection to be made. The lack of a prior art rejection should not be interpreted as evidence of allowability from the perspective of 102 and 103. On the contrary, Kunieda and Jurjevic both teach all newly added features to Claim 1 with the exception of the “exclusively” clause, which applicant’s own disclosure does not follow.
Conclusion
Applicant's amendment 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.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAERT DOUNIS whose telephone number is (571)272-2146. The examiner can normally be reached on Mon. - Thurs: 10a - 4:30p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MARK LAURENZI can be reached on (571) 270-7878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Laert Dounis/
Primary Examiner, Art Unit 3746
Thursday, September 10, 2026
