Patent Application 18965487 - LOW COEFFICIENT OF EXPANSION ROTORS FOR VACUUM - Rejection

Patent Application 18965487 - LOW COEFFICIENT OF EXPANSION ROTORS FOR VACUUM

Title: LOW COEFFICIENT OF EXPANSION ROTORS FOR VACUUM BOOSTERS

Application Information

• Invention Title: LOW COEFFICIENT OF EXPANSION ROTORS FOR VACUUM BOOSTERS
• Application Number: 18965487
• Submission Date: 2025-04-08T00:00:00.000Z
• Effective Filing Date: 2024-12-02T00:00:00.000Z
• Filing Date: 2024-12-02T00:00:00.000Z
• Examiner Employee Number: 77362
• Art Unit: 3746
• Tech Center: 3700

Rejection Summary

• 102 Rejections: 1
• 103 Rejections: 2

Cited Patents

No patents were cited in this rejection.

Office Action Text

    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 .
Receipt and entry of Applicant' s Preliminary Amendment filed on 12/02/2024 is acknowledged.
	Claims 1-20 have been canceled.  Claims 21-40 have been added.  Overall, claims 21-41 are pending in this application.
In the event the determination of the status of the application as subject to AIA  35 U.S.C. 102 and 103 (or as subject to pre-AIA  35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.  

Drawings
The drawings are objected to under 37 CFR 1.83(a).  The drawings must show every feature of the invention specified in the claims.  Therefore, “an inner surface of the booster chamber (101) includes a coating” of the  must be shown or the feature(s) canceled from the claim(s).  No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.

Specification
2.	The disclosure is objected to because of the following informalities: page 7, para. [0025], line 6, “rotor lobes 112, 120” should be changed to -- rotor lobes 118, 120--.  Appropriate correction is required.     

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.


3.	Claims 21-40 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 pre-AIA  the applicant regards as the invention.
- Regarding claims 21-22, 24-25, 27, 31-32, 34-35 and 37, the term “about” is a relative term which renders the claim indefinite. The term "about" is not defined by any of the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Since the claim does not clearly set forth the metes and bounds of the patent protection desired, the scope of the claim is unascertainable. Accordingly, the term “about” should not be used/should be avoided in the claim languages.

- Claim 21 recites the limitation “the coating (131) from  ….. and the outer surface (127) of the second rotor (105) onto an inner surface of the booster chamber (101)” and “contact between the first rotor (103)/second rotor (105) and the inner surface of the booster chamber (101). Such recitations render the claim indefinite since it does not have detailed supports in the instant specification. Since the claim does not clearly set forth the metes and bounds of the patent protection desired, the scope of the claim is unascertainable.

- Claim 31 recites the limitation “wherein an inner surface of the booster chamber (101) includes a coating including at least one of an abradable coating or a formable coating”. Such recitations render the claim indefinite since it does not have detailed supports in the instant specification. Since the claim does not clearly set forth the metes and bounds of the patent protection desired, the scope of the claim is unascertainable.

	- The conflict/inconsistency terminology between the claim subject matter and the specification disclosure that renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings (i.e.: “the coating (131) from  ….. and the outer surface (127) of the second rotor (105) onto an inner surface of the booster chamber (101)”; “contact between the first rotor (103)/second rotor (105) and the inner surface of the booster chamber (101)”and “wherein an inner surface of the booster chamber (101) includes a coating including at least one of an abradable coating or a formable coating” recited in claims 21 and 31 (also see page 5, para. [0021] and page 6, para. [0023] of the instant application). Applicants will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the claim terms provided no new matter is introduced, or amend the claim.

The claims not specifically mentioned are indefinite since they depended from one of the above claims.
For the purpose of this Office action, the claims 21-40 will be examined as best understood by the examiner.

Claim Objections
4.	Claims 22-30 and 32-40 are  objected to because of the following informalities: 
	- Regarding claims 22-30: “The vacuum booster assembly” should be changed to
-- The method of applying a coating to an interior of the vacuum booster assembly --  for clarity and consistency the claim language;
		- Regarding claims 32-40: “The vacuum booster assembly” should be changed to   -- The method of applying a coating to an interior of the vacuum booster assembly--   for clarity and consistency the claim language;
Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –

(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.

(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.


5.	Claims 21-23, 25-26, 28, 31-33, 35-36 and 38 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rao et al. (Rao) (Patent Number 5,638,600 - provided with the IDS filed on 12/02/2024 by the applicants).    
	Regarding claim 21, as shown in Figs. 1-3, Rao discloses a method of applying a coating to an interior of a vacuum booster assembly comprising: operating a vacuum booster assembly 10 to spin one or more components thereof, the vacuum booster assembly including a booster chamber (14 - see col. 4, lines 7-19 and Fig . 1) including a gas inlet 20, 25 (see Fig. 1) for allowing gas to enter the booster chamber and a gas outlet 24 to allow gas to exit the booster chamber, a first rotor 15 (see Figs. 1 and 3) positioned within the booster chamber and adapted for rotation therein, and a second rotor 16 positioned within the booster chamber and adapted for rotation therein, wherein the first and second rotors 15, 16  are formed from a metal (see col. 1, lines 58-66) having a coefficient of thermal expansion from about 1 (10-6 in/in * K) to about 13 (10-6 in/in * K) (read by the examiner as the Rao use a light weight material selected from the group consisting of aluminum, magnesium, titanium, copper, bronze having a coefficient of thermal expansion from about 1 (10-6 in/in * K) to about 13 (10-6 in/in * K), and wherein one or more of an outer surface of the first rotor 15 and an outer surface of the second rotor 16 includes a coating (11 – see abstract; col. 3, lines 20-33  and Figs. 1 and 3) including at least one of an abradable coating or a formable coating, wherein at least a portion of the coating 11 has a surface roughness from about 125 Ra to about 1000 Ra (read by the examiner as the Rao use the same one of materials with the applicants’ invention as polymer, PTFE, a graphite, or molybdenum disulfide or combinations thereof for coating; therefore, the characteristics of one of the coating materials obviously having a surface roughness from about 125 Ra to about 1000 Ra); and transferring a portion of the coating from the one or more of the outer surface 18 of the first rotor 15 and the outer surface of the second rotor 16 onto an inner surface 19 of the booster chamber 14 based on at least one of contact between the first rotor and the second rotor, contact between the first rotor 15 and the inner surface 19 of the booster chamber, and contact between the second rotor 16 and the inner surface 19 of the booster chamber 14 (see col. 3, lines 20-33).      
	Regarding claim 22, Rao discloses wherein the coefficient of thermal expansion of the first and second rotors is from about 6 (10-6 in/in * K) to about 11 (10-6 in/in * K) (read by the examiner as the Rao use a light weight material selected from the group consisting of aluminum, magnesium, titanium, copper, bronze (see col. 1, lines 63-66) having a coefficient of thermal expansion from about 1 (10-6 in/in * K) to about 13 (10-6 in/in * K).     
	Regarding claim 23, Rao discloses wherein the coating includes at least two layers formed from two different materials (see col. 5, lines 15-23).   
	Regarding claim 25, Rao discloses wherein the coating has a coefficient of friction from about 0.04 μ to about 0.2 μ (read by the examiner as the Rao use the same one of materials with the applicants’ invention as polymer, PTFE, a graphite, or molybdenum disulfide, or combinations thereof for coating; therefore, the characteristics of one of the coating materials obviously having a surface roughness that has a coefficient of friction from about 0.04 μ to about 0.2 μ).     
 	Regarding claim 26, Rao discloses wherein the coating includes one or more of a PTFE, a graphite, or molybdenum disulfide (see col. 4, lines 54-67 to col. 5, lines 1-5).
	Regarding claim 28, Rao discloses wherein the first rotor 15 defines an interior cavity 26  (see Fig. 1 and 3) extending through a lobe of the first rotor.

	Regarding claim 31, Rao discloses a method of applying a coating to an interior of a vacuum booster assembly comprising: operating a vacuum booster assembly 10 to spin one or more components thereof, the vacuum booster assembly including a booster chamber (14 - see col. 4, lines 7-19 and Fig . 1) including a gas inlet  20, 25 for allowing gas to enter the booster chamber and a gas outlet 24 to allow gas to exit the booster chamber, a first rotor 15 (see Figs. 1 and 3)  positioned within the booster chamber and adapted for rotation therein, and a second rotor 16 positioned within the booster chamber and adapted for rotation therein, wherein the first and second rotors are formed from a metal (see col. 1, lines 58-66) having a coefficient of thermal expansion from about 1 (10-6 in/in * K) to about 13 (10-6 in/in * K) (read by the examiner as the Rao use a light weight material selected from the group consisting of aluminum, magnesium, titanium, copper, bronze (see col. 1, lines 63-66) having a coefficient of thermal expansion from about 1 (10-6 in/in * K) to about 13 (10-6 in/in * K), and wherein an inner surface of the booster chamber 14 includes a coating 11 (see Fig. 2) including at least one of an abradable coating or a formable coating, wherein at least a portion of the coating has a surface roughness from about 125 Ra to about 1000 Ra (read by the examiner as the Rao use the same one of materials with the applicants’ invention as polymer, PTFE, a graphite, or molybdenum disulfide or combinations thereof for coating; therefore, the characteristics of one of the coating materials obviously having a surface roughness from about 125 Ra to about 1000 Ra); and transferring a portion of the coating 11 from the inner surface 19 of the booster chamber 14 onto one or more of an outer surface 18 of the first rotor 15 and an outer surface 18 of the second rotor 16 based on at least one of contact between the first rotor 15 and the inner surface 19 of the booster chamber 14 and contact between the second rotor 16 and the inner surface 19 of the booster chamber 14 (see col. 3, lines 20-33).   

	Regarding claim 32, Rao discloses wherein the coefficient of thermal expansion of the first and second rotors is from about 6 (10-6 in/in * K) to about 11 (10-6 in/in * K) ) (read by the examiner as the Rao use a light weight material selected from the group consisting of aluminum, magnesium, titanium, copper, bronze (see col. 1, lines 63-66) having a coefficient of thermal expansion from about 1 (10-6 in/in * K) to about 13 (10-6 in/in * K).         
	Regarding claim 33, Rao discloses wherein the coating includes at least two layers formed from two different materials (see col. 5, lines 15-23).   
	Regarding claim 35, Rao discloses wherein the coating has a coefficient of friction from about 0.04 μ to about 0.2 μ (read by the examiner as the Rao use the same one of materials with the applicants’ invention as polymer, PTFE, a graphite, or molybdenum disulfide, or combinations thereof for coating; therefore, the characteristics of one of the coating materials obviously having a surface roughness that has a coefficient of friction from about 0.04 μ to about 0.2 μ).     
 	Regarding claim 36, Rao discloses wherein the coating includes one or more of a PTFE, a graphite, or molybdenum disulfide (see col. 4, lines 54-67 to col. 5, lines 1-5).
	Regarding claim 38, Rao discloses wherein the first rotor 15 defines an interior cavity 26  (see Fig. 1 and 3) extending through a lobe of the first rotor.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.

6.	Claims 24 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Rao in view of the legal precedent.
	Rao discloses the invention as recited above; however, Rao fails to disclose an operating clearance 21 between the first and second rotors 15, 16 from about 0.003 inches to about 0.032 inches and an operating clearance 28 between the first rotor 15 and the booster chamber from about 0.002 inches to about 0.025 inches.
	It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, to have utilized a range of the operating clearance between the first and second rotors from about 0.003 inches to about 0.032 inches and a range of the operating clearance between the first rotor and the housing from about 0.002 inches to about 0.025 inches, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Al1er, 220F.2d 454,456, 105 USPQ 233, 235 (CCPA 1955) (see MPEP §2144.05).

Further, the subject specification fails to provide a specific reason for choosing the range of the operating clearance between the first and second rotors from about 0.003 inches to about 0.032 inches and the range of the operating clearance between the first rotor and the booster chamber from about 0.002 inches to about 0.025 inches (see page 6, para. [0023] of the instant application).    

7.	Claims 29-30 and 39-40 are rejected under 35 U.S.C. 103 as being unpatentable over Rao in view of  Feuling (Patent Number 5,180,299).
Rao discloses the invention as recited above; however, Rao fails to disclose a tensile bar extending from a base of the lobe to an apex of the lobe.  

Regarding claims 29 and 39, as shown in Figs. 2-5, Feuling teaches wherein first rotor 24 further includes a tensile bar 38 extending from a base of the lobe 30 to an apex of the lobe.  It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, to have utilized the tensile bar extending from a base of the lobe to an apex of the lobe, as taught by Feuling in the Rao apparatus, since the use thereof would have provided a support structure for maintaining the stability of the rotor lobe.
Regarding claims 30 and 40, Feuling further discloses wherein the tensile bar 38 divides the interior cavity 36 in to a first chamber and a second chamber (see Figs. 3-5).

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.

8.	Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-17 are of U.S. Patent No. 11,746,782B2 (Patent ‘782) in view of Rao et al. (Rao (Patent Number 5,638,600).
	Regarding claims 21 and 31, Patent ‘782 discloses a method of applying a coating to an interior of a vacuum booster assembly comprising: operating a vacuum booster assembly to spin one or more components thereof, the vacuum booster assembly including a booster chamber including a gas inlet for allowing gas to enter the booster chamber and a gas outlet to allow gas to exit the booster chamber, a first rotor positioned within the booster chamber and adapted for rotation therein, and a second rotor positioned within the booster chamber and adapted for rotation therein, wherein the first and second rotors are formed from a metal having a coefficient of thermal expansion from about 1 (10-6 in/in * K) to about 13 (10-6 in/in * K), and wherein one or more of an outer surface of the first rotor and an outer surface of the second rotor/the inner surface of the booster chamber includes a coating including at least one of an abradable coating or a formable coating; and transferring a portion of the coating from the one or more of the outer surface of the first rotor and the outer surface of the second rotor onto an inner surface of the booster chamber based on at least one of contact between the first rotor and the second rotor, contact between the first rotor and the inner surface of the booster chamber, and contact between the second rotor and the inner surface of the booster chamber (see claim 16 of Patent ‘782 ).  However, Patent ‘782 fails to discloses wherein at least a portion of the coating has a surface roughness from about 125 Ra to about 1000 Ra.

	Rao teaches wherein at least a portion of the coating has a surface roughness from about 125 Ra to about 1000 Ra (read by the examiner as the Rao use the same one of materials with the applicants’ invention as polymer, PTFE, a graphite, or molybdenum disulfide for coating; therefore, the characteristics of one of the coating materials obviously having a surface roughness from about 125 Ra to about 1000 Ra).  It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, to have utilized wherein at least a portion of the coating has a surface roughness from about 125 Ra to about 1000 Ra, as taught by Rao in the Patent ‘782 apparatus, since the use thereof would have eased assembly the components of the vacuum booster assembly.  
	Regarding 24 and 34, 	Patent ‘782  discloses including an operating clearance between the first and second rotors from about 0.003 inches to about 0.032 inches and an operating clearance between the first rotor and the booster chamber from about 0.002 inches to about 0.025 inches (see claim 17 of Patent ‘782).

	- Claims 22-23, 25-33 are 35-40 are rejected by virtue of their dependence on the independent claims 21 and 31.

Allowable Subject Matter
9.	Claims 27 and 37 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.


10.	The following is a statement of reasons for the indication of allowable subject matter:  
		- Depending claim 27: the prior art does not teach or suggest the limitation “wherein the first and second rotors (103, 105) are formed from a metal including at least 50% iron, 20% to 35% nickel, and 10% to 25% cobalt (see page 6, para. [0024] of the instant application)” in combination with the requirements of claim 21.

		- Depending claim 37: the prior art does not teach or suggest the limitation “wherein the first and second rotors are formed from a metal including at least 50% iron, 20% to 35% nickel, and 10% to 25% cobalt (see page 6, para. [0024] of the instant application)” in combination with the requirements of claim 31.

Prior Art
11.	The IDS (PTO-1449) filed on Dec. 02, 2024 has been considered.  An initialized copy is attached hereto.  

12.	The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and consists of two patents: 
		- Bush et al. (U.S. Patent Application Publication Number 2003/0126733A1) discloses a method for coating surfaces components of a screw machine; and 
		- Pauwels et al. (U.S. Patent Application Publication Number 2011/0014079A1) discloses a screw compressor having a coating applied on the surfaces of the rotors or at least part of the wall of the chamber.
	
13.	The examiner cites particular columns and lines numbers in the references as applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.


Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THERESA TRIEU whose telephone number is (571)272-4868. The examiner can normally be reached Monday - Friday 8:30AM-5:00PM.
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/TT/
/Theresa Trieu/Primary Examiner, Art Unit 3746