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 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 1-7 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 1 recites the limitation "a pressure equalization valve" in line 16 renders the claim indefinite because it is unclear how it relates with the previously cited limitation “a pressure equalization valve” in line 6 of the claim.
Claim 1 is directed to a method, however, the claim recites: “a pressure equalization valve that equalizes pressures within the [compressor] … and … opens to avoid having high pressure gas …” in line 6-10 and line 16-21 renders the claim indefinite because the limitation merely describes the structure and intended function or capability of a pressure equalization valve, rather than reciting affirmative steps of the claimed method. The claim does not positively recite any step of operating, actuating, or controlling the pressure equalization valve. Accordingly, it is unclear:
• when the pressure equalization occurs,
• under what conditions the valve opens, and
• what specific action within the method performs the recited functions.
Thus, the limitation reads as a statement of intended result or capability, which fails to clearly define the metes and bounds of the claimed method. One of ordinary skill in the art would not be reasonably apprised of the acts required by the method. Therefore, claim 1 is indefinite.
Claim 1 recites the limitation "an expander” in line 37 renders the claim indefinite because it is unclear how it relates with the previously cited limitation “an expander” in line 3 of the claim. For examination purposes, examiner read the limitation as –the expander--.
Claim 1, para 7 calls for the recitation of “either compressor” which is confusing as it is unclear which particular one of the various compressors recited above applicant is referring to . For clarity improvement, this should instead be –either one of the compressors—Similar problem exists in claim 7, L 6.
Claim 1, the recitation of “the other compressor” in para. 7, lack antecedent basis in the claim.
Claim 7 recites the limitation "the range" in line 2 lacks proper antecedent basis.
Claim 7 is directed to a method, however, the claim recites: “a pressure equalization valve that equalizes pressures within the [compressor] … and … opens to avoid having high pressure gas …” in line 6-10 and line 13-18 renders the claim indefinite because the limitation merely describes the structure and intended function or capability of a pressure equalization valve, rather than reciting affirmative steps of the claimed method. The claim does not positively recite any step of operating, actuating, or controlling the pressure equalization valve. Accordingly, it is unclear:
• when the pressure equalization occurs,
• under what conditions the valve opens, and
• what specific action within the method performs the recited functions.
Thus, the limitation reads as a statement of intended result or capability, which fails to clearly define the metes and bounds of the claimed method. One of ordinary skill in the art would not be reasonably apprised of the acts required by the method. Therefore, claim 1 is indefinite.
Claim 7 recites the limitation "a pressure equalization valve" in line 13 renders the claim indefinite because it is unclear how it relates with the previously cited limitation “a pressure equalization valve” in line 6 of the claim.
Claim 7, the recitation of “the other compressor” in para. 7, lack antecedent basis in the claim.
Claims 2-6 are also rejected under 35 U.S.C. 112(b) for being dependent upon a rejected claim.
Remarks
Requirement for Amendment
Applicant is advised to amend claims 1 and 7 to recite the operation of the pressure equalization valves for each compressors in terms of affirmative method steps.
For example, the claim may be amended to include steps such as:
• equalizing pressure within the compressor using a pressure equalization valve,
• opening the pressure equalization valve in response to a pressure condition, and/or
• actuating the pressure equalization valve to prevent migration of oil to the expander,
or similar language that clearly defines actions performed during the method, rather than merely describing structure or intended results without introducing a new matter. Absent such amendment, the claim remains indefinite and the recited functionality will not be accorded patentable weight.
Pertinent Arts
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Morse et al. (US 2002/0139129 A1) teaches pressure equalization valves (44, 46) normally open, and act as pressure equalization valves during shut down, eliminating the need for a by-pass valve (fig. 4; ¶ 0030).
Response to Arguments
Applicant’s arguments with respect to the amended claims have been considered but are moot in view of the new ground(s) of rejections.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WEBESHET MENGESHA whose telephone number is (571)270-1793. The examiner can normally be reached Mon-Thurs 7-4, alternate Fridays, EST. 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, Frantz Jules can be reached at 571-272-6681. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/W.M/Examiner, Art Unit 3763
/FRANTZ F JULES/Supervisory Patent Examiner, Art Unit 3763