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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification, as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitation(s) is/are:
“a measurement, control and regulation (MCR) system” in claims 14, 16, 18, 20, 24 (and depending claims).
The aforementioned limitation meets the three-prong test outlined herein since:
(A) the term “system ” is a generic placeholder,
(B) the generic placeholder is modified by functional language (e.g. “measurement, control and regulation”), and
(C) the generic placeholder is not modified by sufficient structures , material or acts for performing the claimed function in the claim. Note this is has the “the MCR system comprises a plurality of temperature sensors” and additional mention of temperature sensors, but this does not provide sufficient structure under 112(f). Applicants own amendment and cited section (“MCR module being configured to receive said temperature measurements and to control opening of said valves”) indicates that control is done outside the sensors thus there is not sufficient structure provided.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. A review of the specification and drawing found no specified corresponding structure for these limitations, thus any structure that would clearly act as described will be considered to read on them. Examiner notes that the specification does state in paragraph 0027 “In an advantageous embodiment, the MCR system comprises a plurality of temperature sensors, including at least one temperature sensor providing a temperature measurement of the heat transfer fluid in the anergy network and at least one temperature sensor providing a temperature measurement of the outside air” but the stated structure of temperature sensors is not limiting (note the “in an advantageous embodiment”) and is not enough structure to perform the claimed functions. Further, as noted above the claim now specifically states that “MCR module being configured to receive said temperature measurements and to control opening of said valves” indicating more than mere sensors.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a system for the cogeneration of electrical and thermal energy (CHP system)” in claims 15 and 16.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. A review of the specification and drawing found the corresponding structure of electrical system creating electricity with thermal energy (per para. 0048).
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a high-temperature thermal energy distribution network (HT network)” in claims 17 and 18.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. A review of the specification and drawing found the corresponding structure of remote heat source (per para. 0064).
Claim Rejections - 35 USC § 112 due to 112(f) issues above
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 14-24 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
For claims 14, 16, 18, 20, 24 as described above, the disclosure does not provide adequate defined structure to perform the claimed function of “a measurement, control and regulation (MCR) system”. The specification does not demonstrate that applicant has made an invention that achieves the claimed function as claimed because the invention is not described with sufficient detail that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. Specifically, the broad terms “a measurement, control and regulation (MCR) system”, are not defined nor specifically shown with sufficient structure in applicant’s claims or specification. The lack of definition of the term “a measurement, control and regulation (MCR) system” within the specification and the specification does not provide adequate defined structure to perform the claimed functions in all possible claimed structures. A review of the specification and drawing found no specific description or drawing of the claimed structure of any significant detail. The specification merely references in paragraph 0027 “In an advantageous embodiment, the MCR system comprises a plurality of temperature sensors, including at least one temperature sensor providing a temperature measurement of the heat transfer fluid in the anergy network and at least one temperature sensor providing a temperature measurement of the outside air” but the stated structure of temperature sensors is not limiting (note the “in an advantageous embodiment”) and is not enough structure to perform the claimed functions. In paragraph 0080 the MCR is referenced as a “electronic management module 13, but no detail or structure for such is provided. As no physical description of the element (element 13) is provided and no detail is shown, described, or provided thus it is unclear what exactly is considered or would fall under the terms “a measurement, control and regulation (MCR) system”. For example applicants’ specification shows operation tables on figures 5a-5g that are never clearly shown or explained to fully correspond to the stated temperature sensors. Figure 1 shows multiple MCR systems interacting with cloud computing, but the detail of such is never provided. In paragraph 0080 the MCR is referenced as a “electronic management module 13, but no detail or structure for such is provided. Further, as noted above the claim now specifically states that “MCR module being configured to receive said temperature measurements and to control opening of said valves” indicating more than mere sensors. Thus, any structure capable of such function is considered to read on the limitation.
Note that claims 15-24 are rejected for dependence from one of the above rejected claims.
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 14-24 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.
Claims 14, 16, 18, 20-21, and 24 includes the limitation “a measurement, control and regulation (MCR) system” (several claims use the shorthand “MCR”) which invokes 35 U.S.C. 112(f) or pre- AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function for all claimed structures and various claimed structures are indefinite and unclear. The specification is devoid of adequate structure description to perform the claimed function of all claimed possible structures. As would be recognized by those of ordinary skill in the art, there are many different ways to exchange heat. The specification does not provide sufficient details such that one of ordinary skill in the art would understand which mechanical structures perform(s) the claimed function. A review of the specification and drawing found no described or shown structure thus it is unclear what exactly is considered or would fall under the term “a measurement, control and regulation (MCR) system”. The specification merely references in paragraph 0027 “In an advantageous embodiment, the MCR system comprises a plurality of temperature sensors, including at least one temperature sensor providing a temperature measurement of the heat transfer fluid in the anergy network and at least one temperature sensor providing a temperature measurement of the outside air” but the stated structure of temperature sensors is not limiting (note the “in an advantageous embodiment”) and is not enough structure to perform the claimed functions. As no physical description of the element (element 13) is provided and no detail is shown, described, or provided thus it is unclear what exactly is considered or would fall under the terms “a measurement, control and regulation (MCR) system”. For example applicants’ specification shows operation tables on figures 5a-5g that are never clearly shown or explained to fully correspond to the stated temperature sensors. Figure 1 shows multiple MCR systems interacting with cloud computing, but the detail of such is never provided. In paragraph 0080 the MCR is referenced as a “electronic management module 13, but no detail or structure for such is provided. Further, as noted above the claim now specifically states that “MCR module being configured to receive said temperature measurements and to control opening of said valves” indicating more than mere sensors. ` Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
For each of these the Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35
U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Note that claims 15-24 are rejected for dependence from one of the above rejected claims.
Claim Rejections - 35 USC § 112 (Non-112(f) related)
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 17-18 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.
The term “high-temperature” in claims 17 and 18 is a relative term which renders the claim indefinite. The term “high-temperature” is not defined by the claim, 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. One skilled in the art is not appraised in the specification what temperature is considered “high-temperature” for this claim.
Claim 18 is indefinite for the term “a hydraulic circuit”. This element (as a claim term) has already been used in claim 14 from which this claim depends. Thus creating an antecedent issue for this limitation. It is unclear if applicant is claiming new circuit, the same circuit, or a new circuit. The claim will be read as “the hydraulic circuit”.
Response to Arguments
Applicant’s arguments, with respect to many of the 112(b) rejections have been fully considered and are persuasive. Those rejections have been removed, though it is noted some do remain (the above rejections).
Applicant's arguments filed 12/2/25 have been fully considered but they are not persuasive regarding the following arguments.
Applicant argues the 112(f) and resulting 112(a/b) rejections for “a measurement, control, and regulation (MCR) system”. Applicants amendments while adding additional structure in the form of temperature sensors are not sufficient structure to either remove the structure form 112(f) nor to prevent the resulting 112(a/b) rejections see the rejection above (updated to cover the claim amendment).
With regards to the term “high-temperature” in claims 17 and 18 applicants argument are unpersuasive. Applicants’ own arguments in fact show there is no clear value or range as the arguments themselves include a wide variety of ranges that do not agree (note that applicants’ argument with regards to low-temperature had one clear range thus overcoming the rejections). Applicants own arguments’ include the following possibilities: around 70oC, 60o-150oC, above 80oC, 3-120oC, 50-150oC, 60-240oC, 60-250oC, 60-300oC, 100-500oC, 150-2000oC. thus applicants’ own evidence shows no clear value, meaning, or range.
Examiner notes one antecedent issue in claim 18 was left unresolved by amendment.
Prior art Rejections
Examiner notes that no prior art was found that taught or made obvious the total clamed structure where the “evaporator side of the liquid-air heat pump being fluidically connected to the at least one of said air-liquid heat exchangers configured for exchanging heat with the outside air”. The claims are still under rejection and final allowability will based on how or if those rejections are overcome. Examiner does note that amendment or argument to overcome may result in prior art being applicable as it may change the application of prior art to the claims.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOEL M ATTEY whose telephone number is (571)272-7936. The examiner can normally be reached on Monday-Thursday 8-5 and Friday 8-10 and 2-4.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jianying Atkisson be reached on (571) 270-7740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOEL M ATTEY/Primary Examiner, Art Unit 3763
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