DETAILED ACTION
The current application is a continuation of reissue application 16/184,166, which issued as RE49,709 on October 24, 2023 and is a reissue of original application 15/101387 issued as US Patent 9,822,801 on November 21, 2017.
Notice of Pre-AIA or AIA Status
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.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continuing Obligations
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. 9,822,801 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.
Continuation Reissue Applications
As noted above, the current application is a continuation reissue of a parent reissue. MPEP 1451 II addresses requirements that are relevant to continuation reissue applications.
The parent reissue application 16/184,166 issued as RE49,709 on October 24, 2023 before the examination of the instant continuation reissue application. Therefore, “amendment of the parent reissue patent to include a cross-reference to the continuation reissue application must be effected at the time of allowance of the continuation reissue application by certificate of correction” (MPEP 1451 II).
Further, “all of the claims of the patent to be reissued must be presented in both the parent reissue application and the continuation reissue application in some form, i.e., as amended, as unamended, or as canceled. The same claim of the patent cannot, however be presented for examination in both the parent reissue application and the continuation reissue application, as a pending claim in either its original or amended form” (MPEP 1451 II). Claims 1-20 of the original patent ‘801 were already presented in the parent reissue application ‘166. Therefore, claims 1-20 cannot be presented for examination in this continuation reissue in original or amended form.
MPEP 1451 II explains how once a claim in the patent has been reissued, it does not exist in the original patent; thus it cannot be reissued from the original patent in a another (continuation or divisional) reissue application. For example, if there are patent claims 1-20 in TWO (parent and continuation) reissue applications and applicant wishes to amend claim 1, which is directed to AB (for example) to ABC in the parent reissue application and to ABD is the continuation reissue application, applicant should amend claim 1 in the parent reissue application to recite ABC (as was done in RE49,709). Claim 1 in the continuation reissue would be CANCELLED and new claim 21 would be added to recite ABD. In the instant continuation reissue, claims 1-20 should be indicated as cancelled (they are already present in parent reissue RE49,709) and newly amended claims should presented as new claims beginning with claim number 21.
Because claims 1-19, which were already presented in parent reissue application ‘166, have been presented again in this continuation reissue, the following rejections under 35 USC 251 and 35 USC 112(b) are applicable.
Claims 1–19 are rejected under 35 U.S.C. 251 because the reissue application is not correcting an error in the original patent, because original claims 1-19 would be superseded by the reissuance of claims 1–19 in the other reissue application. The cancellation of claims 1-19 in this continuations reissue application and the presentation of the subject matter included therein in NEW claims 21+ would overcome this rejection.
Claims 1–19 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 because the invention of claims 1–19 is not particularly pointed out and distinctly claimed. Claims 1–19 present one coverage in the parent reissue application and another in the present reissue application. This is inconsistent. The cancellation of claims 1-19 in this continuation reissue application and the presentation of the subject matter included therein in NEW claims 21+ would overcome this rejection.
Reissue Oath/Declaration
The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because it does not identify the specific claim language wherein lies the error. Applicant has identified lines from original claim 1, but the mere identification of lines by number is not sufficient. Line numbers do not constitute specific claim language from claim 1. In Applicant’s 11/2024 Response, p. 12, Applicant states that a replacement declaration will be filed. Absent the filing of the replacement declaration, Applicant has not responded to the claim rejections based on the defective declaration. A corrected declaration is necessary to be considered fully responsive to this Office Action.
Claims 1–19 remain rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175. The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Amendments in Reissue Applications
Amendments made in reissue applications must be made in accordance with 37 CFR 1.173.
37 CFR 1.173(b)(1) states “changes to the specification…must be made by submission of the entire text of an added ore rewritten paragraph, including markings pursuant to parage (d)…the precise point in the specification where any added or rewritten paragraph is located must be identified.” Applicant’s replacement paragraph provided on page 2 of the March 20, 2025 response does not contain any markings (brackets for deletions and underling for additions).
37 CFR 1.173(c) states “Whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims.” Applicant has failed to provide “an explanation of support in the disclosure” for each of the changes being made with respect to the patent claims. The Examiner notes that Applicant provides support for claim amendments made in the March 20, 2025 response, however, such support must be provided for ANY amendment in the reissue application.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(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.
Claim(s) 1–10 is/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.
With respect to claim 1, the original disclosure does not provide support for “a radius of a first portion of the first bell mouth part…and a radius of a second portion of the second bell mouth part…is constant…and the first portion and the second portion have a constant height.” It cannot be concluded from the Figures alone that element (81) defines a circular portion having a constant radius and a constant height. Applicant is asked to point out where support is provided in the disclosure for these limitations. Claims not specifically addressed are rejected as being dependent upon a rejected base claim.
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.
Claim(s) 1–10 is/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.
In claim 1, it is unclear what is meant by “at least one of the downstream end of the first diffuser part and the downstream end of the second diffuser part are surrounded by four side walls of the casing and between the casing.” It is unclear what is meant by the phrase “and between the casing.” How does this phrase differ from “surrounded by four walls of the casing”? Is Applicant attempting to describe how the fan is positioned between the four side walls and between a top and a bottom wall? Clarification is required. Claims not specifically recited are rejected as being dependent upon a rejected base claim.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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) 1–5, 9, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over US PGPub Nos. 2013/0239605 to Oh and 2013/0125579 to Okazawa.
Claim 1. With respect to claim 1, as best understood, as discussed in the claim chart below, Oh discloses the invention substantially as claimed except for the diffusers as recited in claim 1.
Claim 1
Oh and Okazawa
An outdoor unit for an air conditioner, comprising:
Oh and Okazawa both disclose outdoor units for air conditioners. Oh,¶40; Okazawa, ¶03.
a first fan coupled to a first rotation shaft;
a second fan coupled to a second rotation shaft that is parallel to the first rotation shaft;
Oh: Fig. 2 shows two fans 48 coupled to parallel rotation shafts.
a casing surrounding the first fan and the second fan in a vertical direction;
Oh: Fig. 1 shows a casing 90 surrounding fans 48.
a first bell mouth part having a downstream end and an upstream end, the first bell mouth part surrounding an outer circumferential end of the first fan along a circumferential direction of the first fan such that the first bell mouth part guides air introduced into the first fan;
a second bell mouth part having a downstream end and an upstream end, the second bell mouth part surrounding an outer circumferential end of the second fan along a circumferential direction of the second fan such that the second bell mouth part guides air introduced into the second fan;
Oh: Fig. 2 shows shrouds 49.
Okazawa: “The bellmouth 2 covers the propeller fan 1 in such a manner as to extend in the circumferential direction (direction of rotation) of the propeller fan 1 (the bellmouth 2 surrounds the propeller fan 1) and is configured to rectify the flow of air produced by the rotation of the propeller fan 1. That is, a tubular wall is provided around the propeller fan 1.” (¶44)
a first diffuser part having an upstream end connected to the downstream end of the first bell mouth part and obliquely extending from the downstream end of the first bell mouth part,
Okazawa: Fig. 15 shows a diffuser (outlet opening 5) having a sloping portion 5a.
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the first diffuser part having a first inner circumferential surface inclined at first inclination angles from the upstream end of the first diffuser part with respect to the first rotation shaft,
the first inclination angles at which the first inner circumferential surface is inclined being varied along a first circumferential direction of the first diffuser part with respect to the first rotation shaft,
Okazawa: “FIG. 15 is a perspective view of a bellmouth 2 having another shape. For example, if the diameter of the bellmouth 2 (particularly, the outlet opening 5) is larger than at least one of the width and the depth of the casing of an outdoor unit, the bellmouth 2 extends beyond the casing and comes into contact with another bellmouth provided in another outdoor unit. This may make it difficult to arrange a plurality of outdoor units close to one another. Hence, the shape of the bellmouth 2 may be partially altered such that the diameter thereof becomes smaller than the width and the depth of the casing of the outdoor unit. For example, in the bellmouth 2 illustrated in FIG. [6], the sloping-portion angle θ is not constant over the entire circumference of the bellmouth 2 and is changed in some portions. Thus, the bellmouth 2 is prevented from extending beyond the casing while the above-described conditions are satisfied.” (¶75, emphasis added)
the upstream end of the first diffuser part having a substantially circular shape and a downstream end of the first diffuser part having an oval shape; and
Okazawa: Bellmouth 2 has a “straight tubular portion 4” (¶45) and an “annular wall” (claim 1, ¶09). Since the diffuser (outlet opening 5) extends from a tubular or annular wall, it necessarily has an upstream end having a substantially circular shape.
As described in the ’801 Patent in col. 3, ll. 22–25, “An opening of a downstream end of the diffuser part, which is easy to manufacture and practical may have an oval shape (a capsule shape) or polygonal shape of which corners are rounded.”
In Okazawa, the opening shown in Fig. 15 has an oval/capsule shape.
a second diffuser part having an upstream end connected to the downstream end of the second bell mouth part and obliquely extending from the downstream end of the second bell mouth part, the second diffuser part having a second inner circumferential surface inclined at second inclination angles from the upstream end of the second diffuser part with respect to the second rotation shaft,
the second inclination angles at which the second inner circumferential surface is inclined varies along a second circumferential direction of the second diffuser part with respect to the second rotation shaft, the upstream end of the second diffuser part having a substantially circular shape and a downstream end of the second diffuser part having an oval shape,
See the discussion of the first diffuser above.
wherein
the first diffuser part and the second diffuser part to guide the air discharged from the first fan and the second fan, respectively,
Oh: As per ¶72, “shroud 49 [forms] a flow passage of the blowing fan 48 to surround the blowing fan 48.”
the first diffuser part and the second diffuser part are disposed under the casing in the vertical direction and at least one of the downstream end of the first diffuser part and the downstream end of the second diffuser part are surrounded by four side walls of the casing and between the casing,
Oh: Figs. 1 and 2 show the shroud 49 disposed within the casing 90.
the first inner circumferential surface of the first diffuser part at a minor axis of the first diffuser part and the second inner circumferential surface of the second diffuser part at a minor axis of the second diffuser part are adjacent to each other,
the first inner circumferential surface of the first diffuser part at the minor axis of the first diffuser part is inclined at least one first inclination angle from among the first inclination angles of the first diffuser part,
the second inner circumferential surface of the second diffuser part at the minor axis of the second diffuser is inclined at least one second inclination angle from among the second inclination angles of the second diffuser part,
the at least one first inclination angle from among the first inclination angles of the first diffuser part is smaller than at least one other first inclination angle from among the first inclination angles of the first diffuser part, and
the at least one second inclination angle from among the second inclination angles of the second diffuser part is smaller than at least one other second inclination angle from among the second inclination angles of the second diffuser part,
Okazawa: As per ¶0075, quoted above, Okazawa describes a problem to be solved: If the bellmouth (particularly the outlet opening 5) is larger than a width or depth of a casing, then the bellmouth would extend beyond the casing and come into contact with the bellmouth of an adjacent unit. Okazawa solves this problem by altering the shape of the bellmouth. This altered shape includes a portion that has a smaller inclination angle. (“[T]he sloping-portion angle θ is not constant over the entire circumference of the bellmouth 2 and is changed in some portions.”) Moreover, since the problem of bellmouths extending beyond their respective casings is solved by partially altering the diameter of the bellmouths, and the example shown in Fig. 15 of such a configuration includes altered angles θ with the smaller diameter portion also having a smaller angle with respect to the vertical, then the portion that has a smaller inclination angle is adjacent to a portion of an adjacent unit. Finally, since Okazawa also discusses arranging a plurality of outdoor units close to one another, there is necessarily a second bellmouth having the same arrangement (i.e., a portion having a smaller inclination angle where the second diffuser is adjacent to a first diffuser).
a radius of the first bell mouth part, which surrounds the outer circumferential end of the first fan, and a radius of the second bell mouth part, which surrounds the outer circumferential end of the second fan, is constant and
Oh: In Fig. 2, shroud 49 has a circular cross section.
Okazawa: “ The straight tubular portion 4 is a portion of the bellmouth 2 where the inner wall of the bellmouth 2 extends parallel to the rotation axis of the propeller fan 1.” (¶46)
the first bell mouth part and the second bell mouth part have a constant height.
Oh: In Fig. 2, shroud 49 is shown having a constant height.
Okazawa: Fig. 15 shows a bell mouth having a constant height along the first rotation shaft and the second rotations shaft respectively.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the outdoor AC unit of Oh to include the diffuser taught by Okazawa as a part of/extending from both of Oh’s bell mouths (shrouds 49) for the purpose of being able to arrange the fans close to one another. It further would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the outdoor AC unit of Oh such that the bell mouth parts, which surround the circumferential end of the fans, have a constant radius and constant height because Okazawa teaches the tubular portion of the bellmouth extending parallel to the axis of the fan, for the purpose of improving airflow (less turbulence) around the entire fan.
Claim 2
Oh and Okazawa
2. The outdoor unit for an air conditioner according to claim 1, wherein the first diffuser part and the first bell mouth are integrally molded to each other and the second diffuser part and the second bell mouth are integrally molded to each other.
Okazawa: “As an exemplary bellmouth for the top-blowing type, the bellmouth 2 shaped as illustrated in FIG. 15 is made of resin and can be formed by solid casting, regardless of L/L0 illustrated in FIG. 1.” (¶84)
Claim 3
Oh and Okazawa
3. The outdoor unit for an air conditioner according to claim 1, wherein
a first upstream gap formed between an outer circumferential end of the first fan to the upstream end of the first diffuser part is constant around an entirety of the outer circumferential end of the first fan, and
a second upstream gap formed between an outer circumferential end of the second fan to the upstream end of the second diffuser part is constant around an entirety of the outer circumferential end of the second fan.
Okazawa: As discussed with respect to claim 1 above, since the diffuser (outlet opening 5) extends from a tubular or annular wall, it necessarily has an upstream end having a substantially circular shape. Also, “The straight tubular portion 4 is a portion of the bellmouth 2 where the inner wall of the bellmouth 2 extends parallel to the rotation axis of the propeller fan 1.” (¶46) And, the outer circumferential end of Okazawa’s fans is understood to be circular, since it is described as having a diameter D (See, e.g., the Abstract). Thus, the gaps are constant between the outer circumferential ends of the fans and the upstream end of the diffuser parts of Okazawa.
Claim 4
Oh and Okazawa
4. The outdoor unit for an air conditioner according to claim 3, wherein
a first downstream gap formed between the outer circumferential end of the first fan to the downstream end of the first diffuser part varies around the entirety of the outer circumferential end of the first fan, and
a second downstream gap formed between the outer circumferential end of the second fan to the downstream end of the second diffuser part varies around the entirety of the outer circumferential end of the second fan.
Okazawa: Based on the shape of the downstream ends of the diffuser parts of Okazawa in Fig. 15, the gaps between the outer circumferential ends of the fans and the downstream ends of the diffuser parts vary around the entirety of the outer circumferential ends of the fans.
Claim 5
Oh and Okazawa
5. The outdoor unit for an air conditioner according to claim 4, wherein
the first downstream gap varies so that the minor axis of the first diffuser part at a point along the first downstream gap is smaller than at least another point along the first downstream gap, and
the second downstream gap varies so that the minor axis of the second diffuser part at a point along the second downstream gap is smaller than at least another point along the second downstream gap.
Okazawa: Based on the shape of the downstream ends of the diffuser parts of Okazawa in Fig. 15, the gaps are smaller at the minor axis than, e.g., the major axis.
Claim 9
Oh and Okazawa
9. The outdoor unit for an air conditioner according to claim 1, wherein
casing further includes a top plate disposed at an upper side of the four side walls, and
the top plate includes a surface plate part having an opening matching with the downstream end of the first diffuser part, and the bent part bent downward from an edge of the top plate, and
the bent part is coupled to at least one the four side walls.
Oh: Figs. 1 and 2 show a top plate (panel 140) having an opening matching the top of the shroud 49.
It follows from the rejection of claim 1 that said opening would be modified to match the resulting modified shroud from the combination with Okazawa, as discussed above with respect to claim 1.
Oh: The top panel 140 includes depending flanged edges. See Figs. 1 and 2.
That the “bent part” is “bent” is a product by process limitation. Since the claim is a structure claim, and the process does not impart distinctive structural characteristics to the final product, the “bent part” limitation does not distinguish the claim from the structure of Oh.
Claim 11
Oh and Okazawa
11. (Amended)The outdoor unit for an air conditioner, comprising:
Oh and Okazawa both disclose outdoor units for air conditioners. Oh,¶40; Okazawa, ¶03.
a casing including four walls that extend vertically;
Oh: Fig. 1 shows a casing 90.
a pair of fans, each coupled to a respective rotation shaft provided vertically and disposed inside the casing in a vertical direction;
Oh: Fig. 2 shows two fans 48 coupled to parallel rotation shafts.
a heat exchanger extended along three walls of the four walls;
Oh: See heat exchanger 40 in Fig. 2.
a pair of bell mouth parts respectively having a downstream end and an upstream end, the pair of bell mouth parts respectively having a radius that is constant and surrounding outer circumferential ends of the pair of fans;
Oh: Fig. 2 shows shrouds 49.
a pair of diffuser parts respectively having an upstream end connected to the downstream end of the each of the pair of bell mouth parts and obliquely extending from the downstream end of the each of the pair of bell mouth part, the pair of diffuser parts including a pair of inner circumferential surfaces respectively inclined at inclination angles from the upstream end of the each of the pair of diffuser parts with respect to the respective rotation shaft;
Okazawa: Fig. 15 shows a diffuser (outlet opening 5) having a sloping portion 5a.
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the inclination angles at which each of the pair of the inner circumferential surfaces is inclined being varied along a respective circumferential direction of the pair of diffuser part with respect to the respective rotation shaft of the pair of fans,
Okazawa: “FIG. 15 is a perspective view of a bellmouth 2 having another shape. For example, if the diameter of the bellmouth 2 (particularly, the outlet opening 5) is larger than at least one of the width and the depth of the casing of an outdoor unit, the bellmouth 2 extends beyond the casing and comes into contact with another bellmouth provided in another outdoor unit. This may make it difficult to arrange a plurality of outdoor units close to one another. Hence, the shape of the bellmouth 2 may be partially altered such that the diameter thereof becomes smaller than the width and the depth of the casing of the outdoor unit. For example, in the bellmouth 2 illustrated in FIG. [6], the sloping-portion angle θ is not constant over the entire circumference of the bellmouth 2 and is changed in some portions. Thus, the bellmouth 2 is prevented from extending beyond the casing while the above-described conditions are satisfied.” (¶75, emphasis added)
the upstream end of each of the pair of the diffuser parts respectively having a substantially circular shape, and a downstream end of the pair of the diffuser parts respectively having an oval shape;
Okazawa: Bellmouth 2 has a “straight tubular portion 4” (¶45) and an “annular wall” (claim 1, ¶09). Since the diffuser (outlet opening 5) extends from a tubular or annular wall, it necessarily has an upstream end having a substantially circular shape.
As described in the ’801 Patent in col. 3, ll. 22–25, “An opening of a downstream end of the diffuser part, which is easy to manufacture and practical may have an oval shape (a capsule shape) or polygonal shape of which corners are rounded.”
In Okazawa, the opening shown in Fig. 15 has an oval/capsule shape.
wherein
the pair of diffuser parts are disposed inside the casing in the vertical direction,
the downstream end of the pair of diffuser parts respectively are surrounded by the four walls of the casing, and
Oh: Figs. 1 and 2 show the shroud 49 disposed within the casing 90.
each of the inclination angle of the respective inner circumferential surface of the pair of inner circumferential surfaces has a minimum value at each of the pair of the inner circumferential surfaces where the pair of diffuser parts are adjacent to each other at respective minor axes of the pair of diffuser parts.
Okazawa: See Fig. 15 and ¶75 (both above).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the outdoor AC unit of Oh to include the diffuser taught by Okazawa as a part of/extending from both of Oh’s bell mouths (shrouds 49) for the purpose of being able to arrange the fans close to one another.
Claims 12–15, 18, and 19. See the discussion of claims 2–5, 9, and 10 above.
Claim(s) 10 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over US PGPub Nos. 2013/0239605 to Oh and 2013/0125579 to Okazawa, as applied to claims 1, 9, 11, and 18 above, and further in view of US PGPub No. 2014/0318173 to Koike.
Claims 10 and 19. As discussed in the claim chart below, Oh and Okazawa discloses the invention substantially as claimed except for the bent part being screwed to the at least one of the four side walls.
Claim 10
Oh, Okazawa, and Koike
10. The outdoor unit for an air conditioner according to claim 9, wherein
Koike discloses an outdoor unit of an air conditioning device. See the title.
the bent part is screwed to the at least one of the four side walls.
Koike: Top plate 31 includes insertion holes 72 for screws for attaching the top plate to side plate 44.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have further modified the outdoor AC unit of Oh, as modified by Okazawa, to use screws to join the depending flanges of the top panel to the side panels, as taught by Koike, for the purpose of providing a removable but secure connection.
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.
Claim(s) 1–9 and 11–18 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1, 7, 14, 21, 22, and 27–30 of U.S. Patent No. RE49,709 in view of Oh and Okazawa.
With respect to claims 1, 6, 11, and 16 of the current reissue application, the claims of RE49,709 recite all claim elements with the exception of: the upstream end of each of the pair of the diffuser parts respectively having a substantially circular shape, a downstream end of the pair of the diffuser parts respectively having an oval shape; the first and second diffuser are disposed under the casing in the vertical direction and at least one of the downstream end of the first diffuser part and the downstream end of the second diffuser part are surrounded by four side walls of the casing and between the casing; a radius of the first and second bell mouth parts, which surrounds the outer circumferential end of the first and second fans, is constant; the first and second bell mouth parts have a constant height along the first rotation shaft and the second rotation shaft; and a heat exchanger extended along three walls of the four walls (claim 11).
As discussed above, Oh and Okazawa disclose these features. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention of the claims of RE49,709 to include the upstream end of each of the pair of the diffuser parts respectively having a substantially circular shape, and a downstream end of the pair of the diffuser parts respectively having an oval shape, as taught by Okazawa, for the purpose of surrounding the fan at the upstream end and being able to arrange the fans close to one another; and the heat exchanger extending along three sides, as taught by Oh, for the purpose of being able to increase the amount of heat exchanged by the heat exchanger.
With respect to claims 2 and 12, RE49,709 recites all the claim elements with the exception of the first diffuser part and the first bell mouth are integrally molded to each other and the second diffuser part and the second bell mouth are integrally molded to each other.
Okazawa teaches “As an exemplary bellmouth for the top-blowing type, the bellmouth 2 shaped as illustrated in FIG. 15 is made of resin and can be formed by solid casting, regardless of L/L0 illustrated in FIG. 1.” (¶84) Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention of the claims of RE49,709 to include the bellmouth and diffusers integrally molded to one another, as taught by Okazawa, for the purpose of being able to make a bellmouth/diffuser that is durable and complex in shape.
With respect to claims 3–5 and 13–15, see the discussion of Okazawa under the rejection of these claims as obvious in view of Oh and Okazawa.
With respect to claims 7, 8, 17, and 18, see claims 28–30 of RE49,709.
Claim(s) 10 and 19 is/are is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1, 7, 14, 21, 22, and 27–30 of U.S. Patent No. RE49,709, Oh, and Okazawa, as applied to claim(s) 1, 9, 11, and 18 above, and further in view of Koike.
The claims of RE49,709 recite the claim elements of the current reissue application except for the bent part is screwed to the at least one of the four side walls.
Koike discloses a top plate 31 includes insertion holes 72 for screws for attaching the top plate to side plate 44.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention of the claims of RE49,709, Oh, and Okazawa, to use screws to join the depending flanges of the top panel to the side panels, as taught by Koike, for the purpose of providing a removable but secure connection.
Response to Amendment/Arguments
Applicant’s response filed on March 20, 2025 has been fully considered.
Applicant’s amendment has overcome the claim objections and the 112b rejection relating to position of the diffuser parts in the vertical direction. Rejections over 112a and 112b remain and are detailed above.
With respect to the rejection under 35 USC 103 Applicant agrees that Okazawa shows a tubular section (4) that has a constant radius however Applicant argues that ‘tubular portion 4 tapered portion Okazawa does not surround the outer circumferential ends of the fans but is rather a curved surface (3a).”
Applicant reproduces Figure 1 of Okazawa for convenience.
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Claim 1 requires:
“a first bell mouth part…surrounding an outer circumferential end of the first fan along a circumferential direction of the first fan such that the first bell mouth part guides air introduced into the first fan”;
“a radius of a first portion of the first bell mouth part, which surrounds the outer circumferential end of the first fan…is constant”; and
“the first portion of the first bell mouth part…[has] a constant height along the first rotation shaft.”
The Examiner maintains that Okazawa discloses each of these claim limitations. Element 2 disclosed by Okazawa is a first bell mouth part. It surrounds an outer circumference of a fan element (1) such that it guides air into the fan. Nothing in the claim requires the first bell mouth part to extend a full height of the fan. The Examiner contends that the first bell mouth disclosed by Okazawa is positioned “surrounding an outer circumferential end of the first fan along a circumferential direction of the first fan.” height L such that L/Lo is >= .5 (see abstract) and read on Applicant’s claim language. A first portion (4) of the first bell mouth part (2) is a tubular portion that extends parallel to an axis of rotation of the fan. The first potion has a height L such that L/Lo, where Lo is a height of the fan (1), is >= .5. This first portion (4) of the first bell mouth part is circular and has a constant radius. The first portion (4) flairs into an oval shaped downstream section that is not circular in shape. The first portion (4) has a constant height around a circumference of the fan as can be seen in Figures 1, 6, 16, 20, 21, and 22. Each of those figures show a first portion (4) having a different height, however in each case the first portion has a constant height as required by the claim. Figure 1 of Okazawa defined the height of the first portion (4) as “L” which is constant as height “H” of the current invention is disclosed as constant. It is not clear how portion (4) of Okazawa fails to equate to portion (81) of the claimed invention.
The obvious double patenting rejection remains despite the claim amendments provided on March 20, 2025. See above discussion.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/SARAH B MCPARTLIN/ Reexamination Specialist, Art Unit 3993
Conferees:
/GLENN K DAWSON/ Reexamination Specialist, Art Unit 3993
/Patricia L Engle/ SPRS, Art Unit 3993