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 .
Response to Amendment
The Amendment filed 05/14/2026 has been entered. Claims 1-2, 6, 8-13 & 16 are pending in the application. Claims 10-13 are withdrawn. Claims 3-5, 7 & 14-15 are cancelled.
Election/Restrictions
Claim 1 is directed to an allowable product. Pursuant to the procedures set forth in MPEP § 821.04(B), Claims 10-13, directed to the process of making or using an allowable product, previously withdrawn from consideration as a result of a restriction requirement, are hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Because all claims previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the restriction requirement as set forth in the Office action mailed on 01/23/2025 is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claim Objections
Claim 6 is objected to because of the following informalities.
Claim 6 should read --The compressor system of claim 1, further comprising an external oil circuit, wherein the control apparatus is configured to take into account the comparison in order to control when one of the respective oil sump or post-cooler outlet temperature is above the oil sump or post-cooler outlet predetermined limit value.--
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 12 is 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.
As to Claim 12, applicant has failed to show possession of the claimed invention by failing to provide sufficient detail needed to understand what the invention is and how it works. Applicant claims an oil temperature and/or an intermediate-cooler exit temperature and/or a post-cooler exit temperature are/is controlled on the basis of the detected post-cooler outlet or oil sump temperature. This raises questions to what applicant had possession of, in that neither the specification nor the drawings, or a combination thereof, adequately describe how the respective temperatures are controlled by the detected post-cooler outlet or oil sump temperatures.
None of an algorithm, process, or method are presented in the original disclosure, and one of ordinary skill in the art would be unable to determine how the respective temperatures are controlled via the detected post-cooler outlet or oil sump temperatures. As such, the original disclosure does not have sufficient written description for the claimed limitation.
Applicant has failed to show possession of the claimed invention by failing to provide sufficient detail needed to understand what the invention is and how it works. Applicant claims an air temperature, in particular a post-cooler exit temperature, is controlled on the basis of the detected post-cooler exit temperature, and/or of a detected oil temperature of the detected oil-sump temperature. This raises questions to what applicant had possession of, in that neither the specification nor the drawings, or a combination thereof, adequately describe how the respective temperatures are controlled by the detected post-cooler exit or oil sump temperatures.
None of an algorithm, process, or method are presented in the original disclosure, and one of ordinary skill in the art would be unable to determine how the respective temperatures are controlled via the detected post-cooler exit or oil sump temperatures. As such, the original disclosure does not have sufficient written description for the claimed limitation.
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 10-13 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.
As to Claim 10, the phrase “a post-cooler outlet temperature of the air”, in Line 7, should read --a post-cooler outlet temperature of
The limitation “controlling the cooling device based on the detected post-cooler outlet temperature of air in the compressor and oil sump temperature each detected by the temperature detection unit”, in Lines 9-10, is indefinite. The previous limitation, in Lines 7-8, already stated the two temperatures were detected by the temperature detection unit. As such, it is not clear why the limitation, in Lines 9-10, is restating how the temperatures are detected.
The phrase “the detected post-cooler outlet temperature of air”, in Lines 9-10, should read -- the detected post-cooler outlet temperature of the air.
The term “oil sump temperature”, in Line 10, should read –the oil sump temperature.
The limitation “the compressor system has a temperature detection unit”, in Line 11, is indefinite. Line 7 already defines a temperature detection unit. As such, it is not clear if the limitation in Line 11 is defining a new temperature detection unit, or if the limitation is simply restating the temperature detection unit of Line 7. For the purpose of examination, the temperature detection unit of Line 11 will be interpreted as the same temperature detection unit of Line 7.
The phrase “a flow direction of air”, in Line 13, should read --a flow direction of the air.
The phrase “a post-cooler outlet temperature”, in Lines 14-15, is indefinite. A post-cooler outlet temperature has already been previously defined. As such, it is not clear if the post-cooler outlet temperature in Lines 14-15 is the same temperature as previously defined, or if the temperature in Lines 14-15 is defining a new temperature. For the purpose of examination, the temperatures will be interpreted as the same temperature.
The phrase “an oil sump temperature”, in Line 15, is indefinite. An oil sump temperature has already been previously defined. As such, it is not clear if the oil sump temperature in Line 15 is the same temperature as previously defined, or if the temperature in Line 15 is defining a new temperature. For the purpose of examination, the temperatures will be interpreted as the same temperature.
As to Claim 12, the phrase “wherein: wherein”, in Lines 1-2 should read --
The limitation “an oil temperature and/or an intermediate-cooler exit temperature and/or a post-cooler exit temperature are/is controlled on the basis of the detected post-cooler outlet or oil sump temperature”, in Lines 3-5, is indefinite. As described in the 112(a) rejection above, the original disclosure does not have sufficient written support for the limitation. As such, it is not clear how the respective temperatures are controlled based on the detected post-cooler outlet or oil sump temperatures, rendering the claim indefinite.
The term “an oil temperature”, in Line 3, is indefinite. An oil sump temperature was previously defined in Claim 10. As such, it is not clear if the oil temperature in Claim 12 is the same temperature as the oil sump temperature, or if the two temperatures are different temperatures. If they are different, it is not clear what differentiates the two temperatures. For the purpose of examination, the two temperatures will be interpreted as the same temperature.
The term “a post-cooler exit temperature”, in Line 4, is indefinite. A post-cooler outlet temperature” was previously defined. It is not clear if the post-cooler exit temperature and the post-cooler outlet temperature are the same temperature, or if the two temperatures are different temperatures. If they are different, it is not clear what differentiates the two temperatures. For the purpose of examination, the two temperatures will be interpreted as the same temperature.
The limitation “an air temperature, in particular a post-cooler exit temperature, is controlled on the basis of the detected post-cooler exit temperature, and/or of a detected oil temperature of the detected oil-sump temperature”, in Lines 709, is indefinite. As described in the 112(a) rejection above, the original disclosure does not have sufficient written support for the limitation. As such, it is not clear how the respective temperatures are controlled based on the detected post-cooler exit or oil sump temperatures, rendering the claim indefinite.
The phrase “an air temperature, in particular a post-cooler exit temperature”, in Lines 7-8, is indefinite. A post-cooler exit/outlet temperature has already been previously defined. As such, it is not clear if the post-cooler exit/outlet temperature in Lines 7-8 is the same temperature as previously defined, or if the temperature in Lines 7-8 is defining a new temperature. For the purpose of examination, the temperatures will be interpreted as the same temperature.
The phrase "in particular" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
The term “the detected post-cooler exit temperature”, in Lines 8-9, is indefinite. The only previously detected temperatures are the post-cooler outlet temperature and the oil sump temperature. As such, it is not clear which temperature the term in Lines 8-9 is referring to.
The phrase “a detected oil temperature of the detected oil-sump temperature”, in Line 9, is indefinite. It is not clear what differentiates the terms “detected oil temperature” and “detected oil-sump temperature”, since one of ordinary skill in the art would conclude the terms are the same temperature.
As to Claim 13, the phrase “is used for a controlling an internal and the external oil circuit”, in Lines 2-3 should read --is used for [[a ]]controlling an internal and the external oil circuit.
The term “the case”, in Line 3, should read –a
The limitation “the respective oil sump or post-cooler outlet temperature difference above the oil sump or post-cooler outlet predetermined limit value”, in Lines 3-4, is indefinite. It is not clear what difference is being referenced, since a difference has not been previously defined. Additionally, the limitation is grammatically confusing.
Allowable Subject Matter
Claims 1-2, 8-9 & 16 are allowed.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Claim 6 would be allowable if rewritten to overcome the claim objections set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 10-13 would be allowable if rewritten or amended 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.
Response to Arguments
Applicant's arguments filed 05/14/2026 have been fully considered but they are not persuasive.
Applicant believes the claims are allowable. However, each of the rejoined claims have 112 issues, and Applicant did not address the objection to Claim 6. As such, the claims are still not allowable.
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 DAVID BRANDT whose telephone number is (303)297-4776. The examiner can normally be reached Monday-Thursday 10-6, MT.
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/DAVID N BRANDT/ Primary Examiner, Art Unit 3783
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