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 Arguments
Applicant's arguments filed have been fully considered as follows.
Applicant’s amendments make moot the statutory double patenting rejection.
Applicant’s amendments do not overcome the obviousness double patenting rejection or the rejections under 35 USC §103 over Ohama and Bingham.
Both the non-statutory double patenting rejection and the 35 USC §103 rejection hinge on the determination that the location of the heating element is prima facie obvious so long as it is downstream of the indoor fan. In order to establish prima facie obviousness when rearranging known components it must be established that rearranging the components does not alter the function or operation of the device or produce new or unexpected results (MPEP §2144.04 VI).
In the Non-Final Office Action (12/09/2025) the Examiner establishes that the Specification as filed does not contain any evidence that placement of the heating element on the louver or divider or cutout provides any specific advantage, change in function or unexpected result. The only purported specific advantage related to the location of the resistor is with respect to the heating element being located “downstream” of the indoor fan which prevents the issues known with prior art devices impeding mixing when the heaters are upstream (see ¶ [0002]). Both the prior art and US 11920802 (the basis of the double patenting rejection) already disclose the “downstream location”. Applicant does not appear to argue this point in the remarks of 03/09/2026.
Instead, Applicant appeals to what one of ordinary skill in the art would know or deem “widely understood”. For example, Applicant states “it is widely understood that heat from a heat source is more readily perceived the closer a person is to the heat source … thus locating the heating element … on an exhaust louver or cutoff … affects the function of the air conditioner unit”. These arguments would appear to raise two questions that must be answered: 1) Does the placement of the resistor specifically on the louver/cutoff affect the “function” of the device? and 2) Does an advantage naturally flow from the claimed invention that would obviate the design choice rejection.
As to “affecting” the function, the desired function of the instant invention is to move the strip heater away from the upstream side of the indoor fan and this function is known from the prior art and US 11920802.
As to the second question of whether Applicant’s arguments can be deemed sufficient to show an inherent advantage naturally flowing from the invention and thus obviating the design choice rejection Applicant’s purported advantages are no more than attorney argument without supporting evidence. It is noted that convective heat transfer is an extremely dense and difficult topic which is grounded in unsolvable partial differential equations. Heat transfer solutions must be gathered either empirically or through extensive modeling. Thus, statements to the effect that the heating element on a louver/divider is naturally advantageous to placing the heating element further within the unit (but still downstream of the fan) cannot be considered with further supporting data.
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.
Claims 1-6 , 10-16 and 20-26 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 11920802. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 1-6, 10-16 and 20-26
The shared limitations of the independent claims are mapped below
Claim 1, 11, 21 of instant App (like language bolded)
Claim 1 and 11 of US ‘802 (like language bolded)
An air conditioner unit, comprising: an indoor heat exchanger assembly positioned in an indoor portion of the air conditioner unit, the indoor heat exchanger assembly comprising an indoor heat exchanger and an indoor fan; and a strip heating element positioned in the indoor portion of the air conditioner unit downstream of the indoor fan. Wherein the strip heating element is mounted on a flow divider/cutout/louver.
An air conditioner unit, comprising:an indoor heat exchanger assembly positioned in an indoor portion of the air conditioner unit, the indoor heat exchanger assembly comprising an indoor heat exchanger and an indoor fan; and a strip heating element/heating unit positioned in the indoor portion of the air conditioner unit downstream/at the exhaust side of the indoor fan, the strip heating element comprising a substrate and a film printed on an external surface of the substrate, the film comprising conductive ink embedded in the film, the conductive ink forming a resistance heating coil of the strip heating element.
Due to the dependent claims having language which corresponds verbatim/synonymously a further table for each dependent claim is not provided.
As to the non-shared language of US Patent No. 11920802 relating to mounting the resistive heating element on a divider/louvre/cutoff. These limitations amount to an obvious difference as they are entirely directed to the location of the resistive heating element in a manner that does not affect the function/operation of the device or provide any synergistic or unexpected results. A careful reading of Applicant’s disclosure shows that Applicant did not detail any synergistic or unexpected result from mounting the resistor on any structure – so long as the structure is downstream of the indoor fan – and has stated that all of the potential claimed mounting points are for the same function, i.e. heating air after it has left the indoor fan. As such it appears that any mounting location downstream of the fan would function equivalently and it would have been an obvious matter of re-arrangement of parts to one of ordinary skill in the art before the effective filing date to place the heating strip in any desired location. Note that when the difference between the prior art (or in this case prior claimed invention) and the claimed invention is merely the location of a part in a manner that does not alter the function of the device a finding of prima facie obviousness is supported (see MPEP §2144.04).
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, 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) 1-3, 11-13 and 21-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 6658882 to Ohama in view of US 4,598,558 to Bingham.
Regarding claims 1, 11 and 21
Ohama teaches: An air conditioner unit, comprising: an indoor heat exchanger assembly (11, 12) positioned in an indoor portion of the air conditioner unit (abstract; Fig. 3), the indoor heat exchanger assembly comprising an indoor heat exchanger (11) and an indoor fan (12); and a heating element/unit (55). Ohana further teaches a flow divider/louver at an indoor outlet of the air conditioner unit (grid 43).
Ohana fails to teach that the heating element is a strip heating element located downstream of the fan.
However, this configuration is known from Bingham which teaches a strip heating element/unit (48) located downstream/at the exhaust side of an indoor fan (18).
As such it would have been obvious to one of ordinary skill in the art to substitute the location of the heating element of Ohama with the heating element location and configuration of Bingham (i.e. where the strip heating element is located downstream of an indoor fan) as this is a known location for providing electrical resistance heating to the outlet of an indoor fan used for indoor heating and would have yielded only the predictable result of warming the fan outlet air for the enjoyment of the occupants inside the building.
Ohana and Bingham further fail to specifically teach that the resistive heating element is located on a louver/flow-divider/cutoff.
Mounting the resistive heating element on a divider/louvre/cutoff amounts to nothing more than a obvious relocation of parts between the claimed invention and the prior as these limitations are entirely directed to the location of the resistive heating element in a manner that does not affect the function/operation of the device or provide any synergistic or unexpected results. A careful reading of Applicant’s disclosure shows that Applicant did not detail any synergistic or unexpected result from mounting the resistor on any particular structure – so long as the structure is downstream of the indoor fan. As such it appears that any mounting location downstream of the fan would function equally well and it would have been an obvious matter of re-arrangement of parts to one of ordinary skill in the art before the effective filing date to place the heating strip in any desired location. Note that when the difference between the prior art (or in this case prior claimed invention) and the claimed invention is merely the location of a part in a manner that does not alter the function of the device a finding of prima facie obviousness is supported (see MPEP §2144.04).
Regarding claims 2 , 12 and 22, the modified Ohama further teaches: wherein the strip heating element is the only heating element in the indoor portion of the air conditioner unit (Bingham, Fig. 3 after substitution modification as described above).
Regarding claims 3, 13 and 23 the modified Ohana further teaches: wherein there is no heating element upstream/on the suction side of the indoor fan (Bingham Fig. 3; after substitution modification as described above).
Claim(s) 4-6, 14-16 and 24-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ohama in view of Bingham and in further view of USPUB 2022/0418046 to Horne.
Regarding claims 4 and 14, Ohama as modified teaches all of the limitations discussed above, but fails to teach wherein the strip heating element comprises a substrate and a film printed on an external surface of the substrate, the film comprising conductive ink embedded in the film the conductive ink forming a resistance heating coil of the strip heating element.
However, this is a known way of producing strip heating elements as shown by Horne who teaches forming a strip heating element (Figs. 9 and 10) comprising a substrate (¶ [0028] Figs. 9 and 10) and a film printed on an external surface of the substrate (¶ [0030]), the film comprising conductive ink embedded in the film (¶ [0031]), the conductive ink forming a resistance heating coil of the strip heating element (Fig. 10; ¶ [0117]).
It therefore would have been obvious to one of ordinary skill in the art before the effective filing date to further modify Ohama such that the strip heating element is made with the structure of the strip heating element with conductive ink as taught by Horne as this is a known method of producing strip heaters in the art of heating elements and as such it would have been nothing more than a simple substitution of known strip heating elements to replace the strip heating elements of the modified Ohama with those of Horne yielding only the predictable result of heated air for the enjoyment of the end user.
Regarding claims 5 and 15, the modified Ohama further teaches wherein the resistance heating coil is the only heating coil in the strip heating element (Horne, Figs. 9-10; there being no other heating elements present).
Regarding claims 6 and 16, the modified Ohama further teaches wherein the conductive ink embedded in the film forms a plurality of resistance heating coils (Fig. 9, ¶ [0117]).
Claim(s) 10 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ohama in view of Bingham and in further view of US PGPUB 2004/0182850 to Wilde.
Ohama as modified teaches all of the limitations as discussed above, but does not teach a thermal cutout in thermal communication with the strip heating element, the thermal cutout configured to deactivate the strip heating element when a temperature at the thermal cutout exceeds a threshold.
As Wilde teaches it is common in the art of resistive heaters to provide the heating elements in a thermal cutout configured to deactivate the strip heating element when a temperature at the thermal cutout exceeds a threshold (¶[0004]-[0005]).
As such it would have been obvious to further modify Ohama such that the resistive heating strips are provided in a cutout, as taught by Wilde, in order to provide overheat protection.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WOODY A LEE JR whose telephone number is (571)272-1051. The examiner can normally be reached Monday - Friday 0800-1630.
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, Edward "Ned" Landrum can be reached at 571-272-5567. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/WOODY A LEE JR/ Primary Examiner, Art Unit 3761