DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Claims 1-14 and 27-30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions and there being no allowable generic or linking claim. Applicant timely traversed the restriction requirement in the reply filed on 11/13/2025. The traversal is on the ground(s) that:
“the alleged common technical feature identified is does not encompass the entire commonality between the claims and instead is only limited to one aspect”
These arguments are not persuasive because all of the claims of elected Invention Group B (Claims 15-26) are rendered obvious by the known prior art of Hayakawa and Varner (as is presented below in the 103 rejection section of this Office Action). Therefore, any technical features that all of Invention Groups A, B and C have in common are not special technical features that make a contribution over the known prior art given that all features of elected Invention Group B (Claims 15-26) are rendered obvious by the known prior art (as is presented below in this Office Action). Accordingly, Invention Groups A, B and C do not share any common special technical features and the arguments concerning the same are not persuasive.
Therefore, the restriction requirement is still deemed proper and is consequently made FINAL. Claims 1-30 are currently pending while Claims 1-14 and 27-30 are withdrawn from further consideration.
Claim Objections
2. The claims listed below are objected to because of the following informalities:
In Claim 18, change “at least one second heat exchanger” to -- at least one heat exchanger --
In Claim 19, change “the at least one second heat exchanger” to -- the at least one heat exchanger --
In Claim 20, change “one or both of the at least one first heat exchanger and the at least one second heat exchanger” to -- one or both of at least one first heat exchanger and at least one second heat exchanger --
In Claim 21, line 1, change “further using” to -- further comprising using --
In Claim 23, change “one or both of the at least one first heat exchanger and the at least one second heat exchanger” to -- one or both of at least one first heat exchanger and at least one second heat exchanger --
In Claim 24, change “of the collected condensation” to -- of collected condensation --
In Claim 25, change “pumping the at least some of the collected condensation” to -- pumping at least some of collected condensation --
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 18-19 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 pre-AIA the applicant regards as the invention.
Claim 18 recites the limitation “The method as set forth in claim 14, further comprising” which is considered indefinite because Claim 14 does not claim a method but rather a “heat recovery system”. Moreover, it appears that Claim 18 (and dependent Claim 19) is supposed to be a part of the “method” invention group of which Claim 15 is the independent claim. Thus, it is unclear which claim that Claim 18 is supposed to depend upon which makes the metes and bounds of the claim unclear. For the purpose of expediting prosecution, Claim 18 will be interpreted as depending upon the “method” of independent Claim 15.
Claim 19 is rejected due to its dependency on Claim 18.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 26 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 26 recites the “The method as set forth in claim 22, further comprising washing the at least one first heat exchanger and the at least one second heat exchanger sequentially”. However, Claim 22 on which Claim 26 depends already recites “further comprising washing the at least one first heat exchanger and the at least one second heat exchanger sequentially”. Thus, by virtue of including the exact limitations of the claim on which it depends, Claim 26 fails to further limit the subject matter of the claim upon which it depends (i.e., Claim 22). Claim 26 consequently stands rejected under 35 U.S.C. 112(d).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 15-26 are rejected under 35 U.S.C. 103 as being unpatentable over Hayakawa et al. (US 2004/0079088 A1) (hereinafter “Hayakawa”) in view of Varner et al. (US 5,603,909) (hereinafter “Varner”).
Regarding Claim 15, Hayakawa teaches of a method for recovering heat from a recovery boiler system (system including element (1) as shown in Fig. 1) capable of use with a pulp and paper mill (Note that the preamble limitation of “in a pulp and paper mill” is being interpreted as the recovery boiler system being capable of use with a pulp and paper mill and that a physical “pulp and paper mill” is not a claim element. In the instant case, Hayakawa teaches that the recovery boiler system is capable of use with any application requiring steam and/or heated water (see at least Abstract and Fig. 1) and accordingly teaches that the recovery boiler system is capable of use in “a pulp and paper mill” which needs steam and/or heated water. The recovery boiler system taught by Hayakawa accordingly meets this limitation as claimed.), the recovery boiler system comprising a flue gas stack (2) operatively coupled thereto (see at least [0014] and Fig. 1), the method comprising:
a) drawing flue gas away from the flue gas stack (via fan element (4)) (see at least [0014] and Fig. 1);
b) heating a fluid in a first heat exchanger (5) with the drawn flue gas (see at least [0025]-[0027] and Fig. 1);
c) then heating process hot water (“high temperature water” used in “appliances”) in a second heat exchanger (6) with the drawn flue gas (see at least [0025]-[0027] and Fig. 1); and
d) then exiting the drawn flue gas to the atmosphere (via element (7)) (see at least [0025] and Fig. 1).
Hayakawa fails to explicitly teach that heating the fluid in the first heat exchanger with the drawn flue gas comprises heating boiler feedwater. However, doing so is well known in the art.
Varner discloses a relatable boiler system (Fig. 5) that comprises a first heat exchanger (first heat exchanger comprising elements (74) and (76)) that heat a first fluid (see at least Col. 5 lines 39-45, Col. 7 lines 39-46 and Fig. 5) and a second heat exchanger (80) that heat a second fluid with drawn flue gas (see at least Col. 6 lines 1-29 and Fig. 5). Varner teaches that heating the fluid in the first heat exchanger with the drawn flue gas may comprise heating boiler feedwater (see at least Col. 7 lines 39-46 and Fig. 5 - “The air preheater could be an economizer-type unit instead of an air heater-type unit. By circulating water (instead of air) through tubes upstream of the condensing heat exchange unit, the flue gas temperature is reduced to a temperature that the CHX can withstand while pre-heating water that can be used as boiler feedwater or for other purposes.”) and that doing so is advantageous because it provides means for pre-heating the “boiler feedwater” such that efficiency of the boiler system can be enhanced (see at least Col. 7 lines 39-46 and Fig. 5).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the method taught by Hayakawa by using the existing first heat exchanger to heat fluid in the form of boiler feedwater as is taught by Varner. Doing so would have provided means for pre-heating the boiler feedwater such that efficiency of the boiler system could be enhanced. Note that such modification would have necessarily resulted in the invention as claimed.
Regarding Claim 16, Varner, in the combination of Hayakawa and Varner, also teaches of heating the boiler feedwater with at least one first heat exchanger (74) (see at least Col. 7 lines 39-46, Fig. 5 and the rejection for Claim 1 above).
Regarding Claim 17, Varner, in the combination of Hayakawa and Varner, also teaches that the at least one first heat exchanger may comprise two or more boiler feedwater heat exchangers operatively coupled together sequentially (heat exchangers (74) and (76) which are operatively coupled together sequentially as shown in Fig. 5 and both of which may heat boiler feedwater as is disclosed in at least Col. 7 lines 39-46) (see at least Col. 7 lines 39-46, Fig. 5 and the rejection for Claim 1 above).
Regarding Claim 18, to the extent that Claim 18 is understood in light of the 112(b) rejections set forth in this Office Action, Hayakawa also teaches of heating the process hot water with at least one second heat exchanger (6) (see at least [0025]-[0027] and Fig. 1).
Regarding Claim 19, Hayakawa and Varner teach the method as set forth in claim 18 (see the rejection for Claim 18) but fail to explicitly teach that the at least one second heat exchanger comprises two or more process hot water heat exchangers operatively coupled together sequentially. However, it has been held that a mere duplication of parts that does not produce a new and unexpected result has “no patentable significance” (see below). Therefore, merely duplicating parts in the prior art in a way that that would not have produced a new and unexpected would have constituted an obvious modification.
In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) (Claims at issue were directed to a water-tight masonry structure wherein a water seal of flexible material fills the joints which form between adjacent pours of concrete. The claimed water seal has a "web" which lies in the joint, and a plurality of "ribs" projecting outwardly from each side of the web into one of the adjacent concrete slabs. The prior art disclosed a flexible water stop for preventing passage of water between masses of concrete in the shape of a plus sign (+). Although the reference did not disclose a plurality of ribs, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.).
In the instant case, duplicating the existing second heat exchanger (6) already taught by Hayakawa such that two or more process hot water heat exchangers would be operatively coupled together sequentially as opposed to just a single one would have produced the expected result of increasing the amount of heat energy that could be captured from the exhaust gas (see at least [0025]-[0027] and Fig. 1 of Hayakawa). Thus, such modification would not have produced “a new and unexpected result” and would have accordingly constituted an obvious duplication of parts.
Therefore, it would have been prima facie obvious to modify the combined method taught by duplicating the existing second heat exchanger already taught by Hayakawa such that two or more process hot water heat exchangers would be operatively coupled together sequentially as opposed to just a single one as claimed since such modification would have constituted an obvious duplication of parts which fails to patentably distinguish over the prior art. Note that such modification would have necessarily resulted in the invention as claimed.
Regarding Claim 20, Hayakawa and Varner teach the method as set forth in claim 15 (see the rejection for Claim 15).
Hayakawa fails to explicitly teach of washing one or both of precipitate and condensate off of one or both of at least one first heat exchanger and at least one second heat exchanger, wherein the precipitate and the condensate is formed on one or both of the at least one first heat exchanger and the at least one second heat exchanger after the drawn flue gas has passed therethrough. However, this limitation is also taught by Varner.
Varner additionally teaches of washing one or both of precipitate and condensate off of both of at least one first heat exchanger (first heat exchanger comprising elements (74) and (76)) and at least one second heat exchanger (80) (via at least “spraying”) (see at least Col. 5 line 47-63, Col. 6 lines 12-20 and Fig. 5) with collected condensate (via at least elements (78), (82) and (84)) (see at least Col. 5 line 47-63, Col. 6 lines 12-20 and Fig. 5), wherein the precipitate and the condensate have formed on one or both of the at least one first heat exchanger and the at least one second heat exchanger after the drawn flue gas has passed therethrough (see at least Abstract, Col. 5 line 47-63, Col. 6 lines 12-20 and Fig. 5). Varner teaches that doing so, inter alia, provides means to “prevent buildup and enhance heat transfer efficiency” (see at least Abstract, Col. 5 line 47-63, Col. 6 lines 12-20 and Fig. 5).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have further modified the combined method by configuring the method to include washing one or both of precipitate and condensate off of both of at least one first heat exchanger and at least one second heat exchanger (that has formed after drawn flue gas has passed therethrough) with collected condensate as is also taught by Varner. Doing so would have provided means to prevent buildup and enhance heat transfer efficiency. Note that such modification would have necessarily resulted in the invention as claimed.
Regarding Claim 21, Varner also teaches of using at least one spray nozzle (84) for washing one or both of the at least one first heat exchanger and the at least one second heat exchanger (see at least Col. 6 lines 12-20 and Fig. 5).
Regarding Claim 22, Varner also teaches of washing the at least one first heat exchanger and the at least one second heat exchanger sequentially (since water for washing is “sprayed intermittently” and independently over each of the first and second heat exchanger, it follows that washing occurs “sequentially” when the first heat exchanger is sprayed before the second heat exchanger during an intermittent spray cycle) (see at least Col. 5 line 47-63, Col. 6 lines 12-20 and Fig. 5).
Regarding Claim 23, Hayakawa also teaches of collecting condensation (via element (36)) produced by water vapour disposed in the drawn flue gas condensing on one or both of the at least one first heat exchanger (5) and the at least one second heat exchanger (6) as the drawn flue gas passes therethrough (see at least Abstract [0027]-[0029] and Fig. 1).
Regarding Claim 24, Varner also teaches of washing one or both of precipitate and condensate off of one or both of the at least one first heat exchanger and the at least one second heat exchanger with at least some of the collected condensation (condensation collected in element (78)) (see at least Col. 5 line 47-63, Col. 6 lines 12-20 and Fig. 5), the precipitate and the condensate having formed on one or both of the at least one first heat exchanger and the at least one second heat exchanger after the drawn flue gas has passed therethrough (see at least Col. 5 line 47-63, Col. 6 lines 12-20 and Fig. 5).
Regarding Claim 25, Varner also teaches of pumping the at least some of the collected condensation (via pump element (82)) through at least one spray nozzle (84) to wash one or both of the at least one first heat exchanger and the at least one second heat exchanger (see at least Col. 5 line 47-63, Col. 6 lines 12-20 and Fig. 5).
Regarding Claim 26, Varner also teaches of washing the at least one first heat exchanger and the at least one second heat exchanger sequentially (since water for washing is “sprayed intermittently” and independently over each of the first and second heat exchanger, it follows that washing occurs “sequentially” when the first heat exchanger is sprayed before the second heat exchanger during an intermittent spray cycle) (see at least Col. 5 line 47-63, Col. 6 lines 12-20 and Fig. 5).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following prior art is considered relevant to this application in terms of structure and use:
McIlroy et al. (US 5,820,830)
Bhat et al. (US 5,826,518)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN W JOHNSON whose telephone number is (571)272-8523. The examiner can normally be reached M-F, 7:30-5:00 PM.
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/BENJAMIN W JOHNSON/Examiner, Art Unit 3762 11/26/2025
/STEVEN B MCALLISTER/Supervisory Patent Examiner, Art Unit 3762