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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 10, 2026, has been entered.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
A review of the specification shows that the following appear to be the corresponding structures for the aforementioned 112(f) limitation(s):
Such claim limitation(s) is/are:
a mechanical energy recovery device in claims 9-10 and 25. For purposes of examination: device comprises an electrical generator (Applicant Specification Publication [0087]).
The aforementioned limitation meets the three-prong test outlined herein since:
(A) the term “device” is a generic placeholder,
(B) the generic placeholder is modified by functional language (e.g. “mechanical energy recovery”), and
(C) the generic placeholder is not modified by sufficient structures, material or acts for performing the claimed function.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 103
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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 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Galetskij et al. (WO 2012023915 A1) in view of Berchowitz (US 5642622).
In re Claim 1, Galetskij discloses a cooling system (Fig. 1) comprising at least:
- a Stirling heat pump (1) designed to cool an inlet gas (15) down to a cryogenic temperature (cooled to -200 ° C) in order to form a cryogenic liquid (17),
- a primary motor (3 and related component 2), configured to operate said Stirling heat pump (1),
- a primary pump (34) configured to circulate said cryogenic liquid (17) under pressure and
- a cooling means (33), configured to cool said primary motor ((3 and related component 2),)
by means of the cryogenic liquid (liquid nitrogen) coming from said primary pump (34).
Galetskij is silent on a primary electric motor.
However, Berchowitz (Fig. 4B) teaches a primary electric motor (60; Col 6:17-18).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have taken the teachings of Galetskij and to have modified them by having the primary electric motor as taught by Berchowitz, in order to oscillate and drive the heat pump (See Col 6:17-24), without yielding unpredictable results.
Claim 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Galetskij et al. (WO 2012023915 A1) as modified by Berchowitz (US 5642622) further in view Cur (US-20120186279-A1).
Modified Galetskij is silent on the primary pump (34) comprising a secondary electric motor, the cooling system (Fig. 1) being designed to cool said secondary electric motor by means of the cryogenic liquid (17) coming from said Stirling heat pump (1).
However, Cur the primary pump (44) comprising a secondary electric motor (47; See [0130]: 47 is not visible but is inside pump 44), the cooling system (Fig. 28) being designed to cool said secondary electric motor (47; [0130]) by means of the cryogenic liquid ([0130] cooling medium corresponding to Galetskij 17).
. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have taken the teachings of modified Galetskij and to have modified them by the primary pump Galetskij comprising a secondary electric motor Cur as taught by, the cooling system Galetskij being designed to cool said secondary electric motor as taught by Cur by means of the cryogenic liquid of Galetskij as taught by Cur coming from said Stirling heat pump of Galetskij, in order to drive the pump and to provide data from torque to control the cooling medium flow rate (See Cur [0130]), without yielding unpredictable results.
As a result of the modification supra the cryogenic liquid (Galetskij 17) comes from said Stirling heat pump (Galetskij 1).
Claim 5-7, 9, 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Galetskij et al. (WO 2012023915 A1) as modified by Berchowitz (US 5642622) further in view of Oxley (US 4227374 A).
In re Claim 5, Modified Galetskij does not explicitly disclose characterized in that it comprises an evaporator intended to evaporate at least part of said pressurized cryogenic liquid coming from said primary electric motor, in order to form an outlet gas and to collect cooling energy .
However, Oxley teaches it comprises an evaporator (22) intended to evaporate at least part of said pressurized cryogenic liquid coming from said primary electric motor, in order to form an outlet gas and to collect cooling energy.1
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have taken the teachings of Galetskij and to have modified them by having an evaporator as taught by Oxley, in order to cool incoming gas prior to liquefaction (See Oxley Col 3:35-40), without yielding unpredictable results.
In re Claim 6, Modified Galetskij as modified teaches said evaporator (Oxley 22 and 24) comprises at least one primary heat exchanger (Oxley Col 3:36: 22 is a heat exchanger; See also Col 3:44-45) intended to collect, on the one hand, said inlet gas to cool it before it enters said Stirling heat pump, and on the other hand, at least part of said cryogenic liquid, coming from said primary electric motor, to heat it. 2
In re Claim 7, Modified Galetskij as modified does not explicitly teach a that said evaporator (Oxley 22 and 24) further comprises at least one secondary heat exchanger (Oxley 24; Col 3:44-45) intended to heat said outlet gas or at least part of said cryogenic liquid coming from said primary heat exchanger by means of a heat source.
Furthermore, “intended to heat said outlet gas or at least part of said cryogenic liquid coming from said primary heat exchanger by means of a heat source” recited in the claim has been considered a recitation of intended use. The prior art structure as modified supra is capable of performing as intended. It has been held that the recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitation. (MPEP 2114)
In re Claim 9, Modified Galetskij as modified does not explicitly teach characterized in that it comprises a mechanical energy recovery device to recover the mechanical energy produced by a displacement of said outlet gas.
However, Oxley teaches a mechanical energy recovery device (27) to recover the mechanical energy produced by a displacement of said outlet gas.3
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have taken the teachings of Modified Galetskij and to have modified them by having a mechanical energy recovery device as taught by Oxley, in order to recover mechanical energy for high overall thermodynamic efficiency of the power input--energy storge by liquefied gas (See Oxley Col 4:56-65), without yielding unpredictable results.
In re Claim 23, Modified Galetskij does not explicitly disclose a motor assembly characterized in that it comprises at least: the cooling system according, said cooling system being designed to produce liquefied dioxygen, and an internal combustion engine, downstream from said cooling system and comprising a combustion chamber, the cooling system being connected to said internal combustion engine in order to be able to inject said liquefied dioxygen into said combustion chamber.
However, Oxley teaches a cooling system (Fig. 1) being designed to produce liquefied dioxygen (21), and an internal combustion engine (17 and 12; See Col 4:45-54), downstream from said cooling system and comprising a combustion chamber (Col 4:45-49: combustion chamber of 17), the cooling system (Fig. 1) being connected to said internal combustion engine (17 and 12) in order to be able to inject said liquefied dioxygen into said combustion chamber.4
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have taken the teachings of Modified Galetskij and to have modified them by having the cooling system Modified Galetskij being designed to produce liquefied dioxygen, and an internal combustion engine, downstream from said cooling system and comprising a combustion chamber as taught by Oxley, the cooling system of Modified Galetskij being connected to said internal combustion engine as taught by Oxley, in order to be able to inject said liquefied dioxygen into said combustion chamber and drive the Stirling heat pump (See Oxley Col 3:23-22 and Col 3:44-55), without yielding unpredictable results.
Allowable Subject Matter
Claims 10-13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
The Remarks of April 10, 2026, have been fully considered but are not persuasive for the reasons below.
Applicant argues
On Page 14¶3 of the Remarks, that the examiner has not shown that claims 1 is anticipated by Galetskij there is allegedly no basis in the prior art for cooling the motor 3 by means of the cryogenic liquid coming from said primary pump 20 that circulates the cryogenic liquid as required by the claims. Applicant appears to suggest that one of ordinary skill in the art would not recognize from the teaching of Galetskij that the primary pump is 34 and that it is sending a cryogenic liquid to cool motor 3. Applicant argues the motor 3 is cooled by means of the liquid nitrogen (not the cryogenic liquid coming from the Stirling machine 1) coming from the pump 34 which is different and distinct from the primary pump 20 that circulates the cryogenic liquid. Applicant maintains that the cryogenic liquid coming from the primary pump 20 is merely sent to the distillation column 10, and is not used to cool the motor 3. Moreover, Galetskij does not teach that the pump 20 (or even the pump 34) circulates the liquid under pressure.
The Examiner disagrees with Applicant’s characterization of Galetskij and Galetskij’ s primary pump. The Galetskij Stirling machine itself meets the claim’s requirements, the extraneous discussion of a different pump does not remove the Galetskij from prior art status. Contrary to Applicant' s assertion that pump 34 is not a primary pump, Galetskij does in fact indicate that a thermally insulated tank 32 for liquid nitrogen, pipeline 33 with a pump 34 for supplying liquid nitrogen to Stirling engines 3 and 35, pipeline 36 with liquid metal coolant for supplying energy to a heat accumulator 9. Specifically, by sending the cryogenic liquid nitrogen to the pump, Galetskij discloses that the motor is being cooled. Therefore, the rejection is maintained.
Furthermore, in response to applicant's argument on Remarks Page 15¶1-Page 16¶3, that Berchowitz is directed to a fundamentally different system, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Furthermore, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In light of the above, one of ordinary skill in the art would recognize that the findings of fact outlined in the rationale and motivation for the 103 rejection based on Galetskij and Berchowitz satisfy the requirements to establish a prima facie case of obviousness. In essence, the fact that Galetskij’ s overall goal is to provide a system with increased modularity (i.e. a system in which you can easily add or remove modules; see at least paragraphs 2 and 17) provides evidence that the electric motor of Berchowitz is indeed compatible with the teachings of Galetskij.
Moreover, the test for obviousness is not whether the prior art references are within the same field of endeavor or problem as each other. The test for obviousness is not only whether the prior art is directed to same problem as the claimed invention, but may also be, whether the prior art references are within the same field of endeavor of the claimed invention (see MPEP § 2141.01(a)). Since Galetskij (classified in CPC class F25J3/045) and Berchowitz (classified in CPC class F25B9/14) are within the same field of endeavor as the claimed invention (which contains classifications in both F25J/045 and F25B9/14, as evidenced by the cover page of the printed publication: US 20230228463 A1), the prior art is considered analogous art to the claimed invention, which is explicit evidence that the combination would have been considered by one of ordinary skill in the art.
Because Galetskij/Berchowitz teach all the limitations of Claim 1, the rejection of claims 1-2, 5-7, 9-13 and 23 are maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IBRAHIM M ADENIJI whose telephone number is (571)272-5939. The examiner can normally be reached 8:00-5:00 PM.
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, Jianying Atkisson can be reached at 571-270-7740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IBRAHIM A. MICHAEL ADENIJI/Examiner, Art Unit 3763 /JOEL M ATTEY/Primary Examiner, Art Unit 3763
1 The recitation of "intended to evaporate at least part of said pressurized cryogenic liquid coming from said primary electric motor, in order to form an outlet gas and to collect cooling energy” recited in the claim have been considered recitations of intended use. The prior art structure as modified above is capable of performing as intended. It has been held that the recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitation. (MPEP 2114)
2 The recitation of "intended to collect, on the one hand, said inlet gas to cool it before it enters said Stirling heat pump, and on the other hand, at least part of said cryogenic liquid, coming from said primary electric motor, to heat it.” recited in the claim have been considered recitations of intended use. The prior art structure as modified above is capable of performing as intended. It has been held that the recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitation. (MPEP 2114)
3 The recitation of "to recover the mechanical energy produced by a displacement of said outlet gas” recited in the claim have been considered recitations of intended use. The prior art structure as modified above is capable of performing as intended. It has been held that the recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitation. (MPEP 2114)
4 The recitation of "in order to be able to inject said liquefied dioxygen into said combustion chamber” recited in the claim have been considered recitations of intended use. The prior art structure as modified above is capable of performing as intended. It has been held that the recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitation. (MPEP 2114)
Prosecution Insights