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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status
The amendments filed 10/17/25 have been entered. Claims 1, 3-11, 13-14, 16-20 are currently pending. Accordingly, claims 11, 16, 18 have been amended and claims 12 and 15 cancelled. Applicants’ canceling of claim 2 and amendment of claims 1, 3, 6-8, and 9 of withdrawn claims is acknowledged.
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.
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.
Claims 11, 15-16, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi et al. (U.S. PGPub 2006/0243778) in view of Haghdoost et al. (U.S. PGPub 2019/0186035), and Bao et al. (U.S. PGPub 2023/0159786).
Regarding claim 11, Yamaguchi teaches a heat exchanger (Fig. 10), comprising: a pair of collecting pipes (elements 17 fig. 10) being spaced from each other, each collecting pipe defining an inner cavity (per fig. 10 and inherent in term “pipe”); a plurality of flat tubes (elements 202) arranged along an axial direction of the pair of collecting pipes (per fig. 10), each flat tube comprising two opposite ends retained to a corresponding one of the collecting pipes (per fig. 10), respectively; the plurality of flat tubes defining a row of channels for refrigerants to flow (per fig. 10), the channels being disposed along a width direction of the plurality of flat tubes (per fig. 10); the channels being in fluid communication with the inner cavities of each of the collecting pipes (per fig. 10); a plurality of fins (elements 16) each being sandwiched between two adjacent flat tubes (per fig. 10) with a coating (on element 202f para. 0113)
Yamaguchi does not teach, a first matching coating being indirectly contacted with at least one outer surface of one of the plurality of flat tubes, or the plurality of fins, and a second matching coating in contact with at least one outer surface of the pair of collecting pipes, the plurality of flat tubes, and the plurality of fins, wherein the second matching coating is placed between the first matching coating and at least one of the pair of collecting pipes, the plurality of flat tubes, and the plurality of fins:, wherein the first matching coating comprises a hydrophobic material and a filler of nanoparticle type, a weight per unit area of the first matching coating is in a range of 0.1g/m2~1g/m2, and the second matching coating comprises a compound containing rare earth elements.
Haghdoost teaches a heat exchanger with fins (para. 0077) including second coating layer (para. 0011) comprises a hydrophobic material (para. 0189, 0203, 0205, 0288) and a filler of nanoparticle type (para. 0015, 0203, 0216, 0292, 0298). Haghdoost further teaches this second matching coating in contact with at least one outer surface of the pair of collecting pipes, the plurality of flat tubes, or the plurality of fins; wherein at least part of the first matching coating is coated on a surface of the second matching coating (para. 0011, first and second layer read on this), and the second matching coating comprises a compound containing rare earth elements (para. 0007). It would have been obvious to one skilled in the art at the time of filing to modify Yamaguchi to include the coating features of Haghdoost as claimed, the motivation would be self-healing property and protecting the substrate against corrosion.
Bao teaches a top coating layer is in a range of 0.1g/m2~1 g/m2 (para. 0157). It would have been obvious to one skilled in the art at the time of filing to modify Yamaguchi include the top coating layer with the claimed weight ratio, the motivation would be to maintain heat transfer while providing resistance (para. 0004).
Regarding claim 16, Yamaguchi teaches the pair of collecting pipes, the plurality of flat tubes, and the plurality of fins are retained by brazing (abstract), the plurality of flat tubes are arranged along a length direction of the pair of collecting pipes (fig. 10), a width of each flat tube is greater than a thickness of each flat tube (fig. 20), and a width direction of the plurality of flat tubes is perpendicular to the length direction of the pair of collecting pipes (fig. 10).
Regarding claim 18, Yamaguchi teaches that least one outer surface of the plurality of flat tubes comprises a rough surface and a roughness (Ra) of the rough surface satisfies 0.5µm≤Ra≤10µm (para. 0056); and the first matching coating is at least partially coated on the rough surface (per fig. this is coated section). Yamaguchi does not expressly teach this is formed by sandblasting but this isa product-by-process limitation and “once a product appearing to be substantially identical is found and a 35 U.S.C. 103 rejection [is] made, the burden shifts to the applicant to show an unobvious difference” MPEP 2113. This rejection under 35 U.S.C. 103 is proper because the “patentability of a product does not depend on its method of production.” In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi et al. (U.S. PGPub 2006/0243778) in view of Haghdoost et al. (U.S. PGPub 2019/0186035), and Bao et al. (U.S. PGPub 2023/0159786), and in further view of Hashiura et al. (U.S. Patent 5,148,862).
Regarding claim 17, Yamaguchi does not expressly teach each fin of the plurality of fins is corrugated along a length direction of the plurality of flat tubes, and each fin comprises a wave crest and a wave trough connecting with two side walls of two adjacent flat tubes, respectively (note the corrugated fin is generically taught in para. 0009). The application of fins as claimed between the tubes is well known in the art (As shown by Hashiura et al. U.S. Patent 5,148,862), thus it would be obvious to one skilled in the art to applies the claimed fins to a heat exchanger as claimed, the motivoant would be to use a well-known and available fin design.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi et al. (U.S. PGPub 2006/0243778) in view of Haghdoost et al. (U.S. PGPub 2019/0186035), and Bao et al. (U.S. PGPub 2023/0159786), and in further view of Wood et al. (U.S. PGPub 20019/0144683).
Regarding claim 19, Yamaguchi does not teach the hydrophobic material corresponding to the first matching coating comprises an organosilane-based modified material with low surface energy or a sol gel of silane system, and nanoparticles comprise hydrophobic gaseous silicon dioxide. Wood teaches hydrophobic (para. 0117) material corresponding to the first matching coating comprises an organosilane-based modified material with low surface energy (para. 0091). It would have been obvious to one skilled in the art at the time of filing to modify Yamaguchi and Haghdoost to include the claimed materials taught by Wood, the motivation would be improved hardness and dirt resistance (para. 0056).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi et al. (U.S. PGPub 2006/0243778) in view of Haghdoost et al. (U.S. PGPub 2019/0186035), and Bao et al. (U.S. PGPub 2023/0159786), and in further view of Wood et al. (U.S. PGPub 20019/0144683) and Albert et al. (U.S. PGPub 2007/0054056).
Regarding claim 20, Yamaguchi does not teach the organosilane-based modified material with low surface energy comprises one or more of 1H,1H,2H,2H- Perfluorodecyltriethoxysilane, 1H,1H,2H,2H-Perfluorodecyltrimethoxysilane, 1H,1H,2H,2H- Perfluorooctyltriethoxysilane, octadecyltrimethoxysilane and hexadecyltrimethoxysilane. Albert teaches organosilane-based modified material (para. 0002) comprises one or more of octadecyltrimethoxysilane and hexadecyltrimethoxysilane (para. 0042). It would have been obvious to one skilled in the art at the time of filing to modify Yamaguchi and Haghdoost to include the claimed materials taught by Albert, the motivation would be improved protection form corrosion (abstract).
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 15 and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,313,354.
Response to Arguments
Applicant’s arguments, filed 10/7/25, with respect to the “low surface energy” 112(b) rejection have been fully considered and are persuasive. The rejections have been withdrawn; the term will be considered to require lower than 30mN/m2.
Applicant's arguments filed 10/17/25 have been fully considered but they are not persuasive. Individual arguments are responded to below.
Applicant argues that the range taught by Bao does not make the claimed range obvious, the examiner respectfully disagrees. Applicants smaller range does not change the fact the values claimed are taught, applicants narrow range is fully covered by the prior art. The fact that the inventor has recognized another advantage or optimum range does not change that the range is taught by prior art and thus is obvious (and taught) from following the suggestion of the prior art cannot be the basis for patentability.
Applicant argues that the rare earth elements taught by Haghdoost are not applicable and do not make their application obvious as used in the rejection, the examiner respectfully disagrees. In response to applicant's argument the fact that the inventor has recognized another advantage (or not the specific type of benefit) which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Applicants assertion that the use of such should be ignored in the prior art is not supported.
In response to applicant's arguments against the references individually (specifically that Haghdoost does not teach limitations b and c argued), one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., pitting) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The double patenting is still applicable as the claims are obvious as shown above, thus the differences between the claims and the cited patent are still obvious.
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 JOEL M ATTEY whose telephone number is (571)272-7936. The examiner can normally be reached on Monday-Thursday 8-5 and Friday 8-10 and 2-4.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jianying Atkisson be reached on (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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/JOEL M ATTEY/Examiner, Art Unit 3763
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