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 .
This action in response to remarks and amendments filed 3/2/2026.
Claim Objections
Claims 26-32 are objected to because of the following informalities:
In claim 27, line 5 should read at the end “the intermittent stream of vaporization gas” as opposed to “the stream of vaporization” for consistency.
In Claim 26 and 29, “of vaporization gas” should be recited after each recitation of “the intermittent stream” for consistency.
Claims 28, 30-32 are objected to as being dependent upon an objected to claim.
Appropriate correction is required.
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. Such claim limitation(s) is/are:
collection member understood to be a storage vessel,
compression member is understood to be a compressor,
expansion member of the cycle gas is understood to be a turbine or valve,
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
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 21-22, 24, 26-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Decker et al. (US PG Pub 20210381756), hereinafter referred to as Decker and further in view of Maunder et al. (US PG Pub 20140083132), hereinafter referred to as Maunder and Babington (US Patent No. 4495777), hereinafter referred to as Babington and Paradowski (US PG Pub 20100126214), hereinafter referred to as Paradowski.
With respect to claim 21, Decker teaches (Figure 2) a plant for refrigeration of a fluid to a cryogenic temperature, for the liquefaction of hydrogen, the plant comprising:
a circuit of fluid to be cooled, comprising an upstream end connected to a source and a downstream end connected to a collection member configured to collect the cooled and/or liquefied fluid (hydrogen enters the system at 12 which would be from a source and leaves the system as liquid hydrogen via valve 112 into a storage tank, paragraph 63)
a precooling circuit in heat exchange with the precooling exchanger (precooling exchanger 96 which precools the hydrogen against LN2 or LNG, paragraph 61),
a precooling exchanger configured to precool the fluid exiting from the upstream end, said precooling exchanger being in heat exchange with a precooling circuit composed of a stream of gas of a user fluid (precooling heat exchanger 96, which cools precools the hydrogen against LN2 or LNG, paragraph 61),
a plurality of heat exchangers configured to perform heat exchange with the circuit of fluid to be cooled, wherein the plurality of heat exchangers are disposed downstream of the precooling heat exchanger cooled downstream of the precooling exchanger (heat exchangers 120-46)
a first refrigeration cycle in heat exchange with the circuit of fluid to be cooled (the cooling cycle 16, paragraph 44), the first refrigeration cycle comprising a compression member and an expansion member (compressor 82 and JT valve 40, paragraphs 59 and 47)
the cycle gas comprising hydrogen and/or helium (refrigerant in cycle 16 includes helium, paragraph 13), the working circuit of the first refrigeration cycle comprising compression member configured to compress the cycle gas (compressor system 82, paragraph 59), and an expansion member configured to expand the cycle gas (JT valve 40 paragraph 47), the first refrigeration cycle having a cycle gas comprising helium (refrigerant can be helium, paragraph 13), wherein the first refrigeration cycle is configured such that the cycle gas is cooled in at least one of the plurality of heat exchangers after the compression member and is warmed in at least one of the purity of heat exchangers after the expansion member (after 82 the refrigerant flows through heat exchangers including 120 where it is cooled before it then passes to valve 40, recycling the gas back to through the cycle where it is heated in multiple heat exchangers, paragraphs 47-48),
wherein the precooling exchanger is further in heat exchange with a separate auxiliary refrigerant circuit (the precooling heat exchanger is also in heat exchange with the precooling cycle 18 in heat exchanger 96, paragraph 61).
Decker does not teach wherein the precooling circuit is configured to receive a vaporization gas of a user.
Maunder (Figure 1) teaches that after liquefaction the liquid stream (17) is fed to a tank (I) and any boil-off gas from the tank is heated in the heat exchangers of the system (B, D, J) against the cooling of the feed stream (paragraphs 30-33).
Therefore it would have been obvious to a person having ordinary skill in the art at the time the invention as filed for after liquefying the hydrogen of Decker to have passed it into a tank and for any boil-off gas developed in that tank to have been recycled back through all of the heat exchangers of Decker (including the pre-cooling heat exchanger) to provide additional cooling (where it would act as a vaporization gas of a user) to those heat exchangers (and thus the cycle fluid and the circuit) based on the teaching of Maunder since it has been shown that combining prior art elements to yield predictable results is obvious whereby providing boil-off gas recovery and recycling would allow for what is common knowledge in the art of a reduction in the amount of other refrigeration needed from a cycle which would reduce overall power and cost as well as allow for recovery of the boil-off gas for reliquefaction if desired.
Decker does not teach wherein the vaporization gas is an intermittent stream of vaporization gas, wherein said intermittent stream is subject to fluctuations in at least one temperature, pressure and flow rate, such that as a result said auxiliary refrigerant circuit being configured to provide cooling to the precooling exchanger when said intermittent stream of vaporization gas is unavailable or insufficient.
Babington (Figure 1) teaches that two heat exchange systems can be used together where a duct has two coils in it where a refrigerating plant is passed through one coil and water in an open loop is passed through the other coil (Page 1, Column 1, lines 2-32). The water acts as the initial cooling for the ducts but when the water is insufficient for cooling the coil for the water is taking out of operation and the other coil is used to provide cooling using mechanical refrigeration and if additional cooling is needed, both circuits can be operated (Column 1, lines 35-57).
Therefore it would have been obvious to a person having ordinary skill in the art at the time the invention was filed based on the teaching of Babington to have when providing the additional heat exchange by the boil-off gas to the heat exchangers (including the pre-cooling heat exchanger) of Decker as modified to have only provided the boil-off gas to heat exchangers only when needed or based on the amount needed by adjusting the amount of boil-off gas (vaporization gas with a fluctuating flow rate) sent to the heat exchangers (including the pre-cooling heat exchanger and thus as a pre-cooling circuit) based on demand for the pre-cooling circuit so to provide continuous operation of the precooling (as well as other heat exchange) if demand for cooling increases or if it is sufficient without the use of an active refrigeration system. The precooling cycle 18 is a closed loop precooling cycle that is for cooling the heat exchanger, which means that it would be able to provide such cooling regardless of boil-off gas being sent to the heat exchanger or not as it is only the boil-off gas that is modulated in the modification above.
Decker does not teach wherein the precooling exchanger comprises at least one of the following materials: stainless steel or grades of stainless steel, Inconel, nickel, titanium, and plastic compatible with use at cryogenic temperatures, wherein the material of the precooling exchanger is configured to withstand thermal cycling induced by said intermittent stream of vaporization gas.
Paradowski teaches that all heat exchangers in a liquefaction system can be made of stainless steel (paragraph 62).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have based on the teaching of Paradowski had the precooling exchanger of Decker as modified made of stainless steel since it has been shown that combining prior art elements to yield predictable results is obvious whereby making the heat exchanger would provide what is common knowledge in the art a heat exchanger that is capable of being used as cryogenic temperatures. As the claim require that the material is one such as stainless steel, the limitation of able to withstand the thermal cycling is met, because “configured to withstand thermal cycling” does not further limit the claims beyond the chosen material and because it is stated in the instant specification that stainless steel is capable of withstanding the operations as claimed).
With respect to claim 22, Decker as modified teaches wherein the precooling exchanger is of the plate heat exchanger (plate-fin, paragraph 61).
With respect to claim 24, Decker as modified teaches wherein the intermittent stream of vaporization gas of the user is a boil-off gas from a liquefied gas tank (as modified the vaporization gas is a boil-off gas from a liquid hydrogen tank).
With respect to claim 26, Decker as modified teaches wherein the precooling exchanger is configured to withstand a mean temperature difference of between 50 and 100 K between a first operational state wherein the intermittent stream is circulated in the precooling circuit and a second operational state wherein the intermittent stream is not circulated in the precooling circuit (this limitation does not further limit the claims in a way that specifically requires the operations to occur with this temperature, and as the material of the heat exchanger is stainless steel as shown in the rejection of claim 21, this limitation would be met as the only limitation limiting what the heat exchanger is required to that further limits the claims is the materials.
With respect to claim 27, Decker as modified teaches a process for the refrigeration of a fluid down to a cryogenic temperature (see rejection of claim 21), the process comprising the steps of: providing the plant as claimed in Claim 21 (see rejection of claim 21);
circulating the intermittent stream of vaporization gas from the user through the precooling circuit (the boil-off gas that is passed when needed to the heat exchangers including the precooling heat exchanger), such that the precooling exchanger is not continually cooled by the stream of vaporization (as modified, the vaporization gas is only when needed or based on the amount needed, which means that it is shown to be not continually used for cooling);
circulating the fluid to be cooled in the circuit of fluid to be cooled, wherein the fluid is precooled in the precooling exchanger and then subsequently further cooled in the plurality of heat exchangers by heat exchange with the first refrigeration cycle (hydrogen is first passed to the precooling heat exchanger as in claim 21 and then all of the heat exchangers);
and compressing the cycle gas in the compression member (refrigerant is compressed in 82), cooling the cycle gas in at least one of the plurality of heat exchangers (refrigerant is cooled in the heat exchangers to form stream 32, paragraph 47), expanding the cycle gas in the expansion member thereby reducing a temperature of the cycle gas (the refrigerant is expanded in 40, paragraph 47), and then warming the cycle gas in at least one of the plurality of heat exchangers (cooling cycle sends the refrigerant ultimately back to 82, paragraphs 47-49 which would warm it as seen in the figure).
With respect to claim 28, Decker as modified teaches wherein the intermittent stream of vaporization gas is not continuously circulated (as modified the boil-off gas is an intermittent stream which is only circulated when needed), and further comprising the step of circulating an auxiliary refrigerant through the precooling exchanger to provide cooling during periods when the intermittent stream of vaporization gas is not circulated (the refrigerant in the cycle 18 is always circulated, which would include when the boil-off gas is not).
With respect to claim 29, Decker as modified teaches wherein the precooling exchanger is configured to withstand a mean temperature difference of between 50 and 100 K between a first operational state wherein the intermittent stream is circulated in the precooling circuit and a second operational state wherein the intermittent stream is not circulated in the precooling circuit (this limitation does not further limit the claims in a way that specifically requires the operations to occur with this temperature, and as the material of the heat exchanger is stainless steel as shown in the rejection of claim 21, this limitation would be met as the only limitation limiting what the heat exchanger is required to that further limits the claims is the materials).
With respect to claim 30, Decker as modified teaches wherein the auxiliary refrigerant comprises liquid nitrogen (nitrogen form a liquid separator 94, paragraph 61 which would be liquid nitrogen as understood, paragraph 5 is refrigerant used in 18).
Claim(s) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Decker/Maunder/Paradowski/Babington and father in view of Mak (US PG Pub 20180003429), hereinafter referred to as Mak.
With respect to claim 25, Decker as modified teaches wherein the precooling circuit is in fluid communication with a head space of a liquefied gas tank (as modified boil-off gas which would come from the head of a tank is passed back through the heat exchangers as part of the precooling circuit).
Decker as modified does not teach that the tank which has the head space passing the boil-off gas is part of a liquefied gas tank truck.
Mak teaches that liquefied gas can be passed to a storage tank on a truck (paragraph 47) and the boil-off gas formed there (207) is what is used for heat exchanger against the feed gas (paragraph 47).
Therefore it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have based on the teaching of Mak to have when passing boil-off gas back through the heat exchangers of Decker for the source of the boil-off gas to have been a liquefied gas tank truck that is being fed with the liquefied hydrogen since it has been shown that combining prior art elements to yield predictable results is obvious whereby it is common knowledge that a tank truck can be used to transport a liquefied gas so that it can be brought to a desired location and that during this liquefaction process to have recovered boil-off gas from the tank of the truck (which would be from the headspace as that is where boil-off gas is present in a tank) in order to prevent over pressurization in the tank during loading and allow for usage and recovery or recycling of the boil-off gas.
Claim(s) 31 and 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Decker/Maunder/Paradowski/Babington and father in view of Newton (US Patent No. 2352282).
With respect to claim 31, Decker as modified does not teach detecting a parameter of the intermittent stream of vaporization gas and modulating the auxiliary refrigerant circuit in response to the detected parameter to maintain the precooling exchanger at a cryogenic temperature.
Newton teaches that when two heat exchange systems are used in parallel to provide cooling to the same component (air being cooled in duct 10) the water coil is used to provide initial cooling and that if the capacity of coil using water (30) is not sufficient a mechanical refrigeration system is activated (page 2). Further, Newton also teaches that if the temperature of the water being used for cooling is too high, the valve allowing flow of the water is not opened for cooling (page 2).
Therefore it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to have based on the teaching of Newton made a determination of the temperature of the vaporization gas of Decker (the boil-off gas) and if it was determined that the temperature was sufficient to provide precooling to have only operated the precooling using the boil-off gas and based on a determination that the temperature of the boil-off gas was too high to provide cooling to have activated the precooling cycle to provide the necessary precooling since it has been shown that combining prior art elements to yield predictable results is obvious whereby operating in this way would provide what would be common knowledge in the art of providing a energy and cost savings by only providing the necessary cooling and only providing active cooling from a cycle when the cooling from the boil-off gas is insufficient.
With respect to claim 32, Decker as modified teaches wherein the parameter of the intermittent stream is temperature (as modified the operation is based on a determination of the temperature of the vaporization gas).
Response to Arguments
Applicant's arguments filed 3/2/2026 have been fully considered but they are not persuasive.
Applicant’s arguments page 8, drawn to claim 21 are drawn to Decker, Maunder and Paradowski which is not the rejection that is made above or was made in the previous rejection which is made was made in view of Decker, Maunder Paradowski and Babington, and those arguments do not take into account Babington. Applicant argues that the claimed invention solves the opposite technical problem of Decker and Maunder that rely on stable and continuous refrigerant with the goal of eliminating fluctuation and that Paradowski does not teach the specific purpose as claimed of “to withstand thermal cycling by said intermittent stream of vaporization gas”.
Applicant is providing arguments without basis in the prior art of “eliminating fluctuation”. Further, Babington can be used to show the benefit of operating with fluctuation by providing the ability to increase the amount of refrigerant if needed or modulate the overall refrigeration provided which would provide both economical and efficiency benefits. As the claim require that the material is one such as stainless steel, the limitation of able to withstand the thermal cycling is met, because “configured to withstand thermal cycling” does not further limit the claims beyond the chosen material and because it is stated in the instant specification that stainless steel is capable of withstanding the operations as claimed. This is only the intended purpose of choosing the stainless steel, which applicant argues. In response to applicant's argument that the choice of material is for withstanding thermal cycling, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Applicant’s arguments in regard to claim 31 are persuasive; however, the additional reference of Newton showing that the limitations of claim 31 are obvious.
Applicant argues, pages 9-10 that the choice of materials was selected because they are “specifically to withstand the thermal cycling fatigue induced by the intermittent supply of the user vaporization gas” and because “Decker and Maunder are designed for stable, continuous flow, they do not face the technical problem” and as such one of ordinary skill in the art would not select “specific fatigue-resistant materials”. This is not persuasive.
Applicant’s argument acknowledge here, that the material option for the precooling heat exchanger inherently provide the limitations as claimed and such that is intended use of the material. Decker does not teach any specific material that the heat exchange is made of as such one having ordinary skill in the art would look to a reference such as Paradowski to consider what limitations would be obvious, which Paradowski clearly shows includes stainless steel. The specific choice of material for the heat exchanger may be so that the heat exchangers are “configured to withstand” the temperature fluctuations, the reasoning as to why these materials are chosen does result in the change the obviousness of the use of such materials. The choice of materials for heat exchangers is an old and well-known practice in cryogenics, as shown by Paradowski. Stainless steel is known, as shown by the uses in Paradowski to be able to withstand a range of temperatures including cryogenic temperatures as it is used in all the heat exchangers. As such, it would have been obvious have used it in the precooling heat exchanger (and other heat exchangers) of Decker because the teaching of Paradowski to use it in a range of heat exchangers is a teaching that is suitable for a cryogenic cooling system such as that of Decker. That Paradowski does not consider whether stainless steel would be capable of handling thermal cycling or intermittent changes and does not select it for this purpose does not render the teaching of Paradowski any less obvious. Applicant’s instant specification makes it clear that the requirement to handle the thermal cycling as claimed is present in the chosen material, which makes it an inherent property of the material and is an intended use of choosing that material and thus a showing of obviousness of the use of the material provides an inherency of the material able to handle the desired configuration.
Applicant’s arguments, page 10 in regard to claim 31 are persuasive; however, the additional reference of Newton showing that the limitations of claim 31 are obvious.
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., inherent fluctuation in boil-off gas are why it is intermittent) 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). There is no requirement in the claim language that prevents the fluctuation of the vaporization gas from being controlled which obviousness is shown above, although as stated by applicant, the mere presence of the boil-off gas is the presence of an inherent intermittent refrigerant. Further, while the specific choice of material for the heat exchanger may be so that the heat exchangers are “configured to withstand” the temperature fluctuations, the reasoning as to why these materials are chosen does result in the change the obviousness of the use of such materials. The choice of materials for heat exchangers is an old and well-known practice in cryogenics, as shown by Paradowski. Stainless steel is known, as shown by the uses in Paradowski to be able to withstand a range of temperatures including cryogenic temperatures as it is used in all the heat exchangers. As such, it would have been obvious have used it in the precooling heat exchanger (and other heat exchangers) of Decker because the teaching of Paradowski to use it in a range of heat exchangers is a teaching that is suitable for a cryogenic cooling system such as that of Decker. That Paradowski does not consider whether stainless steel would be capable of handling thermal cycling or intermittent changes and does not select it for this purpose does not render the teaching of Paradowski any less obvious. Applicant’s instant specification makes it clear that the requirement to handle the thermal cycling as claimed is present in the chosen material, which makes it an inherent property of the material and is an intended use of choosing that material and thus a showing of obviousness of the use of the material provides an inherency of the material able to handle the desired configuration.
Applicant argues that Babington is non-analogues art first because “Babington is in a Fundamentally Different Field of endeavor’ as the intention as claimed is to “cryogenic hydrogen liquefaction” and Babington is “directed to commercial building HVAC” and “Babington Is Not Reasonably Pertinent to the Problem Solved by the Invention” because the invention as claimed is “supply-side stability” whereas Babington is “demand-side HVAC load problem” this is not persuasive.
In response to applicant's argument that Babington is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, both the invention as claimed and the prior art are drawn to managing parallel refrigeration systems and can be considered analogous in that way. And further, while applicant’s invention may be focused on supply-side stability and the prior art allegedly is drawn to demand-side stability this does not make Babington not reasonably pertinent as the overall aspect of the invention is operation of parallel refrigeration systems.
Applicant further argues that the office action fails to articulate an explanation for the combination and relies on a conclusory generalization and fails to explain “why an artisan would seek to integrate a volatile, intermittent waste stream into a precious hydrogen loop--- other than using Applicant’s own disclosure as a roadmap”. This is not persuasive.
The reasoning can be seen from both Maunder and Babington. Maunder provides a clear teaching that boil-off gas can be used to supplement refrigeration, which one of ordinary skill in the art would recognize would reduce the refrigeration load required in the system. Babington as shown above clearly teaches that when using multiple cycles together for the same task, they can be modulated based on need and availability which provides the ability to modulate overall refrigeration so if an increase of refrigeration is needed this can be met. This can be seen both explicitly and implicitly from the teachings of Babington. Applicant further appears to be arguing impermissible hindsight. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case, the knowledge can be clearly seen to be provided by both Maunder and Babington.
Applicant argues page 12-13 that the propose modification would change the principle operation of Decker as Decker “operates on the principle of thermal stability and a ‘controlled precooling cycle’ to ensure a precise, predictable refrigeration environment” and the modification would result in intermittence and fluctuation. This is not persuasive.
Contrary to applicants’ arguments, this would not change the principle operation of Decker. The modification would result in Decker having the ability to modulate the amount of refrigeration provided which would ensure the proper amount of refrigeration was provided while also being capable of reducing the load on the refrigeration system to achieve this refrigeration if the boil-off gas was sufficient to provide the precooling necessary. As such, Decker would operate as it does and would still have a controlled precooling cycle with the additional control allowing for modulation if deemed necessary during operation.
Applicant argues that a person having ordinary skill in the art would “have no reasonable expectation that simply ‘adjusting the amount of boil-off gas’ using Babington’s HVAC logic would successfully maintain the delicate cryogenic balance of Decker’s system”. This is not persuasive.
In response to applicant's argument that there is no reasonable expectation of success, 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). One of ordinary skill in the art would consider there to be a reasonable expectation of success as teachings of Babington provide a teaching in refrigeration of how to maintain the desired reirrigation to a system regardless of changes that may occur and as such applying this teaching to the combined teaching of Maunder would result in one having ordinary skill in the art expecting there would be a reasonable expectation of success as claimed.
Applicant argues page 15 that the previous action “incorrectly asserts that Babington provides a clear showing of intermittency for the same purpose” as Babington is related to demand-side and the invention is relate to supply-side. This is not persuasive.
Babington as shown above clearly teaches that when using multiple cycles together for the same task, they can be modulated based on need and availability which provides the ability to modulate overall refrigeration so if an increase of refrigeration is needed this can be met. This is the same overall intention as the invention, which although it is for supply-side is ultimately about how to operate with two heat exchangers together, it is not until claim 31 that the specificity of supply side-based operation is claimed which limitation is shown obvious by Newton.
Applicant further argues that the inherency regarding stainless steel “dismisses the specific structural-functional relationship” of the claims because “it is not used in the cited art to withstand the severe thermal cycling stress” that is unique to the system as claimed. This is not persuasive.
While the specific choice of material for the heat exchanger may be so that the heat exchangers are “configured to withstand” the temperature fluctuations, the reasoning as to why these materials are chosen does result in the change the obviousness of the use of such materials. The choice of materials for heat exchangers is an old and well-known practice in cryogenics, as shown by Paradowski. Stainless steel is known, as shown by the uses in Paradowski to be able to withstand a range of temperatures including cryogenic temperatures as it is used in all the heat exchangers. As such, it would have been obvious have used it in the precooling heat exchanger (and other heat exchangers) of Decker because the teaching of Paradowski to use it in a range of heat exchangers is a teaching that is suitable for a cryogenic cooling system such as that of Decker. That Paradowski does not consider whether stainless steel would be capable of handling thermal cycling or intermittent changes and does not select it for this purpose does not render the teaching of Paradowski any less obvious. Applicant’s instant specification makes it clear that the requirement to handle the thermal cycling as claimed is present in the chosen material, which makes it an inherent property of the material and is an intended use of choosing that material and thus a showing of obviousness of the use of the material provides an inherency of the material able to handle the desired configuration.
Applicant’s remaining argument to claim 31 is moot, as no specific argument is made in regards to the prior art and Newton is provided in the rejection above for this teaching.
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.
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/BRIAN M KING/Primary Examiner, Art Unit 3763
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