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 .
Response to Amendments
The amendments filed on September 10, 2025 have been entered. Accordingly, claims 1-20 are canceled, claims 23-42 are new, wherein claims 21-42 are currently pending.
Claim Objections
The following claims are objected to because of informalities, wherein appropriate correction is required:
In claim 21: the recitation of “in the defrosting mode thermal, energy”, in line 12 of the claim, should be amended to –in the defrosting mode, thermal energy— (i.e., by changing the position of the comma), for grammatical purposes.
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 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.1 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.
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 § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 21, 23-26, 33-35 and 42 are rejected under 35 U.S.C. 102(a) (1) as being anticipated by Kasamatsu et al. (US 20190032979 A1), herein Kasamatsu.
As per claim 21, Kasamatsu discloses a method of operating a heat pump system (10, 10a, 10b) for controlling the internal temperature of a building (e.g., represented by 30), the system comprising: a compressor (11), a first heat exchanger (12), an expansion device (15) and a second heat exchanger (16) which are fluidly coupled together by a flow of refrigerant to define a refrigerant circuit (see arrows in at least figs. 1, 6 and 9), and a thermal energy storage means (17) which is thermally coupled to the refrigerant circuit to exchange thermal energy with the refrigerant (evident from at least ¶¶ 35, 52, etc.); wherein the heat pump system (10, etc.) is configured to operate in a normal heating mode (see white arrows) and in a defrosting mode (see dark arrows), wherein: in the normal heating mode (white arrows), thermal energy is transferred from the second heat exchanger (16) into the refrigerant (e.g., see ¶ 33) and transferred from the refrigerant by the first heat exchanger (12) to heat the building (e.g., see at least ¶ 26), and in the defrosting mode (dark arrows) thermal energy is transferred from the thermal energy storage means (17) into the refrigerant (see at least ¶ 60) and transferred from the refrigerant by the first heat exchanger (12) to heat the building (30) and by the second heat exchanger (16) to defrost the second heat exchanger (see ¶ 59); wherein the method comprises, when operating the heat pump system (10, etc.) in the defrosting mode (dark arrows), directing refrigerant exiting the first heat exchanger (12) to flow through the second heat exchanger (16) to cause residual heat in the refrigerant to defrost the second heat exchanger (evident from at least fig. 9).
As per claim 23, Kasamatsu discloses wherein the heat pump system (10, etc.) comprises a switching assembly (14) which is configured to switch between the normal heating and defrosting modes (see at least figs. 1, 6, 9 and ¶¶ 30-31), and wherein the switching assembly (14) is configured, when operating the heat pump system in the defrosting mode (dark arrows), to direct refrigerant exiting the first heat exchanger (12) to flow through the second heat exchanger (16) to cause residual heat in the refrigerant to defrost the second heat exchanger (as described in at least ¶¶ 23, 31, 59, etc.).
As per claim 24, Kasamatsu discloses wherein the switching assembly (14) is configured, when operating the heat pump system (10, etc.) in the defrosting mode (dark arrows), to direct refrigerant exiting the first heat exchanger through (12), sequentially, the second heat exchanger (16), the expansion device (15) and the compressor (11).
As per claim 25, Kasamatsu discloses wherein the thermal energy storage means (17) is coupled to the refrigerant circuit between (see at least figs. 1 and 9) the expansion device (15) and the compressor (11).
As per claim 26, Kasamatsu discloses wherein the switching assembly (14) comprises a four-way valve (see at least fig. 9) which, when operating the heat pump system in the defrosting mode (dark arrows), is configured to directly couple the first heat exchanger (12) to the second heat exchanger (16).
As per claim 33, Kasamatsu discloses wherein the thermal energy storage means (17) comprises a phase change material (see at least the last sentence of ¶ 60).
As per claim 34, Kasamatsu discloses wherein the phase change material is arranged in direct thermal contact with a conduit of the refrigerant circuit (evident from at least fig. 2).
As per claim 35, Kasamatsu discloses wherein the phase change material is thermally coupled to a conduit (any of the channels shown in fig. 2) of the refrigerant circuit by a circuit comprising a heat transfer fluid (e.g., the transition metal oxide inside 17).
As per claim 42, Kasamatsu discloses wherein the second heat exchanger (16) is thermally coupled to a heat source (e.g., air around 16), and wherein the first heat exchanger (12) is thermally coupled to a central heating system of the building (e.g., represented by 30).
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 36-40 are rejected under 35 U.S.C. 103 as being unpatentable over Kasamatsu (US 20190032979 A1) in view of Takayama et al. (US 20150176866 A1), herein Takayama.
As per claim 36, Kasamatsu may not appear to explicitly disclose wherein the refrigerant circuit comprises a high-pressure stage and a low-pressure stage which are fluidly coupled together by a phase separator, wherein the high-pressure stage comprises the first heat-exchanger and the low-pressure stage comprises the second heat exchanger.
On the other hand, Takayama, directed to a cascaded system, discloses wherein the refrigerant circuit (see fig. 1) comprises a high-pressure stage (20) and a low-pressure stage (10) which are fluidly coupled together by a phase separator (13), wherein the high-pressure stage (20) comprises the first heat-exchanger (22) and the low-pressure stage (10) comprises the second heat exchanger (15).
Furthermore, it has been held that some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention is a support for a conclusion of obviousness which is consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham, if the following findings can be articulated: (1) a finding that there was some teaching, suggestion, or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; (2) a finding that there was reasonable expectation of success; and (3) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.2
As per (1), Takayama discloses that having a two-stage system allows for performing cooling at very low temperatures (see ¶ 2). Moreover, the multi-stage configuration is capable of preventing an abnormal pressure rise in the refrigerant circuit during defrosting, while achieving improved reliability (¶ 9). As per (2), one of ordinary skill in the art would recognize that since the prior art of Takayama has successfully implemented its own teachings with regards to the high and low pressure stages, there would also be a reasonable expectation of success if said teachings were to be incorporated into the teachings of Kasamatsu. Said reasonable expectation of success is apparent from the fact that both Kasamatsu and Takayama are analogous to each other, as well as are analogous to the claimed invention, by virtue of being within the same field of endeavor (i.e., vapor-compression cycles). Thus, one of ordinary skill in the art would recognize that the teachings of the prior art are compatible and combinable, without yielding unpredictable results. As per (3), one of ordinary skill in the art, when considering the aforementioned evidence, would comprehend that the prior art teachings of Kasamatsu may be significantly improved by incorporating the prior art teachings of Takayama, since the teachings thereof serve to complement the teachings of Kasamatsu by virtue of suggesting the ability to cool to lower temperatures while avoiding abnormal pressures, and achieving improved reliability.
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 Kasamatsu and to have modified them with the teachings of Takayama, by having a high-pressure stage and a low-pressure stage which are fluidly coupled together by a phase separator, wherein the high-pressure stage comprises the first heat-exchanger and the low-pressure stage comprises the second heat- exchanger, in order to achieve lower temperatures, avoid abnormal pressures, and improve reliability, as similarly suggested by Takayama, without yielding unpredictable results.
As per claim 37, Kasamatsu as modified discloses wherein the thermal energy storage means (17 of Kasamatsu) is thermally coupled to the phase separator (as evidenced by the structural configuration of 13 of Takayama).
As per claim 38, Kasamatsu as modified discloses wherein the compressor defines a compressor assembly (see at least fig. 1 of Takayama) comprising a first compressor (21 of Takayama) fluidly coupled to the high-pressure stage (20 of Takayama), and a second compressor (11 of Takayama) fluidly coupled to the lower-pressure stage (10 of Takayama).
As per claim 39, Kasamatsu as modified discloses wherein the compressor comprises a vapour injection compressor (11 of Takayama) which is fluidly coupled (via 30 or 13 of Takayama) to both the high-pressure (20 of Takayama) and low-pressure stages (10 of Takayama) of the refrigerant circuit (see at least fig. 1 of Takayama).
As per claim 40, Kasamatsu as modified discloses wherein the expansion device defines an expansion device assembly (see fig. 1 of Takayama) comprising a first expansion device (23 of Takayama) fluidly coupled to the high-pressure stage (20 of Takayama), and a second expansion device (14 of Takayama) fluidly coupled to the lower-pressure stage (10 of Takayama).
Allowable Subject Matter
Claim 22 is allowed. Claims 27-32 and 41 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all3 of the limitations of the base claim and any intervening claims. The prior art, when taken as a whole, does not appear to reasonably anticipate nor render prima facie obvious the claimed invention as currently recited in the aforementioned claims.
Response to Amendments
Applicant's arguments filed on September 10, 2025 (“the Remarks”) have been fully considered but they are not persuasive for the following reasons.
Regarding the prior art rejection of claim 21, Applicant appears to allege that Kasamatsu “cannot be used to teach or suggest” the claimed defrosting mode functionalities. Applicant argues that “Kasamatsu discloses two embodiments that can be considered relevant to the present application” (emphasis added), namely, the first and second embodiments. They then argue that in the defrosting mode of the first embodiment, Kasamatsu “does not operate to heat the building”.4 Applicant asserts that in the first embodiment of Kasamatsu, the heat exchanger (12) is bypassed and not used. Likewise, they also argue that the second embodiment only differs from the first in that an auxiliary heat storage member (17a) is provided, wherein said member is inside the internal heat exchanger. Although they acknowledge that the building is being heated in the second embodiment, they allege that the auxiliary member is what is providing the heat to the building, rather than the first heat exchanger. Applicant then concludes that “the significance of this difference between pending claim 21 and the First and Second Embodiments of Kasamatsu is explained in the specification in terms of improved energy efficiency”, and that a person of ordinary skill in the art would have no teaching or motivation to modify the prior art to arrive at the claimed invention.5 However, these arguments are considered unpersuasive for the following reasons.
First, it should be noted that Kasamatsu discloses more than just two embodiments. For instance, Figure 9 of Kasamatsu discloses an additional embodiment (i.e., a fourth embodiment), which is relevant to applicant’s claims. In this embodiment, refrigerant is sent to the first heat exchanger (12) during defrosting (see solid arrows in fig. 9 and ¶ 123). Applicant is reminded that a generic disclosure will anticipate a claimed species when the species can be “at once envisaged” from the disclosure.6
Second, assuming arguendo, it should be noted that the claimed defrosting mode simply requires that “thermal energy is transferred from the […] storage means into the refrigerant and transferred from the refrigerant by the first heat exchanger to heat the building” (emphasis added), in addition to defrosting the second heat exchanger, per se. Since applicant does not seem to dispute that the second heat exchanger is being defrosted in the second embodiment of Kasamatsu, the focus will be on the functioning of the first heat exchanger (12). In this case, Kasamatsu explicitly teaches that “the heat storage member 17a is disposed to store heat contained in the refrigerant that circulates through the interior radiator 12 during the normal operation” (¶ 67; emphasis added) and that the system “can heat the ventilation air to be blown from the blower 12a into the interior space by using heat stored in the heating heat storage member 17a as the heat source during the defrosting operation. Therefore, even during the defrosting operation, the air-heating of the interior space can be performed” (¶ 70; emphasis added).
In other words, the heat storage member (17a) is positioned such that thermal energy from the refrigerant of the first heat exchanger (12) is transferred thereto during the normal mode, and then such energy is eventually transferred back into the air which heats the building during the defrosting mode. As shown in fig. 5, the heat storage member (17a) is positioned inside the first heat exchanger (12). The storage member (17a) is disclosed as a thin plate shape that “may be fixed to the tubes” that carry the refrigerant (¶ 149). Moreover, even though the defrosting mode does not provide an active flow of refrigerant through the first heat exchanger (12), one of ordinary skill in the art should recognize that said heat exchanger would still contain at least some stagnant refrigerant therein. One of ordinary skill in the art would thus recognize that during the defrosting operation, the heat stored inside the member (17a) would inevitably have to be transferred through the first heat exchanger (12) (i.e., and through any refrigerant stored therein) prior to being transferred to the air to heat the building. When releasing the stored heat, the tubes (and by proxy, any refrigerant inside the tubes) will be heated, in addition to the air surrounding the tubes. In other words, it is presumed that the heat will not bypass the tubes nor the refrigerant, and will instead traverse through them while heating the air during the defrosting mode. Since the claim language does not require a constant flow of refrigerant, rather simply that the energy be transferred through the refrigerant, then the claim language is deemed to be anticipated by the second embodiment, given the principles of thermodynamics. Therefore, Applicant’s arguments are considered unpersuasive.
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 MIGUEL A DIAZ whose telephone number is (313)446-6587. The examiner can normally be reached Monday - Friday: 9:00 AM - 5:00 PM Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jianying C. 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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/MIGUEL A DIAZ/Primary Examiner, Art Unit 3763
1 The specification appears to describe the structure(s) of the “thermal energy storage means” in at least ¶¶ 92, 96-99 of the printed publication: US 20230366599 A1.
2 See MPEP § 2143.
3 Disclaimer: failure to include all the intervening limitations will result in a different claim scope, which may require a new grounds of rejection prior to a final determination of allowability.
4 See page 9 of the Remarks.
5 See page 10, id.
6 MPEP § 2131.02 (III).