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 .
Election/Restrictions
Claims 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method of operating a TRS, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/17/2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 02/28/2023 and 09/11/2023 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the power source providing both (i) the exhaust gas and (ii) the source of at least one of heat and fluid; wherein the exhaust gas and the source of at least one of heat and fluid are coupled together as claimed in claim 5 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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:
Power source in at least claim 1; electric heating device in at least claim 9; and coalescing feature in at least claim 11.
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.
Power source is interpreted to cover at least one fuel cell as per para [0039] of applicant specification; and equivalent thereof.
Electric heating device is interpreted to cover an electric resistance heater as per para [0050] of applicant specification; and equivalent thereof.
Coalescing feature is interpreted to cover one or more vanes as per para [0051] of applicant specification; and equivalent 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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 1-12 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 calls for the limitation “the exhaust gas at the outlet of the power source being supersaturated” in line 5; which limitation recites both an apparatus and the method steps of using the apparatus. The limitation requires that gas exhausted be supersaturated; which recitation is a method step of using the apparatus. It is unclear whether infringement occurs when one creates the apparatus or when one actually uses the apparatus (see MPEP 2173.05(p), In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011). Appropriate correction is required.
A similar issue is found in lines 9-10 of claim 1 with the recitation “the exhaust gas at a location downstream from the source is not supersaturated”. Appropriate correction is required.
A similar issue is also found in lines 3-4 of claim 10 with the recitation “wherein a temperature of the air is less than a temperature of the exhaust gas”. Appropriate correction is required.
Claim 5 calls for the limitation “wherein the source of at least one of heat and fluid is waste heat from the power source”; which limitation is indefinite as it is unclear as to how the power source provides both (i) the exhaust gas and (ii) the source of at least one of heat and fluid coupled together. The specification does not describe how such claimed limitation is achieved. Accordingly, one of ordinary skill in the art would not reasonably appraise the scope of the claimed invention. Appropriate advisory is required.
Claim(s) 2-12 is/are indefinite for their dependency on an indefinite base claim.
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 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.
Claim(s) 1 and 9-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Steele (US 20150007552 A1).
Regarding claim 1:
Steele discloses a transport refrigeration system #10 comprising:
a refrigeration unit #20 including a plurality of components fluidly coupled to form a closed loop refrigeration circuit (see at least Fig. 2);
a power source #32 operable to provide electrical power to the refrigeration unit ([0023]), wherein an exhaust gas generated by the power source is provided at an outlet of the power source (via #46), the exhaust gas at the outlet of the power source being supersaturated (this limitation constitutes an intended use limitation that does not further limit the structure of the claimed invention. It has been held that “apparatus claims cover what a device is, not what a device does. A claim containing a “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” if the prior art apparatus teaches all the structural limitations of the claim. See MPEP 2114/Il) and the outlet of the power source being fluidly coupled to a transport refrigeration system outlet (outlet of #48; Fig. 4); and
a source of at least one of heat and fluid (source of heat from heater #62), the source being coupled with the exhaust gas at a location upstream from the outlet of the transport refrigeration system (Fig. 4), wherein the exhaust gas at a location downstream from the source is not supersaturated (See italicized discussion above with respect to intended use limitations; and MPEP 2114/Il).
Regarding claims 5-8:
Where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
Regarding claim 9:
Steele further discloses wherein the source of at least one of heat and fluid includes an electric heating device ([0028]).
Regarding claim 10:
Steele further discloses wherein an outlet conduit #48 extends from the outlet of the power source, and the source of at least one of heat and fluid includes a flow of air about an exterior of the outlet conduit (inherently present via at least conduction and radiation), wherein a temperature of the air is less than a temperature of the exhaust gas (See italicized discussion above with respect to intended use limitations; and MPEP 2114/Il).
Regarding claim 11:
Steele further discloses at least one coalescing feature arranged in fluid communication with the outlet of the power source #50 (Fig. 4, [0028]).
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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) 2-3 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Steele (US 20150007552 A1) in view of Uehara (US 20080152976 A1).
Regarding claim 2:
Steele discloses all the limitations, except for wherein the source of at least one of heat and fluid is waste heat from the refrigeration unit.
In the same field of endeavor, Uehara teaches using as waste heat (from heat exchanger #44; [0052] & [0054]) from a refrigeration unit (Fig. 1) as source of heat and fluid coupled to an exhaust gas #14 from a power source #10.
Thus, it would have been obvious for one of ordinary skills in the art before the effective filing date to have provided the apparatus of Steele with the source of at least one of heat and fluid being waste heat from the refrigeration unit; in a similar manner as taught by Uehara.
One of ordinary skills would have recognized that doing so would have provided selective desired heat exchange between the exhaust gas and the refrigerant so as to improve the efficiency of operations of the system as suggested by Uehara ([0078]).
Regarding claim 3:
Steele as modified discloses all the limitations.
Steele further discloses wherein the plurality of components fluidly coupled to form the closed loop refrigeration circuit includes a condenser #24.
Steele as modified discloses wherein the waste heat is ambient air output from the condenser (see rejection of claim 2: the condenser of Steele is modified to provide heat exchange to the exhaust gas. By virtue of convection and radiation; ambient air surrounding the condenser also constitute waste heat in thermal exchange with the exhaust gas.
Regarding claim 12:
Steele as modified discloses all the limitations, but does not specifically disclose wherein the power source includes at least one fuel cell.
Nonetheless, the usage of a fuel engine as power source is well known in the art. See Uehara fuel cell stack #10, Fig. 1, [0024].
Thus, it would have been obvious for one of ordinary skills in the art before the effective filing date to have provided the apparatus of Steele with the power source including at least one fuel cell; in a similar manner as taught by Uehara.
One of ordinary skills would have recognized that doing so would have provided zero tailpipe emissions, quieter operation, higher energy efficiency, and fewer moving parts.
Allowable Subject Matter
Claim 4 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
There appears to be no teaching in the prior art of record that would, reasonably and absent impermissible hindsight, motivate one of ordinary skill in the art to modify the teachings of the prior art of record to provide an outlet conduit extending from the outlet of the power source, wherein a flow of the ambient air is arranged in fluid communication with the outlet conduit such that the ambient air is mixed with the exhaust gas at a mixing point, the mixing point being located upstream from the transport refrigeration system outlet.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Chopko (US 10823476 B2), Springer (US 20170211456 A1), and Wessells (US 6755041 B2).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIONEL W NOUKETCHA whose telephone number is (571)272-8438. The examiner can normally be reached on Mon - Fri: 08:00 AM - 04:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frantz Jules can be reached on 571-272-6681. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIONEL NOUKETCHA/Primary Examiner, Art Unit 3763
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