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 .
The claims received 8/21/2026 are entered. Claims 3-6 and 10-15 are cancelled.
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.
The term “expansion mechanism” of is not interpreted under §112f as the term is understood in the art to cover a broad class of structures that takes its name from the function performed, i.e. expansion. A term is not required to denote a specific structure of precise physical structure in order to avoid application of 35 U.S.C. §112(f). MPEP 2181(I)(A).
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.
Claims 1-2 and 7-9 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 and 2 each recite “after being separated from the refrigerant by the separator, the adsorbent merges with the refrigerant decompressed by the expansion mechanism”. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011). It is unclear whether infringement … occurs when one creates a system that allows the step to occur, or whether infringement occurs when the step actually occurs. MPEP 2173.05(p) II.
The examiner notes in other instances the claims use phrases such as “that” and “in which” to distinguish that the element is configured to perform some function rather than setting forth the function.
Claims 1 and 2 recite “has not yet been” however the refrigeration cycle apparatus is a cycle in a closed loop form. The refrigerant has previously been compressed by the repeating closed loop cycle thus the phrase is not being used consistent with its accepted meaning. The examiner suggests using phrases such as “upstream” and “downstream” to denote relative position within the cycle.
Claims depending from a rejected claim are rejected due to their dependency.
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.
Claim(s) 1-2 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Feldman (WO96/35079).
Regarding claims 1 and 2, Feldman discloses a refrigeration cycle apparatus comprising:
a first unit (170 of figure 9) configuring a refrigeration cycle in which a refrigerant circulates; and
an adsorbent (“hydride particles” discussed throughout the disclosure) that adsorbs and desorbs the refrigerant circulating in the first unit, wherein
the adsorbent adsorbs and desorbs the refrigerant in accordance with a change in a pressure of the refrigerant circulating in the first unit (high and low pressure units shown in the figures),
the adsorbent is powder (abstract, 25:4, 28:27 all state the hydride is in powder form),
a portion of the first unit is configured to have the adsorbent circulate together with the refrigerant (page 21, line 25 to page 23, line 2),
the first unit includes:
a compressor (175) configured to compress the refrigerant,
an expansion mechanism (180) configured to decompress the refrigerant,
a first heat exchanger (174) in which the refrigerant compressed by the compressor is adsorbed by the adsorbent, and
a second heat exchanger (173) in which the refrigerant decompressed by the expansion mechanism (180) is desorbed from the adsorbent,
a high-pressure region (“HIGH PRESS.” Labeled in figure 9) in which the refrigerant that has been compressed by the compressor (175) and that has not yet been decompressed by the expansion mechanism (180) flows, and
a low-pressure region (“LOW PRESS.” Labeled in figure 9) in which the refrigerant that has been decompressed by the expansion mechanism (180) and that has not yet been compressed by the compressor (175) flows, and
the first unit is configured such that the adsorbent adsorbs the refrigerant in the high pressure region (“the high pressure reactor 174 becomes hot as hydrogen is absorbed into the hydride and heat of absorption is released” 22:6-8, note that hydrogen and hydride are understood to pair adsorbently) and desorbs the refrigerant in the low-pressure region (“the low pressure reactor 173 becomes cold as the hydrogen is desorbed and refrigerant is evaporated” 22:12-13),
the first unit further includes a separator (identified in annotated figure below) configured to separate the refrigerant circulating in the first unit and the adsorbent circulating in the first unit from each other,
after being separated from the refrigerant by the separator, the adsorbent merges with the refrigerant decompressed by the expansion mechanism (merging area identified in annotated figure below, also note the closed loop form of the system where merging therefor occurs after separation).
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Regarding claim 7, Feldman the refrigeration cycle apparatus according to claim 6, wherein
the separator (identified in annotated figure above) separates the refrigerant in the low-pressure region and the adsorbent from each other, and
the refrigeration cycle apparatus further comprises a pressurizer (176) that pressurizes the adsorbent separated from the refrigerant by the separator.
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.
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) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Feldman (WO96/35079).
Regarding claim 9, Feldman discloses the refrigeration cycle apparatus according to claim 1, but lacks centrifugal separation.
In the previous office action on the merits the Examiner took Official Notice that centrifugal separation is old and well known. In his subsequent reply to this office action, the applicant did not traverse Examiner’s assertion of Official Notice with regard to these elements. Therefore the Official Notice statements by the Examiner regarding these elements are now taken as admitted prior art by Applicant. See MPEP §2144.03(C).
It would have been obvious to one of ordinary skill in the art to have provided Feldman with centrifugal separation in order to enhance separation of the fluid.
Allowable Subject Matter
Claim 8 was previously objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. As well as addressing the issues raised under §112(b) above.
The following is a statement of reasons for the indication of allowable subject matter: Claim 8 describes that the separator separates refrigerant and adsorbent from each other in the high pressure region and a depressurizer that depressurizes the adsorbent. This is in addition to the expansion mechanism of claim 1.
While it is known to place a depressurizer and expansion mechanism in parallel, e.g. Yamanaka et al US 6,321,564 figure 13, the instant claim provides that the depressurizer depressurizes the adsorbent while the expansion mechanism decompresses refrigerant and further includes a separator to separate the adsorbent from the refrigerant. Moreover this is in the high pressure region where the adsorbent has adsorbed the refrigerant.
Response to Arguments
Applicant’s arguments have been fully considered but are not persuasive.
At pages 7-8 applicant argues the amended claim against the Feldman reference. First scope of the claim is unclear for the reasons set forth above under §112(b). Second, given the closed loop nature of the system all steps/elements occur before and after all others in the system.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lugosch (US 9,612,043) – compression-adsorption heat cycle
Spauschus et al (US 6,073,454) – reduced pressure CO2 refrigeration system
Scaringe et al (US 5,826,436) – additive for improving vapor compression cycle
Bergmann et al (US 4,967,566) solution cycle
Mucic (US 4,918,945) binary solution circuit
Radermacher (US 4,724,679) non-azeotropic working fluid mixtures
Baker (US 2,307,380) solution cycle
Tanaka et al (US 2024/0019178) solution cycle
Samkhan (US 10,712,057) – centrifugal separation
Satheesh “Performance investigations of a single-stage metal hydride heat pump”
Lambert et al “A review of Solid-Vapor Adsorption heat pumps”
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 CHRISTOPHER R ZERPHEY whose telephone number is (571)272-5965. The examiner can normally be reached M-F 7:00-4:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jianying Atkisson can be reached at 5712707740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER R ZERPHEY/Primary Examiner, Art Unit 3799
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