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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/20/2025 has been entered.
Specification
The incorporation of essential material in the specification by reference to an unpublished U.S. application, foreign application or patent, or to a publication is improper. Applicant is required to amend the disclosure to include the material incorporated by reference, if the material is relied upon to overcome any objection, rejection, or other requirement imposed by the Office. The amendment must be accompanied by a statement executed by the applicant, or a practitioner representing the applicant, stating that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter. 37 CFR 1.57(g).
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 ““wherein the secondary inlet manifold and the secondary outlet manifold of the first circuit respectively open into a main inlet manifold and a main outlet manifold, and wherein the counter-current heat exchanger further comprising a main corresponding manifold among the main inlet manifold and the main outlet manifold comprises a primary duct and at least two auxiliary ducts meeting in the primary duct, each of the secondary inlet manifold of the first circuit and the second circuit and/or each of the secondary outlet manifold of the first circuit and the second circuit being connected to an auxiliary duct” “(claim 1) 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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. The recitation of “wherein the secondary inlet manifold and the secondary outlet manifold of the first circuit respectively open into a main inlet manifold and a main outlet manifold, and wherein the counter-current heat exchanger further comprising a main corresponding manifold among the main inlet manifold and the main outlet manifold comprises a primary duct and at least two auxiliary ducts meeting in the primary duct, each of the secondary inlet manifold of the first circuit and the second circuit and/or each of the secondary outlet manifold of the first circuit and the second circuit being connected to an auxiliary duct” (claim 1 newly added scope) is considered to be new matter. The originally filed specification, claims, and drawings have support for from the specification (Main inlet manifold, Primary inlet duct, Auxiliary inlet ducts, Main outlet manifold, Primary outlet duct, Auxiliary outlet ducts, Second circuit secondary inlet/outlet manifolds, First circuit secondary inlet/outlet manifolds) , but do not teach every single aspect as previously mentioned in the specification in combination with the “the counter-current heat exchanger further comprising a main corresponding manifold among the main inlet manifold and the main outlet manifold comprises a primary duct and at least two auxiliary ducts meeting in the primary duct, each of the secondary inlet manifold of the first circuit and the second circuit and/or each of the secondary outlet manifold of the first circuit and the second circuit being connected to an auxiliary duct” in combination with all of the manifolds in claim 4. It is additionally noted that the specification does not provide support for the newly amended scope in detail how “and wherein the counter-current heat exchanger further comprising a main corresponding manifold among the main inlet manifold and the main outlet manifold comprises a primary duct and at least two auxiliary ducts meeting in the primary duct”, a definition, how they are sequenced with the manifolds, Primary inlet/outlet ducts and/or Auxiliary inlet/outlet ducts, or labelled in the drawings. As such, the limitations are deemed to be new matter.
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, 4-12 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 recites the limitation of “wherein the secondary inlet manifold and the secondary outlet manifold of the first circuit respectively open into a main inlet manifold and a main outlet manifold, and wherein the counter-current heat exchanger further comprising a main corresponding manifold among the main inlet manifold and the main outlet manifold comprises a primary duct and at least two auxiliary ducts meeting in the primary duct, each of the secondary inlet manifold of the first circuit and the second circuit and/or each of the secondary outlet manifold of the first circuit and the second circuit being connected to an auxiliary duct” (claim 1 newly added scope) The specification, claims, and drawings detail the (Main inlet manifold, Primary inlet duct, Auxiliary inlet ducts, Main outlet manifold, Primary outlet duct, Auxiliary outlet ducts, Second circuit secondary inlet/outlet manifolds, First circuit secondary inlet/outlet manifolds) , but do not teach every single aspect as previously mentioned in the specification in combination with the “the counter-current heat exchanger further comprising a main corresponding manifold among the main inlet manifold and the main outlet manifold comprises a primary duct and at least two auxiliary ducts meeting in the primary duct, each of the secondary inlet manifold of the first circuit and the second circuit and/or each of the secondary outlet manifold of the first circuit and the second circuit being connected to an auxiliary duct” in combination with all of the manifolds in claim 4. It is additionally noted that the specification does not provide support for the newly amended scope in detail how “and wherein the counter-current heat exchanger further comprising a main corresponding manifold among the main inlet manifold and the main outlet manifold comprises a primary duct and at least two auxiliary ducts meeting in the primary duct”, a definition, how they are sequenced with the manifolds, Primary inlet/outlet ducts and/or Auxiliary inlet/outlet ducts, or labelled in the drawings. As such, the limitations are deemed to be new matter. Therefore, one of ordinary skill in the art would not be able to ascertain what ducts/manifold combination is actually being claimed. Does thew “a main corresponding manifold among the main inlet manifold and the main outlet manifold” require three additional manifolds in between the “the first circuit respectively open into a main inlet manifold and a main outlet manifold”? Since the metes and bounds of the limitation cannot be ascertained, the limitation is indefinite and the claim is rendered indefinite.
Claim 1 recites the limitation of “each of the secondary inlet manifold of the first circuit and the second circuit and/or each of the secondary outlet manifold of the first circuit and the second circuit being connected to an auxiliary duct”, wherein it is unclear what “an auxiliary duct” is referring to since the term “at least two auxiliary ducts” has already been recited in the claim. Is the term “an auxiliary duct” requiring that there is at least a third “an auxiliary duct” or is the term referring back to the previously recited term? The claim appear to use “first” and “second” frequently to establish multiplicity, yet fails to do so here. Since the metes and bounds of the limitation cannot be ascertained, the limitation is indefinite , the claim is rendered indefinite and determined to be an antecedent basis issue. For examination purposes, the phrase has been interpreted as -- each of the secondary inlet manifold of the first circuit and the second circuit and/or each of the secondary outlet manifold of the first circuit and the second circuit being connected to one of the at least two auxiliary ducts -- for clarity.
Claim 11 recites the limitation of “ wherein the secondary inlet manifold and the secondary outlet manifold of the first circuit open onto an outer same face of the exchanger”, wherein it is unclear what “an outer same face ” is referring to since the term “ ” has already been recited in the claim 1 from which the claim depends. Is the term “an outer same face” requiring that there is at least a second “face” or is the term referring back to the previously recited term? The specification and drawings appear to support a single outer face . Since the metes and bounds of the limitation cannot be ascertained, the limitation is indefinite , the claim is rendered indefinite and determined to be an antecedent basis issue. For examination purposes, the phrase has been interpreted as -- wherein the secondary inlet manifold and the secondary outlet manifold of the first circuit open onto the same face of the exchanger, wherein the same face of the exchanger is an outer face-- for clarity.
Claim 12 recites the limitation of “ wherein the secondary inlet manifold and the secondary outlet manifold of the first circuit open to an outside of the exchanger onto an outer same face of the exchanger”, wherein it is unclear what “an outer same face ” is referring to since the term “ ” has already been recited in the claim 1 from which the claim depends. Is the term “an outer same face” requiring that there is at least a second “face” or is the term referring back to the previously recited term? The specification and drawings appear to support a single outer face . Since the metes and bounds of the limitation cannot be ascertained, the limitation is indefinite , the claim is rendered indefinite and determined to be an antecedent basis issue. For examination purposes, the phrase has been interpreted as -- wherein the secondary inlet manifold and the secondary outlet manifold of the first circuit open to an outside of the exchanger onto the same face of the exchanger, wherein the same face of the exchanger is an outer face -- for clarity.
The remaining claims are rejected based on their dependency from a claim that has been rejected.
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, 5, 11-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Weel US 20080073059 A1.
Re claim 1, Weel teach a counter-current heat exchanger for a turbomachine comprising: a first and second circuit, the first and the second circuit being respectively configured to receive a first gas flow and a second gas flow, each of the first and second circuit including a secondary inlet manifold, an exchanging part and a secondary outlet manifold (second circuit, 20, 21), and wherein: the exchanging parts of the first circuit and of the second circuit are delimited by exchange walls (figs 5-6, noting walls naturally making up a heat exchange to perform heat exchange, and the part(s) is(are) considered the sections/portions where heat exchange occurs as the claim remains broad) configured to direct the first and the second gas flow along a first direction (left to right , fig 6);
and the secondary inlet manifold and the secondary outlet manifold (10, 11) of the first circuit extend along a second direction substantially perpendicular to the first direction (fig 5), and open onto a same face (outer exterior shell of the heat exchanger, figs; noting that according to the Merriam-Webster dictionary, the plain meaning of ‘face’ is : surface) of the exchanger,
wherein the secondary inlet manifold and the secondary outlet manifold of the first circuit respectively open into a main inlet manifold and a main outlet manifold (annotated fig),
and wherein the counter-current heat exchanger further comprising a main corresponding manifold among the main inlet manifold and the main outlet manifold comprises a primary duct and at least two auxiliary ducts meeting in the primary duct (annotated fig),
each of the secondary inlet manifold of the first circuit and the second circuit and/or each of the secondary outlet manifold of the first circuit and the second circuit being connected to an auxiliary duct (noting all structures are connected in the final unitary construction/assembly directly or indirectly via interjoining parts/sections).
For clarity, the recitation “…for a turbomachine …” has been considered a recitation of intended use. It has been held that the recitation with respect to the matter in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. See MPEP 2114. In the instant case, the prior art meets all of the structural limitations, and is therefore capable of performing the claimed recitations set forth above.
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Re claim 5, Weel teach wherein the secondary inlet manifold and the secondary outlet manifold of the second circuit are respectively configured so that the directions of flow of the second gas flow at the inlet and the outlet of the second circuit are substantially along the first direction (figs).
Additionally noting that for clarity, the recitation “the directions of flow of the second gas flow at the inlet and the outlet of the second circuit are substantially along the first direction” has been considered a recitation of intended use. It has been held that the recitation with respect to the matter in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. See MPEP 2114. In the instant case, the prior art meets all of the structural limitations, and is therefore capable of performing the claimed recitations set forth above. Furthermore, the examiner notes that the inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims. See MPEP 2115. Finally, the intended fluid used in the apparatus to perform the intended function does not affect the patentability of the apparatus, since the apparatus is capable of using said intended fluid. See MPEP 2144.07.
Re claim 11, Weel teach wherein the secondary inlet manifold and the secondary outlet manifold of the first circuit open onto an outer same face of the exchanger (figs noting the housing is on outer housing with an outer surface).
Re claim 12, Weel teach wherein the secondary inlet manifold and the secondary outlet manifold of the first circuit open to an outside of the exchanger onto an outer same face of the exchanger (figs noting the housing is on outer housing with an outer surface)..
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) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weel.
Re claim 4, Weel teach all the claim limitations as stated above. Weel fail to explicitly teach a plurality.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to include wherein the first circuit comprises a plurality of secondary inlet manifolds and a plurality of secondary outlet manifolds, configured such that at least one secondary inlet manifold communicates with at least two secondary outlet manifolds to advantageously allow for adding more serpentine fluid flow sections A, B C etc to allow for more heat exchange passes since it has been held that a mere duplication of the essential working parts involves only routine skill in the art. See MPEP 2144.04, section VI, part B.
Claim(s) 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weel in view of MARTINEZ EP 3486595 A1.
Re claim 8, MARTINEZ teach a turbomachine (fig 1) but fail to teach a heat exchanger as claimed in claim 1.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to include to the heat exchanger of claim 1 as taught by Weel, as modified by MARTINEZ, in order to advantageously allow for heat exchange as required by MARTINEZ; noting it also would have been obvious to try the heat exchanger of claim 1 as taught by Weel , as modified by MARTINEZ, in order to advantageously allow for heat exchange in the turbomachine.
Re claim 9, MARTINEZ, as modified, teach wherein the first circuit is connected (fig 1 noting as assembled all the components are connected in an assembly, see 140) to a compressor (124) and the second circuit is connected to a turbine (128, 130).
Re claim 10, Weel , as modified, teach the heat exchanger of claim 1.
The recitation of “at least one powder bed additive manufacturing step” is considered to be a product-by-process limitation. In product-by-process claims, “once a product appearing to be substantially identical is found and a 35 U.S.C. 102/103 rejection [is] made, the burden shifts to the applicant to show an unobvious difference.” MPEP 2113. This rejection under 35 U.S.C. 102/103 is proper because the “patentability of a product does not depend on its method of production.” It is noted that MARTINEZ teach at least one powder bed additive manufacturing step nevertheless.
Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weel in view of Fuller US 11,098,954 B2.
Re claim 6, Weel fail to explicitly teach angles.
Fuller teach wherein at least one of the secondary inlet manifold and the secondary outlet manifold (120, 118) of the second circuit has a V-shaped section in a section along a plane orthogonal to the second direction (fig 19) to alter inlet manifold angle.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to include angles as taught by Fuller in the Weel invention in order to advantageously allow for different architecture, housing fitting connections and intended use applications.
Re claim 7, Fuller teach wherein walls of the V-shaped section have an angle with the first direction between 45 and 30° (fig 19) to alter inlet manifold angle.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to include angles as taught by Fuller in the Weel, as modified, invention in order to advantageously allow for different architecture, housing fitting connections and intended use applications.
Response to Arguments
Applicant’s arguments, see reply, filed 11/20/2025, with respect to the 112 issues of claim 1 and 7 have been fully considered and are persuasive. The 112 issues of claim 1 and 7 have been withdrawn. 112 issues in claim 3 still remain along with the new scope of the claim.
Applicant's arguments filed 11/20/2025 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues the claims dependent on the independent claim(s) are allowable based upon their dependence from an independent claim. Examiner respectfully disagrees. The arguments with respect to claim(s) 1 have been addressed above. Thus, the rejections are proper and remain.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 11,655,745 B2, US 2014/0373517 Al.
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/GORDON A JONES/ Examiner, Art Unit 3763
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