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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 9/13/2023 and 2/12/2026 have been considered by the examiner.
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 2, 8, 10, and 11 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.
Regarding claims 2, 8 10, and 11, the limitations beginning with the phrase “preferably” render the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
Claims 1-3, 8, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Wedam et al. (US 2017/0241665) in view of Zhou et al. (US 2004/0060925).
Regarding claim 1, Wedam discloses an electric heater (Fig. 6, “device 400 for heating continuous flow fluids” [0071]), comprising
a metal body (Fig. 6, body 6’’ (corresponds to “conductive metal body 6” [0066]). ;
at least one electric heating element, in particular adapted to generate heat when it is crossed by an electric current, arranged in the metal body (Fig. 6, “two heating elements 2e, 2f” [0071]; the heating elements are described as resistors, indicating that they generate heat when crossed by an electric current; “at least one sheathed resistor (2, 2c, 2d, 2e, 2f)” [Abstract]);
a tube for the passage of a liquid to be heated, arranged in the metal body (Fig. 6, tube / “conduit 3’’ “ [0071]; “steel conduit (3, 3′, 3″) through which the fluid to be heated flows” [Abstract]).
In addition to structural limitations, claim 1 recites functional limitations drawn toward the intended use or manner of operating the claimed apparatus. The functional limitations are: “for a machine for preparing hot beverages.” When the cited prior art teaches all of the positively recited structure of the claimed apparatus, it will be held that the prior art apparatus is capable of performing all of the claimed functional limitations of the claimed apparatus. The courts have held that: (1) "apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990), and (2) 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP § 2114.
It is noted that Wedam discloses wherein the electric heater is for a machine for preparing hot beverages (“The invention is in particular applicable where a rapid heating of water is required, especially of a repetitive nature such as for example in machines for the preparation of coffee, and where it is also necessary to rapidly pass to the steam preparation function. It can in general be applied to all machines for the preparation of hot beverages” [0079]).
Wedam does not expressly disclose wherein an inner surface of said tube has surface roughness (Ra), or arithmetical mean roughness, greater than 0.8 µm.
Zhou is directed to a ceramic heater [Abstract]. Zhou discloses wherein a portion of a ceramic heater that contacts a fluid to be heated has a surface roughness (“Since the ceramic heater has a high surface roughness of the resistance heating element surface, the atmosphere gas can be stagnated, and thus air in the gutter or cuts of the resistance heating element is prevented from flowing, and consequently, formation of low temperature portion attributed to the cuts or gutters is suppressed. Accordingly, the temperature evenness of the heating face can further be improved” [0044]). Zhou discloses a surface roughness between 0.01 µm [0046] and 15 µm [0048]-[0050].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein an inner surface of said tube has surface roughness (Ra), or arithmetical mean roughness, greater than 0.8 µm. This allows for improvement of temperature evenness, as recognized by Zhou. Regarding the range of surface roughness values, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP § 2144.05-I.
Regarding claim 2, Wedam does not expressly disclose wherein said surface roughness (Ra) is greater than, or equal to 1 µm, preferably greater than 1 µm.
Zhou discloses wherein said surface roughness (Ra) is greater than, or equal to 1 µm, preferably greater than 1 µm (surface roughness between 0.01 µm [0046] and 15 µm [0048]-[0050]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein said surface roughness (Ra) is greater than, or equal to 1 µm, preferably greater than 1 µm. This allows for improvement of temperature evenness, as recognized by Zhou. Regarding the range of surface roughness values, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP § 2144.05-I.
Regarding claim 3, claim 3 recites, “[t]he electric heater according to claim 1, wherein said tube is made by means of welding a metal strip.” Claim 3 is a product-by-process claim. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP § 2113-I.
Regarding claim 8, Wedam discloses end stretches of the tube (Fig. 6, end portions of tube / “conduit 3’’ “ [0071]).
Wedam does not expressly disclose wherein each end stretch of the tube has a length from 3 to 40 mm, preferably from 15 to 25 mm.
However, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein each end stretch of the tube has a length from 3 to 40 mm, preferably from 15 to 25 mm, as this is merely a design choice. The courts have held the following: In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" where held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.). In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. MPEP § 2144.04-IV-A.
Regarding claim 12, Wedam discloses a machine for preparing hot beverages, in particular coffee (“a machine for domestic use for heating water for beverages, for example, but not exclusively adapted for the preparation of coffee, tea and/or the generating of steam” [0055]).
Wedam does not expressly disclose wherein the machine comprises the electric heater according to claim 1.
However, Wedam in view of Zhou discloses the electric heater according to claim 1 (please see the rejection of claim 1, above).
Claims 4-5, 7, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Wedam et al. (US 2017/0241665) in view of Zhou et al. (US 2004/0060925), further in view of Mast (US 2020/0240715).
Regarding claim 4, Wedam / Zhou does not expressly disclose wherein said tube has a welding seam, in particular wherein said welding seam extends substantially parallel to an axis about which the wall of the tube extends.
Mast is directed to a heat exchanger tube [Abstract]. Mast discloses wherein a tube has a welding seam, in particular wherein said welding seam extends substantially parallel to an axis about which the wall of the tube extends. (Fig. 1B, “sheet of material 110” [0029] has been bent into a tube shape as shown in Fig. 1B; Fig. 1C shows a “ continuous weld seam 15 at the location where the rounded end walls 11, 12 of the sheet 110 are in contact” [0030]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein said tube has a welding seam, in particular wherein said welding seam extends substantially parallel to an axis about which the wall of the tube extends. This is a known structure of a heat exchanger tube, applied to a known device, to achieve predictable results.
Regarding claim 5, Wedam / Zhou / Mast does not expressly disclose wherein said welding seam comprises two portions, each of which has a height towards the inside of the tube, which is lower than the height, towards the inside of the tube, of the remaining part of the welding seam; each of said two portions being at a respective end stretch of the tube.
However, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein said welding seam comprises two portions, each of which has a height towards the inside of the tube, which is lower than the height, towards the inside of the tube, of the remaining part of the welding seam; each of said two portions being at a respective end stretch of the tube, because this would have been obvious to try. That is, the height of each of the two end portions can be (1) lower than, (2) greater than, or (3) equal to the height of the remaining part of the weld seam. One of ordinary skill in the art would have a reasonable expectation of success in implementing any of these three options. Furthermore, Applicant’s disclosure provides no indication of criticality in implementing the claimed option.
Regarding claim 7, Wedam / Zhou does not expressly disclose wherein at each end stretch of the tube, said welding seam does not form a projection inside the tube.
Mast discloses wherein at each end stretch of the tube, said welding seam does not form a projection inside the tube (Fig. 1C shows wherein welding seam 15 does not form a projection inside the tube).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein at each end stretch of the tube, said welding seam does not form a projection inside the tube. This is a known structure of a heat exchanger tube, applied to a known device, to achieve predictable results.
Regarding claim 10, Wedam / Zhou disclose the electric heater according to claim 1, as described in the rejection of claim 1, above.
Wedam / Zhou does not expressly disclose a process, wherein there is provided a step of: a) bending a metal strip having at least one surface having a surface roughness (Ra) which is greater than 0.8 µm, preferably greater than, or equal to 1 µm, and executing a welding of said metal strip, so as to form a tube having a welding seam.
Mast disclose bending a metal strip (Fig. 1A shows metal strip / “ sheet of metal material 110” [0027]; Fig. 1B: “the sheet of material 110 enters a second forming station 103 wherein the flat sheet is rolled into a cylindrical profile as depicted in FIG. 1B. Particularly, the end walls 11, 12 are brought together so that the outer surfaces 13, 14 are brought into contact with one another. The entire sheet 110 thereby takes on a cylindrical shape” [0029], and executing a welding of said metal strip, so as to form a tube having a welding seam (“a weld tip 113 is used to create a continuous weld seam 15 at the location where the rounded end walls 11, 12 of the sheet 110 are in contact. As can be seen in the detail view of FIG. 1C depicting that portion of the cylindrical tube profile exiting the welding station 104, the weld bead 15 is disposed within the valley that is naturally formed between the curved outer surfaces of the walls 11, 12” [0030]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein there is provided a step of: a) bending a metal strip, and executing a welding of said metal strip, so as to form a tube having a welding seam. This is a known process for forming a heat exchange tube, applied to a known device, to achieve predictable results.
Wedam does not expressly disclose a metal strip having at least one surface having a surface roughness (Ra) which is greater than 0.8 µm, preferably greater than, or equal to 1 µm.
However, Zhou discloses wherein a portion of a ceramic heater that contacts a fluid to be heated has a surface roughness (“Since the ceramic heater has a high surface roughness of the resistance heating element surface, the atmosphere gas can be stagnated, and thus air in the gutter or cuts of the resistance heating element is prevented from flowing, and consequently, formation of low temperature portion attributed to the cuts or gutters is suppressed. Accordingly, the temperature evenness of the heating face can further be improved” [0044]). Zhou discloses a surface roughness between 0.01 µm [0046] and 15 µm [0048]-[0050].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the metal strip having at least one surface having a surface roughness (Ra) which is greater than 0.8 µm, preferably greater than, or equal to 1 µm. This allows for improvement of temperature evenness, as recognized by Zhou. Regarding the range of surface roughness values, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP § 2144.05-I.
Claims 6 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Wedam et al. (US 2017/0241665) in view of Zhou et al. (US 2004/0060925) and Mast (US 2020/0240715), further in view of Halken et al. (US 2009/0184154).
Regarding claim 6, Wedam / Zhou / Mast does not expressly disclose wherein, at each end stretch of the tube, said welding seam has been subjected to a crushing or a chip removal process.
Halken is directed to a method of welding a tube ([Abstract]; Fig. 5). Halken discloses wherein a welding seam has been subjected to a crushing or a chip removal process (“a weld seam on the inside and a weld seam on the outside of the element comprises a modified geometry manufactured by milling and/or grinding” [0035]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein, at each end stretch of the tube, said welding seam has been subjected to a crushing or a chip removal process. This allows for creating a desired geometry along the weld seam.
Regarding claim 11, Wedam / Zhou / Mast does not expressly disclose wherein, after step a) there is provided a step b) wherein, at each end stretch of the tube, said welding seam is crushed or subjected to a chip removal process, preferably so that said welding seam does not form a projection inside the tube.
Halken is directed to a method of welding a tube ([Abstract]; Fig. 5). Halken discloses wherein a welding seam is subjected to a crushing or a chip removal process (“a weld seam on the inside and a weld seam on the outside of the element comprises a modified geometry manufactured by milling and/or grinding” [0035]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein, after step a) there is provided a step b) wherein, at each end stretch of the tube, said welding seam is crushed or subjected to a chip removal process, preferably so that said welding seam does not form a projection inside the tube. This allows for creating a desired geometry along the weld seam.
Claims 9 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Wedam et al. (US 2017/0241665) in view of Zhou et al. (US 2004/0060925), further in view of Eckman et al. (US 5,930,459).
Regarding claim 9, Wedam discloses a first conduit and a second conduit, each inserted into a respective end stretch of the tube (Fig. 6, tube / conduit 3’’; “at least one metal core having a cross-section substantially equal to the conduit section, adapted to be inserted into the conduit” [0036]).
Wedam does not expressly disclose wherein at least one first seal ring is arranged between the first conduit and an end stretch, and at least one second seal ring is arranged between the second conduit and the other end stretch.
Eckman is directed to a heating element [Abstract]. Eckman discloses arranging a seal ring between two elements in a fluid conduit (“An O-ring (not shown) can be employed on the inside surface of the flange 32 to provide a surer water-tight seal” [Col. 3, lines 43-45]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein at least one first seal ring is arranged between the first conduit and an end stretch, and at least one second seal ring is arranged between the second conduit and the other end stretch. This advantageously forms a water-tight seal.
Regarding claim 13, Wedam discloses a first conduit and a second conduit, each inserted into a respective end stretch of the tube (Fig. 6, tube / conduit 3’’; “at least one metal core having a cross-section substantially equal to the conduit section, adapted to be inserted into the conduit” [0036]).
Wedam does not expressly disclose wherein at least one first seal ring is arranged between the first conduit and an end stretch, and at least one second seal ring is arranged between the second conduit and the other end stretch.
Eckman is directed to a heating element [Abstract]. Eckman discloses arranging a seal ring between two elements in a fluid conduit (“An O-ring (not shown) can be employed on the inside surface of the flange 32 to provide a surer water-tight seal” [Col. 3, lines 43-45]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein at least one first seal ring is arranged between the first conduit and an end stretch, and at least one second seal ring is arranged between the second conduit and the other end stretch. This advantageously forms a water-tight seal.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2011/0280554 and US 3,617,699 are directed to flow heaters.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH KERR whose telephone number is (571)272-3073. The examiner can normally be reached M - F, 8:30 AM - 4:30 PM.
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/ELIZABETH M KERR/Primary Examiner, Art Unit 3761
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