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 .
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.
This application includes one or more claim limitations which combine functional language with generic placeholder terms but which have not been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.. Such claim limitation(s) is/are:
“a compression unit” in claim 1, line 2 and claim 20, line 2 has not been interpreted under 35 U.S.C. 112(f) because the claim as amended recites sufficient structure for the unit to perform the claimed function of “compression”, namely a liquid-gas piston driven by a liquid pump providing hydraulic fluid into a cylinder to compress gaseous refrigerant therein.
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 26 is 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.
Claim 26 recites the expanding step (of claim 20) “comprises using an expander to capture work of the expanding refrigerant to thereby deliver fluid to a fluid pump”. The difference in terminology makes it unclear whether the “fluid pump” and the “fluid” delivered by it are the same elements or are distinct from “a liquid pump” in line 3 of claim 20, taught to pump “a hydraulic fluid”. Specifically, the expander is taught in lines 6-10 of claim 20 to deliver this hydraulic fluid to the liquid pump by captured “work of expansion” so that it is unclear if the teachings of claim 26 of the fluid pump to which fluid is delivered by capturing “work of the expanding refrigerant” refers to the same elements and process or requires an additional pump and an additional fluid. For this reason, the scope of claim 26 cannot be positively ascertained and the claim is rejected under 35 U.S.C. 112(b) as being indefinite.
For purposes of examination, the pump of claim 26 has been given its broadest reasonable interpretation consistent with the specification and has been interpreted specifically based on the teachings of ¶ 115 (as numbered in US Publication No. 2024/0295350 A1) such that the system includes a single pump assisted using work captured from expansion, this pump being referred to as “fluid pump” in claim 26 and a liquid pump in claim 20 and pumping only a single hydraulic fluid.
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.
Claim 26 is 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As discussed above, claim 26 includes teachings regarding “a fluid pump” which include within their scope an air conditioning system having a liquid pump and a fluid pump as separate elements, each operated using work captured from the expansion of refrigerant to compress a working fluid (“hydraulic fluid” by the “liquid pump” and “fluid” by the “liquid pump”). Because the specification teaches only a single such pump (for example in ¶¶ 115-118 regarding the capture of work and provision of water to the pump inlet, including singular language regarding “the pump of the compressor unit”) the version of the method of claim 26 which requires the use of two pumps which is included in the claim’s scope (based on the amendment of claim 20 upon which claim 26 depends) represents new matter with regard to the original disclosure and claim 26 is therefore rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement.
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.
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Claims 1, 5, and 20-23 are rejected under 35 U.S.C. 103 as being unpatentable over German Publication No. 10 2009 041 459 A to Wessler in view of US Patent No. 5,073,090 to Cassidy. An English translation of Wessler has been provided with the Non-Final Rejection of 18 December 2025 and citations to specific passages and paragraphs of this reference are directed to this translation rather than to the German-language original document.
Wessler teaches limitations from claim 1 in fig. 1, shown above, an air conditioning system, comprising:
a compression unit (A) configured to compress a gaseous refrigerant (a carbon dioxide refrigerant as taught in ¶ 17);
a high pressure condensing tank (E) connected to an outlet of the compression unit (A, through the condenser B and a check valve C) and configured to store the compressed refrigerant (as taught in ¶ 17, once the refrigerant has been condensed in the condenser B, it is stored in the reservoir E);
an expander or expansion valve (expansion/throttle valve G) in fluid communication with an outlet of the [condensing tank] (through the control valve F), for releasing the compressed refrigerant from the [high pressure condensing tank] (E) while expanding a volume of the compressed refrigerant (as taught in ¶ 18);
an evaporator (H) in fluid communication with an outlet of the expander or expansion valve (G) for causing the refrigerant to absorb heat from a surrounding environment (as heat Qzu as shown in fig. 1);
a storage tank (I) for collecting discharged refrigerant vapor from the evaporator (E, as taught in ¶¶ 17 and 18); and
a conduit (on which solenoid valve J is disposed) for conveying the refrigerant vapor from the [low-pressure storage tank] to an intake of the compression unit (A, through solenoid valve J as taught in ¶¶ 17-18).
Regarding the recitation of an expander “which comprises a housing containing a volume of the hydraulic fluid, such that the expanding refrigerant displaces a portion of the hydraulic fluid out of the expander and delivers it under pressure to an intake of the liquid pump of the compression unit to capture work of expansion and mechanically assist the liquid pump during a compression cycle”, examiner notes that claim 20 recites the expanding step being performed by either “an expansion valve or an expander which comprises [etc.]” and thus does not require this expander or the structure thereof in a method in which the “expanding” step is performed by an expansion valve. As discussed above and taught in ¶ 18 of Wessler, the system of Wessler teaches the use of an expansion valve and thus is not required to teach the use of an expander, or of the specific structure of an expander taught in claim 20.
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Wessler does not teach the system including “a plurality of high pressure condensing tanks” and “a plurality of low-pressure storage tanks”. MPEP 2144.04 Legal Precedent as Source of Supporting Rationale states in subsection (VI)(B) that “the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.” See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). One of ordinary skill in the art before the application was effectively filed would have found it to be a matter of obvious design choice to provide the system of Wessler with a plurality of instances of the storage tanks (E) and (I) in practicing the system of Wessler in order to increase the amount of refrigerant the system may store and thus increase the amount of cooling which may be provided by this pre-compressed refrigerant before operation of the compressor is required, for example in an installation in a vehicle with a larger volume passenger cabin.
Wessler does not teach the compressor of his invention having a liquid-gas piston driven by a liquid pump configured to pump a hydraulic fluid into a cylinder to compress the gaseous refrigerant. Cassidy teaches in figs. 4-7, shown above, a fluid piston compressor (that is, one which uses a body of a transfer fluid as a piston for compressing a gas) noting in col. 1, lines 11-14 that the compression of refrigerant in a refrigeration system is a use case for such a compressor, teaching as the structure of this compressor a pair of cylinders (12a and 12b) for receiving an in-flow of gas to be compressed (at inlets 54) and accommodating a volume of a transfer fluid (22, operating as the claimed hydraulic fluid) moved between the cylinders by a pump (18, as shown in figs. 4-7, illustrating the stages of this operation) to force the gas in the cylinder into which fluid is being pumped out though an outlet (62) and check valve (64) before repeating the process at the other cylinder. It would have been obvious to one of ordinary skill in the art before the application was effectively filed to modify Wessler with the liquid-gas piston compressor taught by Cassidy because Cassidy teaches in col. 2, lines 3-34 that such compressors are more efficient than known compressors having solid compression elements, removing the requirement for additional equipment for gas expulsion from the compressor and operating with increased reliability and reduced maintenance costs brought about through a reduction in the number of moving parts.
Wessler as modified above teaches limitations from claim 5 in fig. 1, shown above, the air conditioning system of claim 1, wherein the refrigerant is carbon dioxide (as taught in ¶ 17) and being liquid in the plurality of high-pressure condensing tanks (Wessler teaches “The liquefied CO.sub.2 then enters the high-pressure reservoir E.” this reservoir duplicated as a plurality of such reservoirs as discussed in the above rejection of claim 1) and is gaseous in the plurality of low pressure storage tanks (having evaporated in the evaporator H before entering reservoir I, this reservoir being duplicated as a plurality of such reservoirs as discussed in the above rejection of claim 1).
Wessler teaches limitations from claim 20 in fig. 1, shown above, a method of air conditioning, comprising:
compressing a gaseous refrigerant (a carbon dioxide refrigerant, compressed using a compressor A as taught in ¶ 17) by a compression unit (compressor A);
storing the compressed refrigerant (in a high-pressure reservoir E as taught in ¶ 17);
expanding a volume of the compressed refrigerant with an expansion valve or expander (the expansion valve G, taught in ¶ 18 to expand refrigerant released from the reservoir E by solenoid valves D and F);
evaporating the refrigerant with an evaporator (H) and thereby causing the refrigerant to absorb heat from a surrounding environment (as heat Qzu as shown in fig. 1);
collecting discharged refrigerant vapor from the evaporator (H, in a reservoir I as taught in ¶¶ 17 and 18); and
conveying the discharged refrigerant vapor to an intake of the compressor (A), and repeating each of the previous steps (as taught in ¶¶ 17 and 18).
Regarding the recitation of an expander “which comprises a housing containing a volume of the hydraulic fluid, such that the expanding refrigerant displaces a portion of the hydraulic fluid out of the expander and delivers it under pressure to an intake of the liquid pump of the compression unit to capture work of expansion and mechanically assist the liquid pump during a compression cycle”, examiner notes that claim 20 recites the expanding step being performed by either “an expansion valve or an expander which comprises [etc.]” and thus does not require this expander or the structure thereof in a method in which the “expanding” step is performed by an expansion valve. As discussed above and taught in ¶ 18 of Wessler, the system of Wessler teaches the use of an expansion valve and thus is not required to teach the use of an expander, or of the specific structure of an expander taught in claim 20.
Wessler does not teach the compressor of his invention having a liquid-gas piston driven by a liquid pump configured to pump a hydraulic fluid into a cylinder to compress the gaseous refrigerant. Cassidy teaches in figs. 4-7, shown above, a fluid piston compressor (that is, one which uses a body of a transfer fluid as a piston for compressing a gas) noting in col. 1, lines 11-14 that the compression of refrigerant in a refrigeration system is a use case for such a compressor, teaching as the structure of this compressor a pair of cylinders (12a and 12b) for receiving an in-flow of gas to be compressed (at inlets 54) and accommodating a volume of a transfer fluid (22, operating as the claimed hydraulic fluid) moved between the cylinders by a pump (18, as shown in figs. 4-7, illustrating the stages of this operation) to force the gas in the cylinder into which fluid is being pumped out though an outlet (62) and check valve (64) before repeating the process at the other cylinder. It would have been obvious to one of ordinary skill in the art before the application was effectively filed to modify Wessler with the liquid-gas piston compressor taught by Cassidy because Cassidy teaches in col. 2, lines 3-34 that such compressors are more efficient than known compressors having solid compression elements, removing the requirement for additional equipment for gas expulsion from the compressor and operating with increased reliability and reduced maintenance costs brought about through a reduction in the number of moving parts.
Regarding claim 21, Wessler teaches in a refrigeration cycle air conditioning system for an electric vehicle in which compressed and condensed refrigerant is stored in a reservoir (E) during a charging operation performed at night and is later released to be evaporated in a cooling operation without expending electrical charge before being collected in another reservoir (I). Wessler does not teach the system including “a plurality of high pressure condensing tanks” and “a plurality of low-pressure storage tanks”. MPEP 2144.04 Legal Precedent as Source of Supporting Rationale states in subsection (VI)(B) that “the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.” See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). One of ordinary skill in the art before the application was effectively filed would have found it to be a matter of obvious design choice to provide the system of Wessler with a plurality of instances of the storage tanks (E) and (I) in practicing the system of Wessler in order to increase the amount of refrigerant the system may store and thus increase the amount of cooling which may be provided by this pre-compressed refrigerant before operation of the compressor is required, for example in an installation in a vehicle with a larger volume passenger cabin.
Wessler teaches limitations from claim 22, the method of claim 20, further comprising performing one or more of the following steps:
performing the compressing and storing steps at nighttime, and performing the expanding, evaporating, collecting, and conveying steps during daytime (as taught in ¶ 15, “The decisive advantage is that the environmentally friendly refrigerant CO.sub.2 can be used very efficiently in terms of energy, if the air conditioning system is "charged" at relatively low temperatures at night and will release its cooling capacity during the day at high temperatures.”);…
performing the expanding, evaporating, and collecting steps without investment of electricity (as no component used in these steps is taught to consume electricity and as taught in ¶ 5 “The charging of the air conditioning system is parallel to the charging of the battery at the charging station via the mains through an electrically driven compressor, for the cooling operation is then no additional energy to apply while driving.”)
Wessler teaches limitations from claim 23, the method of claim 20, wherein the refrigerant is carbon dioxide (as taught in ¶ 17), and further comprising performing the compressing step in a subcritical process and/or.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Wessler and Cassidy as applied to claim 1 above, and further in view of Chinese Publication No. 110715541 A to Chen et al. An English translation of Chen has been provided with the Non-Final Rejection and citations to specific passages and paragraphs of this reference are directed to this translation rather than to the Chinese-language original document.
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Regarding claim 2, Wessler teaches in a refrigeration cycle air conditioning system for an electric vehicle in which compressed and condensed refrigerant is stored in a reservoir (E) during a charging operation performed at night and is later released to be evaporated in a cooling operation without expending electrical charge before being collected in another reservoir (I). Wessler does not teach this system comprising a recuperator between the high pressure reservoir and the expansion valve to cool incoming condensed refrigerant with outgoing expanded refrigerant. Chen teaches in fig. 1, shown above, a refrigeration cycle air conditioning system in which compressed refrigerant is stored in storage tank (3) and released through an electric valve (24) to an expander (7). Chen further teaches in their claim 1 a pre-heater heat exchanger (4) the cold side of which communicates with refrigerant flowing from the tank (3) to cool this refrigerant with a separate refrigerant in a regenerator circuit which rejects heat to expanded refrigerant at a heater (16) downstream of the expander (7). It would have been obvious to one of ordinary skill in the art before the application was effectively filed to modify Wessler with the regenerator circuit of Chen in order to allow residual cooling capacity of the refrigerant exiting the evaporator of Wessler to be captured and used for precooling of refrigerant in or from the high-pressure storage reservoir, thus improving the cooling efficiency of the system.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Wessler and Cassidy as applied to claims 1 and 5 above, and further in view of US Publication No. 2006/0059945 A1 to Chordia et al.
Wessler as modified above teaches limitations from claim 7 in fig. 1, shown above, the air conditioning system of claim 5, wherein the carbon dioxide is … is gaseous in the plurality of low-pressure storage tanks (having evaporated in the evaporator H before entering reservoir I, this reservoir being duplicated as a plurality of such reservoirs as discussed in the above rejection of claim 1).
Wessler does not teach the refrigerant stored in the high pressure reservoir being in a supercritical plasma state. Chordia teaches in ¶ 23 and in claim 8, a carbon dioxide refrigeration cycle system operating in a supercritical state and in which a vessel is provided for storing excess refrigerant in a supercritical state. It would have been obvious to one of ordinary skill in the art before the application was effectively filed to modify Wessler with the supercritical refrigerant storage taught by Chordia in order to allow the cooling system to operate in a transcritical regime as taught in ¶ 7 of Chordia, providing improved performance as described by Chordia.
Allowable Subject Matter
Claim 26 is considered to read over the prior art of record because the prior art of record does not teach or suggest the claimed combination of features including the expanding step including the use of an expander and thus requiring the otherwise optional structure of an expander recited in claim 20 upon which claim 26 depends for capturing work from expanding refrigerant by displacing hydraulic fluid from a housing to the intake of a liquid pump. However, this claim cannot be considered "allowable" at this time due to the rejections of claim 20 upon which claim 26 depends and of claim 26 itself under 35 U.S.C. 112(a) and (b) set forth in this Office Action. Specifically, claim 26 is rejected based on the recitation of “a fluid pump” pumping “a fluid” which appears to teach an additional pump beyond the “liquid pump” pumping “a hydraulic fluid” taught in claim 20 and the teachings of the specification as originally filed which teach only one such pump. Therefore upon the claims being rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112 set forth in this Office Action, further consideration of this claim with respect to the prior art will be necessary.
Response to Arguments
Applicant’s arguments with respect to independent claims 1 and 20 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 on pg. 1 of the remarks that the amendments the specification and to the claims overcome the objections to the specification and claims based on the inconsistent hyphenation of terms set forth in the Non-Final Rejection.
In response, examiner agrees and these objections have been withdrawn.
Applicant argues on pg. 2 of the reply that the use of a plurality of tanks in the system of the claimed invention “is not a simple volume scaling mechanism for a larger passenger cabin, as the Examiner suggests” and that the use of this plurality of tanks is “tied to the unique requirements of shifting continuous liquid-gas piston cycles operating with a fixed time shift”.
In response, without agreeing or disagreeing, examiner notes that discussion of volume scaling as a motivation for the use of multiple tanks is not presented as an explanation for the reason for its use in applicant’s system (as indicated by the phrase “as Examiner suggests”) but as a motivation which would have caused one of ordinary skill in the art to modify the system of Wessler to use multiple tanks. MPEP 2144.04, in discussing the obviousness of the duplication of parts, indicates that “the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced”. Applicant’s identification of additional benefits beyond those which examiner articulated does not indicate that their result is “new and unexpected” or negate the benefits which were identified by examiner as at least one factor which would motivate such a modification by one of ordinary skill in the art. For this reason, this argument is not found to be persuasive with regard to the rejection of claim 1 as being obvious and this rejection is maintained.
Applicant argues on pg. 3 of the reply, with regard to the modification of Wessler with the teachings of Chen in the rejection of claim 2, that “This complex system [of Chen] is completely non-analogous and structurally incompatible with the tight mobile/residential configuration of Wessler (D1) or the system of the present invention”.
In response, examiner disagrees. Regarding applicant’s assertion of nonanalogous art, the size of complexity of a system or its intended installation in a residential or mobile configuration are not relevant tests for the analogy of prior art. MPEP 2141.01(a) Analogous and Nonanalogous Art sets forth the following alternative conditions as a test for the analogy of prior art (with formatting edited by examiner:
A reference is analogous art to the claimed invention if:
(1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or
(2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention).
Regarding test (1), the instant invention, Wessler and Chen are all air-cooling systems, operating through the use of vapor compression cycles and classified within F25B (defining “Refrigeration machines, plants, or systems”) so that they all correspond to the same “field of endeavor”. As the test of MPEP 2141.01(a) requires that condition (1) or condition (2) be met to demonstrate analogy of art, the prior art of both Wessler and Chen is analogous with the present invention.
Regarding the assertion that the teachings of Wessler and Chin would be “structurally incompatible”, MPEP 2145(III) cites In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981) and the finding that “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” Thus, applicant’s argument that the physical combination of the systems of Wessler and Chen would be difficult or impossible is not relevant to the finding of obviousness as it does not address the underlying findings of the rejection, that is what modification (as ideas rather than as structures) discussed by Chen one of ordinary skill in the art would recognize as beneficial and be motivated to implement in modification to the system of Wessler.
Applicant further argues on pg. 3 of the reply that “the recuperator [of the present invention] cools incoming compressed/condensed liquid refrigerant with outgoing expanded refrigerant within a closed, localized space to optimize immediate COP, while Chen’s preheater (4) functions to capture humid waste heat from an open drying chamber circuit.” And that “There is no motivation for a person of ordinary skill in the art to slice out Chen's heavy industrial thermal loop and place it into an HVAC chiller loop.”
In response, examiner does not find this argument persuasive. Applicant’s argument is based on the intended function and effect of the claimed invention and the system of Chen but does not identify any features of the claimed structure which Chen fails to teach, relying only on the assertion that the structure would produce a different result in the system of Chen than it does in the instant invention. Because "[A]pparatus 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 MPEP 2114(II), this argument regarding function is not persuasive in the absence of identified differences or deficiencies in structure and is not found to be persuasive.
Regarding the assertion that “there is not motivation” for the modification, examiner disagrees. Applicant has not discussed or identified any deficiency in the motivation set forth in the Non-Final Rejection (and reproduced in the instant Office Action) for this modification (“in order to allow residual cooling capacity of the refrigerant exiting the evaporator of Wessler to be captured and used for precooling of refrigerant in or from the high-pressure storage reservoir, thus improving the cooling efficiency of the system.”) so that the assertion that such motivation does not exist amounts only to a mere allegation of patentability and is not found to be persuasive.
Applicant argues on pp. 3-4 of the reply that Chordia teaches a cooling cycle which “must maintain carbon dioxide in a single-phase supercritical state” without phase changes, contrary to the operation of claims 5 and 7 in which the carbon dioxide refrigerant condenses and evaporates through the cycle so that modifying Wessler with the teachings of Chordia “would deteriorate the core framework of the present invention”.
In response, while examiner agrees with the general characterization of the teachings of Chordia, it is noted that Chordia is not relied upon in modifying Wessler to provide the single-phase circulation of supercritical carbon dioxide refrigerant which applicant argues would be detrimental, but specifically discusses the storage of refrigerant in such a state in the high-pressure tanks. As noted above, the test for obviousness is not the full bodily incorporation of the elements of the prior art systems but rather what teachings or ideas of the secondary reference would motivate modification of the primary reference. As applicant’s argument is founded on the incorporation of features on which the rejection is not based, it does not explain why the storage of supercritical carbon dioxide refrigerant would not be obvious within the system of Wessler, and is not persuasive in overcoming the rejection of claim 7.
Applicant argues on pp. 4-5 of the reply that He, previously relied upon in teaching the limitations of claim 26, does not teach the particular structure of the expander taught in the amended independent claims.
In response, examiner agrees but notes that the independent claims do not require the inclusion of an expander having this structure as these claim both teach an expansion valve (of no specified structure) as an alternative to the expander so that this optional expander structure does not overcome the rejection of the independent claims (based on the teachings of Wessler which includes an expansion valve).
It is noted that claim 26 requires that “the expanding step [of claim 20] comprises using an expander” so that the structure of the expander is required and overcomes the teachings of Wessler and of He. As set forth above, claim 26 has been rejected under 35 U.S.C. 112(a) and (b) but the subject matter set forth therein appears to distinguish the claim over the prior art so that the claim has not been rejected under 35 U.S.C. 102 or 103.
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 DANIEL C COMINGS whose telephone number is (571)270-7385. The examiner can normally be reached Monday - Friday, 8:30 AM to 5 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, Jerry-Daryl Fletcher can be reached at (571)270-5054. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL C COMINGS/ Examiner, Art Unit 3763
/JERRY-DARYL FLETCHER/ Supervisory Patent Examiner, Art Unit 3763
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