DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Species 1, the embodiment of Fig. 1A, wherein the heating element comprises fins and openings, in the reply filed on 5/12/2026 is acknowledged.
Claims 11 and 18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected Species 2, and claims 12 and 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected Species 3, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/12/2026.
Claims 1-10, 13-17, and 20 are currently pending and have been considered below.
Claim Objections
Claim 20 is objected to because of the following informalities: claim 20 recites “bare metal wire” in line 4. This should be changed to “bare wire metal” to establish proper antecedent basis. Appropriate correction is required.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 8-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schlipf (US 2021/0112629).
Regarding claim 1, Schlipf discloses a bare wire metal heating element (Fig. 24, “electrical heating element 220” [0110]; “The heating element blank preferably consists of a heating conductor alloy, including in particular alloys of two or more metals that have a high specific electrical resistance and a low tendency to oxidation, or of a layer structure made of such a heating conductor alloy and a further layer which consists of a metal with a lower specific electrical resistance. Examples of such heat conductor alloys include, in particular: Copper-nickel-manganese alloys such as Nickelin, Manganin and Constantan; Two-component and three-component alloys based on nickel and chromium, e.g. Chromin, Chromel A, Chromel B or Chromel C; or Alloys of iron and chromium with added aluminum, especially chrome steel or Kanthal. An example of the material of the second layer is copper” [0021]-[0024]), the bare wire metal heating element comprising:
a first electrically conductive portion extending linearly (see annotated Fig. 24; [0021]-[0024], cited above, describe wherein the heating element is electrically conductive);
a second electrically conductive portion extending linearly (see annotated Fig. 24); and
a third electrically conductive portion (see annotated Fig. 24) connecting the first electrically conductive portion to the second electrically conductive portion at a first end of the bare wire metal heating element (see annotated Fig. 24),
wherein the bare wire metal heating element is open between the first electrically conductive portion and the second electrically conductive portion at a second end of the bare wire metal heating element (see annotated Fig. 24).
Regarding the term “stamped” in “[a] stamped bare wire metal heating element,” “stamped” refers to the process of making the bare wire metal heating element. “[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.
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 heating fluid in a tankless electric fluid heating device.” 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.
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Fig. 24 of Schlipf, annotated
Regarding claim 8, Schlipf discloses wherein the first electrically conductive portion and the second electrically conductive portion are parallel to one another (see annotated Fig. 24).
Regarding claim 9, Schlipf discloses wherein the third electrically conductive portion is curved (see annotated Fig. 24).
Regarding claim 10, Schlipf discloses wherein a thickness of the first electrically conductive portion is not uniform (see partial Fig. 24, annotated, below, showing a first section having a first thickness (denoted by dashed double arrow) and a second section having a different thickness (denoted by a solid double arrow); additionally, Schlipf states, “if a heating element blank is prepared that has sections with different thicknesses, a heating conductor with sections in which the heating conductor has a different cross section can be realized” [0017]).
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Partial Fig. 24 of Schlipf, annotated
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.
Claims 2-7 are rejected under 35 U.S.C. 103 as being unpatentable over Schlipf (US 2021/0112629) in view of Moskal et al. (US 2010/0132921).
Regarding claim 2, Schlipf does not expressly disclose a plurality of first fins extending outwardly from the first electrically conductive portion and a plurality of second fins extending outwardly from the second electrically conductive portion.
Moskal is directed to a heating element (“solid heat transfer element”; “Heat in the element may be generated by means of electrical resistance” [Abstract]). Moskal discloses a plurality of fins extending outwardly from the heating element (Figs 1-12 show different embodiments of a heating element / “solid heat transfer element 100” [0145] comprising a plurality of fins / “vortex generators” [0145] 102 (Figs. 1-2), 104 (Figs. 3-4), 106 and 108 (Figs. 5-6), 106 (Figs. 7-8), 110 (Figs. 9-10), 112 (Figs. 11-12); Figs. 13-39 also show different embodiments of heating elements / solid heat transfer elements comprising a plurality of fins / vortex generators).
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 a plurality of first fins extending outwardly from the first electrically conductive portion and a plurality of second fins extending outwardly from the second electrically conductive portion. The fins function as vortex generators, wherein “[t]he vortex generators serve several purposes. They increase the surface area available for heat transfer. Also, when they are high enough to be above the normal boundary layer, they draw in the faster moving fluid that is further from the solid heat transfer element mixing it with the slower moving fluid next to the element. Vortices increase mixing in the flow, enhance bulk fluid motion, therefore allowing for more heat to be transferred from a solid surface” [0143].
Regarding claim 3, Schlipf does not expressly disclose wherein the plurality of the first fins and the plurality of the second fins are of a same size.
However, Moskal discloses that fins / vortex generators can have the same size or different sizes (for example, Fig. 19 shows fins / vortex generators 130 with the same size, while Fig. 20 shows fins / vortex generators 134 and 136 having different sizes [0147]). Additionally, Moskal teaches, “[t]he design choices with solid heat transfer elements and the associated vortex generators are specific to each application. The choice of solid heat transfer element profile shape, spacing between solid heat transfer elements, the angle at which the solid heat transfer elements are transversely placed against the fluid flow, vortex generator shape, spacing between vortex generators, height of vortex generators and the angle of attack of the vortex generators can be combined into thousands of variations. The drawings are provided to illustrate the possible variations and the invention does not limit the invention to the combinations shown in the drawings. The choice of which combination to use for a specific application is driven by heat transfer characteristics and pressure drop control. The choice is also affected by the cost of production and the durability of the chosen design combination” [0140].
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 the plurality of the first fins and the plurality of the second fins are of a same size. One of ordinary skill in the art would be motivated to select appropriate sizes for the plurality of fins to achieve desired heat transfer characteristics. Additionally, 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. Furthermore, Applicant’s disclosure does not provide any indication of criticality regarding the size of the plurality of the first fins with respect to the size of the plurality of the second fins.
Regarding claim 4, Schlipf does not expressly disclose wherein a first fin of the plurality of the first fins is a different size than a second fin of the plurality of the first fins.
However, Moskal discloses that fins / vortex generators can have the same size or different sizes (for example, Fig. 19 shows fins / vortex generators 130 with the same size, while Fig. 20 shows fins / vortex generators 134 and 136 having different sizes [0147]). Additionally, Moskal teaches, “[t]he design choices with solid heat transfer elements and the associated vortex generators are specific to each application. The choice of solid heat transfer element profile shape, spacing between solid heat transfer elements, the angle at which the solid heat transfer elements are transversely placed against the fluid flow, vortex generator shape, spacing between vortex generators, height of vortex generators and the angle of attack of the vortex generators can be combined into thousands of variations. The drawings are provided to illustrate the possible variations and the invention does not limit the invention to the combinations shown in the drawings. The choice of which combination to use for a specific application is driven by heat transfer characteristics and pressure drop control. The choice is also affected by the cost of production and the durability of the chosen design combination” [0140].
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 a first fin of the plurality of the first fins is a different size than a second fin of the plurality of the first fins. One of ordinary skill in the art would be motivated to select appropriate sizes for the plurality of fins to achieve desired heat transfer characteristics. Additionally, 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. Furthermore, Applicant’s disclosure does not provide any indication of criticality regarding the size of the plurality of the first fins with respect to the size of the plurality of the second fins.
Regarding claim 5, Schlipf does not expressly disclose wherein the plurality of the first fins and the plurality of the second fins are of a same shape.
However, Moskal discloses that fins / vortex generators can have the same shape or different shapes (for example, Figs. 1, 3, 9, and 39 show fins vortex generators that are tear drop shaped, egg shaped, wedge shaped, triangular shaped, respectively). Additionally, Moskal teaches, “[t]he design choices with solid heat transfer elements and the associated vortex generators are specific to each application. The choice of solid heat transfer element profile shape, spacing between solid heat transfer elements, the angle at which the solid heat transfer elements are transversely placed against the fluid flow, vortex generator shape, spacing between vortex generators, height of vortex generators and the angle of attack of the vortex generators can be combined into thousands of variations. The drawings are provided to illustrate the possible variations and the invention does not limit the invention to the combinations shown in the drawings. The choice of which combination to use for a specific application is driven by heat transfer characteristics and pressure drop control. The choice is also affected by the cost of production and the durability of the chosen design combination” [0140].
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 the plurality of the first fins and the plurality of the second fins are of a same shape. One of ordinary skill in the art would be motivated to select appropriate shapes for the plurality of fins to achieve desired heat transfer characteristics. Additionally, the courts have held that a change in shape alone, without demonstration of the criticality of a specific limitation, may be considered obvious to a person of ordinary skill in the art. “In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), [t]he court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.” MPEP § 2144.04-IV-B. Applicant’s disclosure does not provide any indication of criticality regarding the shape of the plurality of the first fins with respect to the shape of the plurality of the second fins.
Regarding claim 6, Schlipf does not expressly disclose wherein a first fin of the plurality of the first fins is a different shape than a second fin of the plurality of the first fins.
However, Moskal teaches, “[t]he design choices with solid heat transfer elements and the associated vortex generators are specific to each application. The choice of solid heat transfer element profile shape, spacing between solid heat transfer elements, the angle at which the solid heat transfer elements are transversely placed against the fluid flow, vortex generator shape, spacing between vortex generators, height of vortex generators and the angle of attack of the vortex generators can be combined into thousands of variations. The drawings are provided to illustrate the possible variations and the invention does not limit the invention to the combinations shown in the drawings. The choice of which combination to use for a specific application is driven by heat transfer characteristics and pressure drop control. The choice is also affected by the cost of production and the durability of the chosen design combination” [0140].
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 a first fin of the plurality of the first fins is a different shape than a second fin of the plurality of the first fins. One of ordinary skill in the art would be motivated to select appropriate shapes for the plurality of fins to achieve desired heat transfer characteristics. Additionally, the courts have held that a change in shape alone, without demonstration of the criticality of a specific limitation, may be considered obvious to a person of ordinary skill in the art. “In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), [t]he court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.” MPEP § 2144.04-IV-B. Applicant’s disclosure does not provide any indication of criticality regarding the shape of the plurality of the first fins with respect to the shape of the plurality of the second fins.
Regarding claim 7, Schlipf discloses first openings extending through the first electrically conductive portion and second openings extending through the second electrically conductive portion (see annotated Fig. 24, below).
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Fig. 24 of Schlipf, annotated
Claims 13, 16-17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Bowen (US 2020/0037400) in view of Schlipf (US 2021/0112629).
Regarding claim 13, Bowen discloses a tankless electric fluid heating device (“electric fluid heating system in the form of an electric water heater or boiler 2” [0131]; “Preferably the electric fluid heating system is a tankless or continuous flow type of heating system” [0011]) comprising:
a heating chamber (Figs. 2 and 3, “heating unit 32” [0137]); and
a heating element (Fig. 3, “heating elements 34” [0139]) at least partially arranged within the heating chamber (see Fig. 3) and configured to heat fluid within the heating chamber (“heating unit 32 is located in the housing 4 and comprises a plurality of heating elements 34, each of which is surrounded by a fluid or water path 36” [0137]), the heating element comprising:
a first electrically conductive portion extending linearly (see annotated Fig. 3; “The heating elements are electrically powered using electricity delivered to the housing 4 via electrical cable 18” [0139]);
a second electrically conductive portion extending linearly (see annotated Fig. 3); and
a third electrically conductive portion (see annotated Fig. 3) connecting the first electrically conductive portion to the second electrically conductive portion at a first end of the heating element (see annotated Fig. 3), and
wherein the heating element is open between the first electrically conductive portion and the second electrically conductive portion at a second end of the bare wire metal heating element (see annotated Fig. 3).
Regarding the term “stamped” in “a stamped bare wire metal heating element,” “stamped” refers to the process of making the bare wire metal heating element. “[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.
Bowen does not expressly disclose wherein the heating element is a bare wire metal heating element.
Schlipf is directed to heating elements [Abstract]. Schlipf discloses a bare wire metal heating element (Fig. 24, “electrical heating element 220” [0110]; “The heating element blank preferably consists of a heating conductor alloy, including in particular alloys of two or more metals that have a high specific electrical resistance and a low tendency to oxidation, or of a layer structure made of such a heating conductor alloy and a further layer which consists of a metal with a lower specific electrical resistance. Examples of such heat conductor alloys include, in particular: Copper-nickel-manganese alloys such as Nickelin, Manganin and Constantan; Two-component and three-component alloys based on nickel and chromium, e.g. Chromin, Chromel A, Chromel B or Chromel C; or Alloys of iron and chromium with added aluminum, especially chrome steel or Kanthal. An example of the material of the second layer is copper” [0021]-[0024]).
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 the heating element is a bare wire metal heating element. This may be the case in the invention of Bowen, but this is not expressly disclosed. Utilizing a bare wire metal heating element is the use of a known type of heating element, applied to a known device, to achieve predictable results.
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Fig. 3 of Bowen, annotated
Regarding claim 16, Bowen discloses wherein the first electrically conductive portion and the second electrically conductive portion are parallel to one another (see annotated Fig. 3).
Regarding claim 17, Bowen discloses wherein the third electrically conductive portion is curved (see annotated Fig. 3).
Regarding claim 20, Bowen discloses a method of heating fluid in a tankless fluid heating device (“electric fluid heating system in the form of an electric water heater or boiler 2” [0131]; “Preferably the electric fluid heating system is a tankless or continuous flow type of heating system” [0011]), the method comprising:
arranging a heating element (Fig. 3, “heating elements 34” [0139]) within a heating chamber (Figs. 2 and 3, “heating unit 32” [0137]), the heating element comprising:
a first electrically conductive portion extending linearly (see annotated Fig. 3; “The heating elements are electrically powered using electricity delivered to the housing 4 via electrical cable 18” [0139]);
a second electrically conductive portion extending linearly (see annotated Fig. 3);
a third electrically conductive portion (see annotated Fig. 3) connecting the first electrically conductive portion to the second electrically conductive portion at a first end of the heating element (see annotated Fig. 3), and
wherein the heating element is open between the first electrically conductive portion and the second electrically conductive portion at a second end of the heating element (see annotated Fig. 3); and
transmitting electricity to the heating element (“The heating elements are electrically powered using electricity delivered to the housing 4 via electrical cable 18” [0139]).
Regarding the term “stamped” in “a stamped bare wire metal heating element,” “stamped” refers to the process of making the bare wire metal heating element. “[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.
Bowen does not expressly disclose wherein the heating element is a bare wire metal heating element.
Schlipf is directed to heating elements [Abstract]. Schlipf discloses a bare wire metal heating element (Fig. 24, “electrical heating element 220” [0110]; “The heating element blank preferably consists of a heating conductor alloy, including in particular alloys of two or more metals that have a high specific electrical resistance and a low tendency to oxidation, or of a layer structure made of such a heating conductor alloy and a further layer which consists of a metal with a lower specific electrical resistance. Examples of such heat conductor alloys include, in particular: Copper-nickel-manganese alloys such as Nickelin, Manganin and Constantan; Two-component and three-component alloys based on nickel and chromium, e.g. Chromin, Chromel A, Chromel B or Chromel C; or Alloys of iron and chromium with added aluminum, especially chrome steel or Kanthal. An example of the material of the second layer is copper” [0021]-[0024]).
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 the heating element is a bare wire metal heating element. This may be the case in the invention of Bowen, but this is not expressly disclosed. Utilizing a bare wire metal heating element is the use of a known type of heating element, applied to a known device, to achieve predictable results.
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Bowen (US 2020/0037400) in view of Schlipf (US 2021/0112629), further in view of Moskal et al. (US 2010/0132921).
Regarding claim 14, Bowen / Schlipf does not expressly disclose a plurality of first fins extending outwardly from the first electrically conductive portion and a plurality of second fins extending outwardly from the second electrically conductive portion.
Moskal is directed to a heating element (“solid heat transfer element”; “Heat in the element may be generated by means of electrical resistance” [Abstract]). Moskal discloses a plurality of fins extending outwardly from the heating element (Figs 1-12 show different embodiments of a heating element / “solid heat transfer element 100” [0145] comprising a plurality of fins / “vortex generators” [0145] 102 (Figs. 1-2), 104 (Figs. 3-4), 106 and 108 (Figs. 5-6), 106 (Figs. 7-8), 110 (Figs. 9-10), 112 (Figs. 11-12); Figs. 13-39 also show different embodiments of heating elements / solid heat transfer elements comprising a plurality of fins / vortex generators).
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 a plurality of first fins extending outwardly from the first electrically conductive portion and a plurality of second fins extending outwardly from the second electrically conductive portion. The fins function as vortex generators, wherein “[t]he vortex generators serve several purposes. They increase the surface area available for heat transfer. Also, when they are high enough to be above the normal boundary layer, they draw in the faster moving fluid that is further from the solid heat transfer element mixing it with the slower moving fluid next to the element. Vortices increase mixing in the flow, enhance bulk fluid motion, therefore allowing for more heat to be transferred from a solid surface” [0143].
Regarding claim 15, Bowen does not expressly disclose first openings extending through the first electrically conductive portion and second openings extending through the second electrically conductive portion.
Schlipf discloses first openings extending through the first electrically conductive portion and second openings extending through the second electrically conductive portion (see annotated Fig. 24, below).
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 first openings extending through the first electrically conductive portion and second openings extending through the second electrically conductive portion. This is a known shape of a heating element, applied to known heating element, to achieve predictable results.
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Fig. 24 of Schlipf, annotated
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Mahajan et al. (US 2019/0285359) is directed to a heat exchanger fin.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Steven Crabb can be reached at 571-270-5095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZABETH M KERR/Primary Examiner, Art Unit 3761
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