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 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.
Claim(s) 1,3, 6, 8-9, 11,14, 16, and 18-20 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Shimon (US Patent Application Publication US 2022/0026156 A1).
Regarding claim 1, Shimon discloses (Figure 1-4) a heat exchanger comprising: a heat exchanger shell (shell 12 and tube sheets 20 and 26) formed from a first metal material (the tubes sheets 20 and 26 are made from steel at substrate 36 per paragraph 0018);
a plurality of heat exchanger tubes (tubes 14) extending through a plurality of tube openings (32) in the heat exchanger shell, the plurality of heat exchanger tubes formed from a second metal material different from the first metal material (reactive metals are disclosed as a material of manufacture of the internal components of the heat exchanger per paragraph 0013); and
a galvanic isolator disposed at each tube opening of the plurality of tube openings (lining/coating 40 covers substrate 36 at tube openings 32 and is made of a fluoropolymer which is a corrosion resistant material per paragraph 0013 and 0019), radially between the tube opening and the corresponding heat exchanger tube of the plurality of heat exchanger tubes (the lining/coating 40 lies between the walls of the substrate 36 at tube openings 32 and the tubes 14 as it coats the side walls of the holes 38 at tube openings 32 per paragraph 0019), the galvanic isolator configured to mitigate a galvanic reaction between the heat exchanger shell and the plurality of heat exchanger tubes (the lining/coating 40 is made of a fluoropolymer which is a corrosion resistant material per paragraph 0013 and 0019),
wherein the galvanic isolator is one of a sleeve or coating applied directly to the first metal material of the plurality of tube openings (lining/coating 40 covers the metal substrate 36 among the side walls of holes 38 at tube openings 32) prior to installation of each heat exchanger tube into each tube opening of the plurality of tube openings (per paragraph 0019-0021).
Claim 1 is/are considered product-by-process claim. The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation, in this case the ordering of a sleeve or coating formed on a tube prior to installation in the tube opening. 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. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113).
Regarding claim 3, Shimon discloses the claim limitations of claim 1 above and Shimon further discloses the galvanic isolator (40) is formed from a non-metallic material (lining/coating 40 is made of a fluoropolymer which is a corrosion resistant material per paragraph 0006, 0013 and 0019).
Regarding claim 6, Shimon discloses the claim limitations of claim 1 above and Shimon further discloses the coating is a polytetrafluoroethylene material (the lining/coating can be polytetrafluoroethylene, PTFE, with a steel substrate for smaller heat exchanger diameters per paragraph 0003).
Regarding claim 8, Shimon discloses the claim limitations of claim 1 above and Shimon further discloses installation of the plurality of heat exchanger tubes (14) into the plurality of tube openings (32) seals the plurality of tube openings (the fluids are separated by the tubes and the tube sheets per paragraph 0015).
Regarding claim 9, Shimon discloses (Figure 1-4) a refrigerant circuit having a flow of refrigerant circulating therethrough; a fluid circuit having a flow of heat transfer fluid circulating therethrough, the fluid circuit operably connected to the refrigerant circuit at a heat exchanger assembly to transfer thermal energy between the flow of refrigerant and the fluid circuit (the two heat exchange fluids flow into and out of the heat exchanger assembly through the tube sheets 20 and 26 for the tube side fluid and through the shell side inlet and outlet 28 and 30 for the shell side fluid respectively per paragraph 0015, as the circuits are only generally disclosed, with no specific additional structure, the two separate fluid flows disclosed by Shimon appear to meet all of the claimed limitations) the heat exchanger assembly comprising:
a heat exchanger shell (shell 12 and tube sheets 20 and 26) formed from a first metal material (the tubes sheets 20 and 26 are made from steel at substrate 36 per paragraph 0018);
a plurality of heat exchanger tubes (tubes 14) extending through a plurality of tube openings (32) in the heat exchanger shell, the plurality of heat exchanger tubes formed from a second metal material different from the first metal material (reactive metals are disclosed as a material of manufacture of the internal components of the heat exchanger per paragraph 0013); and
a galvanic isolator disposed at each tube opening of the plurality of tube openings (lining/coating 40 covers substrate 36 at tube openings 32 and is made of a fluoropolymer which is a corrosion resistant material per paragraph 0013 and 0019), radially between the tube opening and the corresponding heat exchanger tube of the plurality of heat exchanger tubes (the lining/coating 40 lies between the walls of the substrate 36 at tube openings 32 and the tubes 14 as it coats the side walls of the holes 38 at tube openings 32 per paragraph 0019), the galvanic isolator configured to mitigate a galvanic reaction between the heat exchanger shell and the plurality of heat exchanger tubes (the lining/coating 40 is made of a fluoropolymer which is a corrosion resistant material per paragraphs 006, 0013 and 0019);
wherein the galvanic isolator is one of a sleeve or coating applied directly to the first metal material of the plurality of tube openings (lining/coating 40 covers the metal substrate 36 among the side walls of holes 38 at tube openings 32) prior to installation of each heat exchanger tube into each tube opening of the plurality of tube openings (per paragraph 0019-0021).
Claim 9 is/are considered product-by-process claim. The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation, in this case the ordering of a sleeve or coating formed on a tube prior to installation in the tube opening. 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. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113).
Regarding claim 11, Shimon discloses the claim limitations of claim 9 above and Shimon further discloses the galvanic isolator (40 ) is formed from a non-metallic material (lining/coating 40 is made of a fluoropolymer which is a corrosion resistant material per paragraph 0006, 0013 and 0019).
Regarding claim 14, Shimon discloses the claim limitations of claim 9 above and Shimon further discloses the coating is a polytetrafluoroethylene (PTFE) material (the lining/coating can be polytetrafluoroethylene, PTFE, with a steel substrate for smaller heat exchanger diameters per paragraph 0003).
Regarding claim 16, Shimon discloses the claim limitations of claim 9 above and Shimon further discloses installation of the plurality of heat exchanger tubes (14) into the plurality of tube openings (32) seals the plurality of tube openings (the fluids are separated by the tubes and the tube sheets per paragraph 0015).
Regarding claim 18, Shimon discloses (Figure 1-4) a method of assembling a heat exchanger comprising: defining a heat exchanger shell (shell 12 and tube sheets 20 and 26) formed from a first metal material (the tubes sheets 20 and 26 are made from steel at substrate 36 per paragraph 0018), the heat exchanger shell having a plurality of tube openings formed therein (tube openings 32); providing a plurality of heat exchanger tubes (tubes 14) formed from a second metal material different from the first metal material (reactive metals are disclosed as a material of manufacture of the internal components of the heat exchanger per paragraph 0013); installing a non-metallic galvanic isolator directly to the first metal material of the plurality of tube openings (lining/coating 40 and plug 42 covers the metal substrate 36 among the side walls of holes 38 at tube openings 32, and both are made of a fluoropolymer which is a corrosion resistant material per paragraphs 0006, 0013 and 0019); and installing the plurality of heat exchanger tubes into the plurality of tube openings (per paragraph 0024), such that the galvanic isolator (lining/coating 40 and plug 42) is disposed radially between the heat exchanger tube (14) and the opening wall (the lining/coating 40 and plug 42 lies between the walls of the substrate 36 at tube openings 32 and the tubes 14 as it coats the side walls of the holes 38 at tube openings 32 per paragraph 0019 and the plug 42 is located in each hole 38).
Regarding claim 19, Shimon discloses the claim limitations of claim 18 above and Shimon further discloses the galvanic isolator is a polymeric sleeve (plug 42 forms a sleeve for the tube 14 which is inserted into opening 32 at through passage 44 per paragraph 0021, where the plug 42 is made of PTFE per paragraph 0020).
Regarding claim 20, Shimon discloses the claim limitations of claim 18 above and Shimon further discloses the galvanic isolator is a coating applied to one of the opening wall or the heat exchanger tube (lining/coating 40 forms a coating of the openings 32 for the tubes at holes 38 on the tube sheet substrate per paragraph 0019).
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.
Claim(s) 2, 7, 10, 15, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shimon (US Patent Application Publication US 2022/0026156 A1).
Regarding claims 2 and 10, Shimon discloses the claim limitations of claims 1 and 9 above respectively and Shimon further discloses the heat exchanger shell is formed from steel (the tubes sheets 20 and 26 are made from steel per paragraph 0018); However Shimon does not explicitly disclose that one of the reactive metals that could form the internal components of the heat exchanger such as the tubes is aluminum. Aluminum heat exchanger tubes are notoriously well known in the art.
In the Office Action dated 1/21/2025, the Examiner took Official Notice that aluminum heat exchanger tubes are old and well known in the heat exchange art. Applicant has failed to traverse the(se) statement(s). As such, and in accordance with MPEP §2144.03, the statements are now considered admitted prior art.
Regarding claims 7 and 15, Shimon discloses the claim limitations of claims 1 and 9 above respectively, however Shimon is silent as to the galvanic isolator has a thickness in a range of 0.0005 to 0.001 inches as Shimon does not disclose any specific dimension for the thickness.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Shimon to have a galvanic isolator that has a thickness in a range of 0.0005 to 0.001 inches since it has been 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” See MPEP 2144.04 IV A. In the instant case, the device of Shimon would not operate differently with the claimed thickness and since the tubes are designed to fit within the coating 40of Shimon the device would function appropriately having the claimed thickness as the coating of Shimon simply has to connect the tube sheet and the tube. Further, applicant places no criticality on the range claimed, indicating simply that the thickness in some embodiments has the claimed ranges (per paragraph 0034 of the originally filed specification).
Regarding claim 17, Shimon discloses the claim limitations of claim 9 above respectively however Shimon does not explicitly disclose that the heat transfer fluid is water. As Shimon is silent as to the specific type of heat exchange fluids. Water as a heat exchange fluid is notoriously well known in the art.
In the Office Action dated 1/21/2025, the Examiner took Official Notice that water as a heat exchange fluid in shell and tube heat exchangers is old and well known in the heat exchange art. Applicant has failed to traverse the(se) statement(s). As such, and in accordance with MPEP §2144.03, the statements are now considered admitted prior art.
Response to Arguments
Applicant's arguments filed 1/23/2026 have been fully considered but they are not persuasive. Regarding the applicant’s arguments that Shimon does not disclose all of the claim limitations of amended independent claims 1, 9 and 18, specifically that the tubes are not formed from a second metal material. The examiner respectfully disagrees and notes that while paragraph 0014 of Shimon cited by the applicant provides for one example where the tubes are formed of glass or ceramic. The previous paragraph 0013 of Shimon clearly states that glass and ceramic are one example of materials that can be used where “internal components of the heat exchanger may be made from corrosion-resistant materials such as, but not limited to, fluoropolymers, ceramics, graphite, or reactive metals.” Where reactive metals are clearly disclosed by Simon as one example of materials that can be used to form the tubes. Therefore for at least this reason Shimon still discloses the claim limitations of the independent claims as noted in the rejections above.
Conclusion
THIS ACTION IS MADE FINAL. 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 HANS R. WEILAND whose telephone number is (571)272-9847. The examiner can normally be reached Monday-Thursday 6-3 EST and alternating Fridays.
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, Len Tran can be reached at 571-272-1184. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HANS R WEILAND/Examiner, Art Unit 3763 /LEN TRAN/Supervisory Patent Examiner, Art Unit 3763