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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e), 120 and 365(c) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 62/413,132, PCT/US17/58499, 16/345,139 and 17/651,880 fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application for the following reasons:
Applicant’s independent claims both recite a first fluid inlet for a thermal mixing valve external to the tank that draws water from a lower region of a tank. Applicant has added the limitations to the summary section of the specification in only the instant application. None of the preceding applications listed above recite or adequately describe such a feature of the inlets for the thermal mixing valve and therefore fail to provide support to the instant application.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the first fluid inlet that draws water from a lower region of the fluid chamber proximate to the bottom end of the tank recited in claims 1 and 13 must be shown or the feature(s) canceled from the claim(s). Applicant’s specification only describes 724 in Fig. 7B as an outlet to supply water to the bottom portion of the tank, not as an inlet for the mixing valve 701. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for 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.
Regarding claim 1:
Claim 1 recites “a first fluid inlet that draws water from a lower region of the fluid chamber proximate to the bottom end of the tank”. While the limitations of claim 1 were added into the summary section of the application’s specification, nowhere within the detailed description does such an inlet to a thermal mixing valve exist. Looking to the various embodiments described within the specification, the closest element to match the described first fluid inlet that the Examiner can find is opening 724 of Fig. 7B. While the relative location of this opening and its positioning on the cold water inlet conduit of the mixing valve matches what is described in the claims, nowhere within the specification is it described as an inlet to draw water from the tank. The specification only describes 724 as an outlet to supply cold water from a cold water source to the bottom of the tank, the opposite function as to what is claimed in claim 1 and the summary. Therefore, while Applicant has generically added the limitations of the independent claims into the summary of the application, the specification does not adequately describe the claimed limitations to convey to one of ordinary skill in the art that Applicant had possession of the claimed invention.
Regarding claim 13:
Claim 13 recites substantially the same limitations as claim 1 and is therefore rejected based on the same rationale presented above.
Dependent claims 2-12 and 14-20 are rejected based on their dependency to claims 1 and 13 respectively.
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 5 and 17 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.
Regarding claim 5:
Claim 5 recites “wherein the first fluid inlet is in fluid communication with the lower region of the fluid chamber proximate to the bottom end of the tank via an opening that is upstream from the thermal mixing valve” which renders the scope of the claim unclear due to the claims recited in claim 1 from which claim 5 depends. Claim 1 recites that the thermal mixing valve comprises a first fluid inlet, therefore the recitation in claim 5 stating that the first fluid inlet has an opening upstream from the thermal mixing valve is unclear since the inlet is part of the thermal mixing valve and cannot be upstream from itself. For compact prosecution, the fluid inlet is being interpreted as separate from the thermal mixing valve.
Regarding claim 17:
Claim 17 recites substantially the same limitation as claim 5 and claim 13 also states that the first fluid inlet is a part of the thermal mixing valve. Therefore, the same rationale utilized in the rejection of claim 5 above applies to claim 17.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3 and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 4877580 B2, hereinafter referred to as Ref. 1 (cited in the IDS filed on 11/20/2023).
Regarding claim 1, Ref. 1 teaches of:
A heating system, comprising:
a tank defining a fluid chamber and having a top end and a bottom end (Fig. 1, 2); and
a thermal mixing valve arranged exterior of the tank (Fig. 1, 20), the thermal mixing valve comprising:
a first fluid inlet that draws water from a lower region of the fluid chamber proximate to the bottom end of the tank (Fig. 1, 4 draws water from the lower region of 2)
a second fluid inlet that is in fluid communication with the fluid chamber (Fig. 1, 18), and
a fluid outlet exterior to the tank (Fig. 1, see outlet leading towards 23).
Regarding claim 2, Ref. 1 teaches of the heating system of claim 1, and Ref. 1 further teaches of:
wherein the first fluid inlet extends into the fluid chamber (Fig. 1, 4 extends into 2).
Regarding claim 3, Ref. 1 teaches of the heating system of claim 1, and Ref. 1 further teaches of:
wherein the second fluid inlet extends into the fluid chamber (Fig. 1, 18 extends into 2).
Regarding claim 5, Ref. 1 teaches of the heating system of claim 1, and Ref. 1 further teaches of:
wherein the first fluid inlet is in fluid communication with the lower region of the fluid chamber proximate to the bottom end of the tank via an opening that is upstream from the thermal mixing valve (Fig. 1, see inlet of 4 which would be upstream from the mixing valve)
Allowable Subject Matter
Claims 13-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Regarding claim 13:
Claim 13 recites that the heating system as a fluid chamber and a valve chamber arranged above the fluid chamber, a heating element arranged within the fluid chamber and a thermal mixing valve with a first and second fluid inlet wherein the first fluid inlet draws water from a lower region of the fluid chamber. The best known prior art is Ref. 1 utilized above. However, Ref. 1 fails to teach of the valve being above the fluid chamber and further does not teach of a heating element within the fluid chamber. Applicant has placed criticality on the location of the valve being above the chamber and Ref. 1 would require extensive physical changes to the arrangement shown in Fig. 1 to orient the valve above the fluid chamber within a valve chamber. Further it is not obvious to try to replace the mixing valve arrangement of an existing reference with the mixing valve arrangement shown in Fig. 1 of Ref. 1 as it would require that the first fluid inlet 4 be selectively removed so as to not include pipe 5 which is has a unique function to Ref. 1 based on the overall system. Therefore there are no prior art rejections applied to claim 13.
Claims 4 and 6-12 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Regarding claim 4:
Ref. 1 fails to teach of the first fluid inlet extending a further distance into the tank then the second inlet. A non-obvious modification to Ref. 1 would be required to orient the mixing valve of Ref. 1 above the tank.
Regarding claim 6:
Ref. 1 fails to teach of a heating element being in the fluid chamber. Ref. 1 is the only known reference that teaches of a thermal mixing valve with an inlet located proximate the bottom of the tank as described in claim 1. It would not be obvious to modify a primary reference to have the thermal mixing valve of claim 1 as it would require that the first fluid inlet 4 be selectively removed so as to not include pipe 5 which is has a unique function to Ref. 1 based on the overall system.
Regarding claim 10:
Ref. 1 fails to teach of the first fluid inlet comprising a conduit that extends through the fluid chamber. The first fluid inlet of Ref. 1 stops before extending through the fluid chamber.
Regarding claim 12:
Ref. 1 fails to teach of a cap disposed on the top end of the tank separating the fluid chamber and a mixing valve chamber. The mixing valve of Ref. 1 is not held within a chamber and is just external to the fluid chamber.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J GIORDANO whose telephone number is (571)272-8940. The examiner can normally be reached M-Fr 8 AM - 5 PM EST.
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, Steve McAllister can be reached at (571) 272-6785. 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.
/MICHAEL JAMES GIORDANO/Examiner, Art Unit 3762
/STEVEN B MCALLISTER/Supervisory Patent Examiner, Art Unit 3762