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 .
Status of Application
Claims 11-22 & 24-31 are pending and have been examined in this application.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 11-22 & 24-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,761,670 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because although different language is used, the limitations of the [670] read on the claims of the instant application.
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) 22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent Number 3,263,743 to Baumgarten.
A) As per Claims 22-23, Baumgarten teaches a terminal unit (Baumgarten: Figure 1), comprising:
a first chamber (Baumgarten: Figure 1, Item 8) configured to direct a first air flow therethrough, wherein the chamber is configured to receive the first air flow from a conditioned space;
a heating coil (Baumgarten: Figure 1, Item 7) disposed in the chamber and configured to heat the first air flow; and
a fan (Baumgarten: Figure 1, Item 10) disposed in the chamber upstream of the heating coil relative to a flow direction of the first air flow through the chamber, wherein the fan is configured to direct the first air flow across the heating coil, and wherein the terminal unit is configured to combine the first air flow with a second air flow received from an air handling unit and to discharge a mixture of the first air flow and the second air flow toward the conditioned space;
and a second chamber (Baumgarten: Figure 1, Item 2) configured to receive the second air flow and to direct the second air flow therethrough, wherein the second chamber is configured to direct the second air flow to bypass the heating coil in the first chamber.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 24 & 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Baumgarten in view of US Patent Publication Number 2004/0224627 A1 to Becelaere.
A) As per Claim 24, Baumgarten teaches that second chamber is configured to receive a conditioned air flow from the air handling unit as the second air flow.
Baumgarten does not teach a damper disposed within the second chamber, wherein the damper is configured to regulate flow of the second air flow through the second chamber.
However, Becelaere teaches a damper disposed within a chamber, wherein the damper is configured to regulate flow of the second air flow through the chamber (Becelaere: Figure 1, Item 20).
At the time the invention was effectively filed, it would have been obvious for one of ordinary skill in the art to have modified the teachings of Baumgarten by adding a fire damper in the second chamber, as taught by Becelaere, with a reasonable expectation of success of arriving at the claimed invention. At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to have modified Baumgarten with these aforementioned teachings of Becelaere with the motivation of preventing fire spread in case of a fire.
B) As per Claim 28, Baumgarten teaches a terminal unit (Baumgarten: Figure 1), comprising:
a first air chamber (Baumgarten: Figure 1, Item 2) configured to receive a first air flow from an air handling unit,
a second air chamber (Baumgarten: Figure 1, Item 8) configured to receive a second air flow from a conditioned space, wherein the second air chamber comprises a fan configured to draw the second air flow into the second air chamber;
a heating coil (Baumgarten: Figure 1, Item 7) configured to heat the second air flow, wherein the first air chamber is configured to direct the first air flow to bypass the second air chamber and the heating coil, and wherein the fan is configured to blow the second air flow towards the heating coil; and
a controller communicatively coupled to the heating coil, and the fan, wherein the controller is configured to:
and transmit a control signal to, the heating coil, the fan, or any combination thereof (Baumgarten: Figure 1, Item 13).
Baumgarten does not teach the first air chamber comprises a damper configured to regulate an amount of the first air flow discharged by the terminal unit;
the controller coupled to the damper configured to receive a feedback signal from a wireless device.
However, Becelaere teaches the first air chamber comprises a damper (Becelaere: Figure 1, Item 20)configured to regulate an amount of the first air flow discharged by the terminal unit;
the controller coupled to the damper configured to receive a feedback signal from a wireless device (Becelaere: Figure 1, Item 36; Paragraph 0059).
At the time the invention was effectively filed, it would have been obvious for one of ordinary skill in the art to have modified the teachings of Baumgarten by adding a fire damper with controller, as taught by Becelaere, with a reasonable expectation of success of arriving at the claimed invention. At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to have modified Baumgarten with these aforementioned teachings of Becelaere with the motivation of preventing fire spread in case of a fire and to communicate with other parts of the HVAC system to better control the environment and fire spread within the building.
Claim(s) 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Baumgarten in view of US Patent Number 9,823,023 B2 to Hoppen.
A) As per Claim 11, Baumgarten teaches a terminal unit (Baumgarten: Figure 1), comprising:
a first air chamber configured to receive a first air flow (Baumgarten: Figure 1, Item 2);
a second air chamber configured to receive a second air flow from a conditioned space (Baumgarten: Figure 1, Item 8);
a heating coil (Baumgarten: Figure 1, Item 7) disposed in the second air chamber and configured to heat the second air flow, wherein:
the first air chamber is configured to direct the first air flow to bypass the second air chamber and the heating coil; and
a fan (Baumgarten: Figure 1, Item 10) disposed in the second air chamber upstream of the heating coil relative to a flow direction of the second air flow through the second air chamber, wherein the terminal unit is configured to discharge a mixture of the first air flow and the second air flow heated by the heating coil toward the conditioned space.
Baumgarten does not teach that the heating coil is configured to slidingly engage with the terminal unit.
However, Hoppen teaches a heating coil is configured to slidingly engage with the terminal unit (Hoppen: Figure 8, Item 4 with 8).
At the time the invention was effectively filed, it would have been obvious for one of ordinary skill in the art to have modified the teachings of Baumgarten by having a removable cartridge system, as taught by Hoppen, with a reasonable expectation of success of arriving at the claimed invention. At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to have modified Baumgarten with these aforementioned teachings of Hoppen with the motivation of being able to easily do maintenance or replacement when needed.
B) As per Claim 12, Baumgarten in view of Hoppen teaches that the heating coil is removable from the second air chamber in a direction cross-wise to the flow direction of the second air flow through the second air chamber (Hoppen: Figure 8, Item 4 with 8).
C) As per Claim 13, Baumgarten in view of Hoppen teaches that one or more tracks, wherein the heating coil is configured to slidingly engage with the one or more tracks, and the heating coil is removeable from the second air chamber via the one or more tracks (Hoppen: Figure 4, Items 13-14).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Baumgarten in view of Hoppen as applied to claim 11 above, and further in view of Becelaere.
A) As per Claim 14, Baumgarten in view of Hoppen teaches the first air chamber is configured to receive conditioned air received from an air handling unit as the first air flow (Baumgarten: Figure 1, Item 2).
Baumgarten in view of Hoppen does not teach the terminal unit comprises a damper disposed in the first air chamber and configured to regulate flow of the first air flow through the first air chamber.
However, Becelaere teaches a damper (Becelaere: Figure 1, Item 20) disposed in the first air chamber and configured to regulate flow of the first air flow through the first air chamber.
At the time the invention was effectively filed, it would have been obvious for one of ordinary skill in the art to have modified the teachings of Baumgarten in view of Hoppen by adding a fire damper in the second chamber, as taught by Becelaere, with a reasonable expectation of success of arriving at the claimed invention. At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to have modified Baumgarten in view of Hoppen with these aforementioned teachings of Becelaere with the motivation of preventing fire spread in case of a fire.
Claim(s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Baumgarten in view of Becelaere as applied to claim 28 above, and further in view of Hoppen.
A) As per Claim 31, Baumgarten in view of Becelaere does not teach that the heating coil is configured to slidingly engage with the terminal unit.
However, Hoppen teaches a heating coil is configured to slidingly engage with the terminal unit (Hoppen: Figure 8, Item 4 with 8).
At the time the invention was effectively filed, it would have been obvious for one of ordinary skill in the art to have modified the teachings of Baumgarten in view of Becelaere by having a removable cartridge system, as taught by Hoppen, with a reasonable expectation of success of arriving at the claimed invention. At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to have modified Baumgarten in view of Becelaere with these aforementioned teachings of Hoppen with the motivation of being able to easily do maintenance or replacement when needed.
Response to Arguments
Some of Applicant’s arguments with respect to claim(s) 11-22 & 24-31 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.
Other of Applicant's arguments filed 09/10/2025 have been fully considered but they are not persuasive.
A) The Applicant asserts that because Item 6 and 8 are within the same casing, they are the same chamber. Therefore, the airflow from Item 2 does not bypass the second air chamber and heating coil. The Examiner respectfully disagrees. The airflow from Item 2 flows into plenum chamber Item 6 in which air from Item 8 is mixed after flowing through Item 7. The airflow from Item 2 does not flow through Item 7 or 8, and therefore it bypasses both the second chamber and the heating coil.
B) The Applicant asserts that Item 7 is not within Item 8. The Examiner respectfully disagrees. The second chamber can certainly be defined to be around Items 7-8, thereby meeting the claim limitation as current written.
C) The Applicant asserts that Becelaere does not teach a damper in the first chamber. The Examiner respectfully disagrees. Item 2 can certainly be analogous to the duct of Becelaere as it is an elongate airflow passage with nozzles coming out on top. One of ordinary skill in the art would find it obvious to place the damper of Becelaere within the first chamber for the reasons cited above.
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 ALLEN SCHULT whose telephone number is (571)272-8511. The examiner can normally be reached M-F 9AM-5PM.
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.
/Allen R. B. Schult/Primary Examiner, Art Unit 3762
Prosecution Insights