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 .
Information Disclosure Statement
The submitted information disclosure statement(s) (IDS) is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is/are being considered by the examiner.
Claim Objections
The following claims are objected to because of informalities, wherein appropriate correction is required:
In claim 1: the recitation of “the refrigeration cycle apparatus”, in line 1, should be amended to –the refrigeration cycle apparatus:— (i.e., by adding a colon “:”), for grammatical purposes.
In claim 2: the recitation of “comprising”, in the preamble, should instead be amended to recite –comprising:— (i.e., by adding a colon “:”), for grammatical purposes.
In claim 3: the recitation of “comprising”, in the preamble, should instead be amended to recite –comprising:— (i.e., by adding a colon “:”), for grammatical purposes.
In claim 4: the recitation of “comprising”, in the preamble, should instead be amended to recite –comprising:— (i.e., by adding a colon “:”), for grammatical purposes.
In claim 5: the recitation of “wherein”, in the preamble, should instead be amended to recite –wherein:— (i.e., by adding a colon “:”), for grammatical purposes.
In claim 6: the recitation of “wherein”, in the preamble, should instead be amended to recite –wherein:— (i.e., by adding a colon “:”), for grammatical purposes.
In claim 7: the recitation of “the refrigeration cycle apparatus”, in line 1, should be amended to –the refrigeration cycle apparatus:— (i.e., by adding a colon “:”), for grammatical purposes.
In claim 8: the recitation of “wherein”, in the preamble, should instead be amended to recite –wherein:— (i.e., by adding a colon “:”), for grammatical purposes.
In claim 9: the recitation of “comprising”, in the preamble, should instead be amended to recite –comprising:— (i.e., by adding a colon “:”), for grammatical purposes.
In claim 10: the recitation of “comprising”, in the preamble, should instead be amended to recite –comprising:— (i.e., by adding a colon “:”), for grammatical purposes.
In claim 11: the recitation of “comprising”, in the preamble, should instead be amended to recite –comprising:— (i.e., by adding a colon “:”), for grammatical purposes.
In claim 12: the recitation of “comprising”, in the preamble, should instead be amended to recite –comprising:— (i.e., by adding a colon “:”), for grammatical purposes.
In claim 13: the recitation of “wherein”, in the preamble, should instead be amended to recite –wherein:— (i.e., by adding a colon “:”), for grammatical purposes.
In claim 14: the recitation of “wherein”, in the preamble, should instead be amended to recite –wherein:— (i.e., by adding a colon “:”), for grammatical purposes.
In claim 15: the recitation of “wherein”, in the preamble, should instead be amended to recite –wherein:— (i.e., by adding a colon “:”), for grammatical purposes.
In claim 16:
The recitation of “wherein”, in the preamble, should instead be amended to recite –wherein:— (i.e., by adding a colon “:”), for grammatical purposes.
The recitation of “The”, in line 2, should be amended to –the— (i.e., lowercase), for grammatical purposes.
In claim 17: the recitation of “wherein”, in the preamble, should instead be amended to recite –wherein:— (i.e., by adding a colon “:”), for grammatical purposes.
In claim 18: the recitation of “wherein”, in the preamble, should instead be amended to recite –wherein:— (i.e., by adding a colon “:”), for grammatical purposes.
In claim 19: the recitation of “wherein”, in the preamble, should instead be amended to recite –wherein:— (i.e., by adding a colon “:”), for grammatical purposes.
In claim 20: the recitation of “comprising”, in the preamble, should instead be amended to recite –comprising:— (i.e., by adding a colon “:”), for grammatical purposes.
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.
Claims 1-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 contains the following issues:
The claim is directed to “[a] refrigeration cycle apparatus” (emphasis added), but the body of the claim appears to be directed to method steps (i.e., “performs […]”). According to MPEP § 2173.05(p) (II), “[a] single claim which claims both an apparatus and method steps of using the apparatus is indefinite under 35 U.S.C. 112(b)”. In the instant case, the preamble of the claim recites one category of invention (i.e., an apparatus), whereas the body recites another (i.e., method steps for using the apparatus). As such, the scope of the claim is unclear, since one of ordinary skill in the art would not be able to ascertain whether anticipation or infringement occur with a prior art apparatus, per se, or the specific steps of using such apparatus. For examination purposes, the claims will be construed as being directed to a method of using a refrigeration cycle apparatus.
Claim 6 contains the following issues:
The claim recites the term “collectable”, twice, wherein it is unclear if anticipation or infringement require the per se collecting of the refrigerants, or merely a capability of doing so. In other words, as currently recited, the claim appears to merely allude to the ability of the refrigerant being collected, rather than the action of collecting the refrigerant itself, which is ambiguous. For examination purposes, both recitations of “collectable” will be construed as –collected—.
Claim 7 contains the following issues:
The claim is directed to “[a] refrigeration cycle apparatus” (emphasis added), but the body of the claim appears to be directed to method steps (i.e., “performs […]”). According to MPEP § 2173.05(p) (II), “[a] single claim which claims both an apparatus and method steps of using the apparatus is indefinite under 35 U.S.C. 112(b)”. In the instant case, the preamble of the claim recites one category of invention (i.e., an apparatus), whereas the body recites another (i.e., method steps for using the apparatus). As such, the scope of the claim is unclear, since one of ordinary skill in the art would not be able to ascertain whether anticipation or infringement occur with a prior art apparatus, or the specific steps of using such apparatus. For examination purposes, the claims will be construed as being directed to a method of using a refrigeration cycle apparatus.
Claim 17 contains the following issues:
The claim recites the term “collectable”, twice, wherein it is unclear if anticipation or infringement require the per se collecting of the refrigerants, or merely a capability of doing so. In other words, as currently recited, the claim appears to merely allude to the ability of the refrigerant being collected, rather than the action of collecting the refrigerant itself, which is ambiguous. For examination purposes, both recitations of “collectable” will be construed as –collected—.
Claim 18 contains the following issues:
The claim recites the term “collectable”, twice, wherein it is unclear if anticipation or infringement require the per se collecting of the refrigerants, or merely a capability of doing so. In other words, as currently recited, the claim appears to merely allude to the ability of the refrigerant being collected, rather than the action of collecting the refrigerant itself, which is ambiguous. For examination purposes, both recitations of “collectable” will be construed as –collected—.
Claim 19 contains the following issues:
The claim recites the term “collectable”, twice, wherein it is unclear if anticipation or infringement require the per se collecting of the refrigerants, or merely a capability of doing so. In other words, as currently recited, the claim appears to merely allude to the ability of the refrigerant being collected, rather than the action of collecting the refrigerant itself, which is ambiguous. For examination purposes, both recitations of “collectable” will be construed as –collected—.
Any remaining claims are rejected at least by virtue of their dependency.
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.
Claims 1 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 20150338145 A1), herein Kim in view of Miyakoshi (JP 2021011985 A).
As per claim 1, Kim discloses a refrigeration cycle apparatus (2), wherein the refrigeration cycle apparatus (2): performs a heating operation (see fig. 1) by performing a two-stage refrigeration cycle (via 10 and 110; see ¶ 20), the two-stage refrigeration cycle including a use-side refrigeration cycle (via 30) using a first refrigerant (e.g., through 11, 21, 31, etc.) and a heat-source-side refrigeration cycle (via 120) using a second refrigerant (e.g., through 111, 112, 131, etc.), and performs a cooling operation (see fig. 2 and ¶¶ 20, 23, 80, etc.) by performing a single-stage refrigeration cycle (via 110) using the first refrigerant (e.g., see at least fig. 2 and ¶ 80).
However, Kim may not appear to explicitly disclose the first refrigerant having 1MPa or less at 30°C nor the second refrigerant having 1.5 MPa or more at 30°C.
On the other hand, Miyakoshi, directed to a two-stage system, appears to suggest pressure ranges below and above 1 MPa (see figs. 2 and 3).
Furthermore, it has been held that some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention is a support for a conclusion of obviousness which is consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham, if the following findings can be articulated: (1) a finding that there was some teaching, suggestion, or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; (2) a finding that there was reasonable expectation of success; and (3) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.1
As per (1), it has been held that, generally, differences in temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such temperature is critical.2 Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.3 Furthermore, the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.4 A change in degree, inter alia, “will not sustain a patent”,5 since it is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.6 Thus, in order to properly support a rejection on the basis that an invention is the result of “routine optimization”, the examiner must make findings of relevant facts, and present the underpinning reasoning in sufficient detail. The articulated rationale must include an explanation of why it would have been routine optimization to arrive at the claimed invention and why a person of ordinary skill in the art would have had a reasonable expectation of success to formulate the claimed range.7 The prior art of Miyakoshi discloses two pressure-enthalpy diagrams (figs. 2-3) showing a wide range of operating pressures (and by proxy, temperatures). The prior art explains the different supercooling degrees (C1, C2) for the high-source and low-source sides, wherein the coefficient of performance is improved as compared with a conventional refrigeration cycle (see last paragraphs in page 5 of the translation).
As per (2), one of ordinary skill in the art would recognize that since the prior art of Miyakoshi has successfully implemented its own teachings with regards to the pressure and temperatures, there would also be a reasonable expectation of success if said teachings were to be incorporated into the teachings of Kim. Said reasonable expectation of success is apparent from the fact that both Kim and Miyakoshi are analogous to each other, as well as are analogous to the claimed invention, by virtue of being within the same field of endeavor (i.e. multi-stage systems). Thus, one of ordinary skill in the art would recognize that the teachings of the prior art are compatible and combinable, without yielding unpredictable results.
As per (3), one of ordinary skill in the art, when considering the aforementioned evidence, would comprehend that the prior art teachings of Kim may be significantly improved by incorporating the prior art teachings of Miyakoshi, since the teachings thereof serve to complement the teachings of Kim by virtue of suggesting an improved coefficient of performance compared to conventional systems.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have taken the teachings of Kim and to have modified them with the teachings of Miyakoshi, by having the first refrigerant having 1MPa or less at 30°C and the second refrigerant having 1.5 MPa or more at 30°C, in order to improve the coefficient of performance, as similarly suggested by Miyakoshi, without yielding unpredictable results.
As per claim 14, Kim as modified discloses wherein the refrigeration cycle apparatus separates the first refrigerant (of 2 of Kim) and the second refrigerant (of 4 of Kim) from each other (see separate circuits shown in fig. 1 of Kim).
As per claim 15, Kim as modified discloses wherein the first refrigerant includes at least one of R1234yf or R1234ze (see third to last paragraph in page 2 of the translation of Miyakoshi).
As per claim 16, Kim as modified discloses wherein the second refrigerant includes carbon dioxide (see third to last paragraph in page 2 of the translation of Miyakoshi).
Allowable Subject Matter
Claims 7-12 and 20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action. Claims 2-6, 13 and 17-19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action and to include all8 of the limitations of the base claim and any intervening claims. The prior art, when taken as a whole, does not appear to reasonably anticipate or render prima facie obvious the claimed invention as currently recited in at least claims 2, 7 and 13. It should be noted that any modifications to the prior art of Kim would render it inoperable for its intended purpose. For instance, Kim is not designed to operate the outdoor heat exchanger as an evaporator, use a two-stage operation during cooling, or mix the refrigerants from each stage.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MIGUEL A DIAZ whose telephone number is (313)446-6587. The examiner can normally be reached Monday - Friday: 9:00 AM - 5:00 PM Eastern Time.
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, Jianying C. Atkisson can be reached at (571) 270-7740. 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.
/MIGUEL A DIAZ/Primary Examiner, Art Unit 3763
1 See MPEP § 2143.
2 Per MPEP §§ 716.02 & 2144.05 (III) (A), applicants can rebut a prima facie case of obviousness by showing the criticality of the range, wherein the claimed range achieves unexpected results relative to the prior art range.
3 In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
4 Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382.
5 Smith v. Nichols, 88 U.S. 112, 118-19 (1874).
6 In re Williams, 36 F.2d 436, 438 (CCPA 1929).
7 In re Stepan, 868 F.3d 1342, 1346, 123 USPQ2d 1838, 1841 (Fed. Cir. 2017).
8 Disclaimer: failure to include all the intervening limitations will result in a different claim scope, which may require a new grounds of rejection prior to a final determination of allowability.