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 group I, claims 22-29 in the reply filed on February 02, 2026 is acknowledged.
Claims 30-42 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on February 02, 2026.
Specification
The title of the invention is not descriptive in view of the Restriction/Election. A new title is required that is clearly indicative of the invention to which the claims are directed.
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 22-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-21 of U.S. Patent No. 11,920,298 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the differences are obvious, i.e., while the current application recites, in the preamble, a System for controlling a temperature of a foamed suspension of fiber for forming a web, instead of a system for forming a web, the dependent claims of the current application evidences that a web is formed, see claim 23. The independent claim of the current application while reciting a heat-exchanger, does not recite the details of it as recited in the US patent; however claim 24 of the current application recites such details and thus the scope of claim 24 overlaps the one of the US Patent or at the very least the use of heat exchanger as claimed in the US patent would have been obvious to one of ordinary skill in the art, since it is known as evidenced by claim 24.
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) 22-29 are rejected under 35 U.S.C. 103 as being unpatentable over Swails et al., (hereinafter Swails), US Patent Application Publication No. 2019/0161915 A1 in view of Wang et al., (hereinafter Wang) in “ Effect of Temperature on Foaming Ability and Foam Stability of Typical Surfactants Used for Foaming Agent,” and Nanbu et al., (hereinafter Nanbu), JP-H1177725 A (Machine Translation Used for This Office Action).
With regard to claims 22-23, Swails teaches a foam forming system and process of making a foamed web/paper, in which fibers, a surfactant(s) and a liquid/water is added into a tank and mixed to form a foamed suspension of fibers which is then added to a formed surface to form a web; see abstract, figure 1 and ¶-[0007]-[0009]. Swails does not teach the recirculation of at least part of the foamed fibers and the use of a heat exchanger as claimed in claim 22. However, Wang teaches that foams decrease stability with the increasing of temperature; see abstract on page 615 and Section: “Effect of Foaming Temperature on FS” (FS= Foam Stability), starting on page 620 through page 621, and it is well-known that the temperature of foam increases during the mixing/agitation process1. Therefore, maintaining the temperature of the foam, by cooling the foam, would have been obvious to one of ordinary skill in the art. One of the way to this, i.e., the cooling of the foam in the mixing tank to maintain the foam at desired temperature level is disclosed by Nanbu, which teaches that recirculating a foam, including a pump and using a heat exchanger as claimed; see abstract, figures and ¶-[0006]-[0008]. Therefore, recirculating at least part of the foam to maintain the foam temperature of the primary reference using a recirculating device suggested by Nanbu would have been obvious to one of ordinary skill in the art in order to maintain the stability of the foam, i.e., preventing the decrease of foam half-live by the increase of the temperature, as demonstrated/taught by Wang.
Regarding to claims 24-26, Nanbu teaches the heat-exchanger in communication with a cooling fluid; see ¶-[0009]. Moreover, that this is how heat exchangers work exchanging temperature with another fluid and if the temperature of the foam is going to be reduced, then it is obvious that a fluid with a lower temperature has to be used, i.e., a cooling fluid. Note also that claim 25 recites two types of conventional heat-exchangers2, i.e. working in counter-current/flow, where the fluids path are in the opposite direction and co-current/parallel flow, where the fluids path are in the same direction and thus this is implicit to the Nanbu’s heat-exchanger or at the very least using one of said common heat-exchanger would have been obvious to one of ordinary skill in the art, since he/she would have reasonable expectation of success if one of those were used. As to claim 26, shell and tube heat-exchanger are very well-known in the art3 and the use of such device(s) would be considered obvious, absent a showing of unexpected results.
With regard to claims 27 and 29, Nanbu teaches the use of sensors and controllers to generate temperature information and control the heat-exchanger as claimed; see ¶-[0012].
Regarding to claim 28, while Nanbu is silent with regard to the tube diameter, however, choosing a heat exchanger with desired diameter is and obvious design choice to control the temperature difference between desired range.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure in eth art of “Process and System for Controlling Temperature of a Circulating Foamed Fluid.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE A FORTUNA whose telephone number is (571)272-1188. The examiner can normally be reached MONDAY- FRIDAY 11:30 PM- 9:00 PM.
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, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSE A FORTUNA/Primary Examiner, Art Unit 1748
JAF
1 This is evidenced by applicants in the background of the art section, see lines 15-21 on page 1 of the specification.
2 Type of Heat-Exchanger by the Flow Direction
Heat exchangers are classified by the direction of fluid flow within the exchanger. The main types based on flow direction are:
Parallel Flow: Both fluids move in the same direction, which is simpler to design but less efficient due to a decrease in temperature difference as they move forward.
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Counter-Flow: Fluids move in opposite directions, maintaining a higher temperature difference and improving efficiency. This configuration is widely used in industrial applications where high efficiency is required.
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Cross-Flow: Fluids move perpendicular to each other, providing moderate efficiency and allowing easier construction in limited spaces.
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Each flow arrangement has its own set of advantages and disadvantages, and the choice of flow direction should be based on the specific requirements of the heat exchange process.
3 A shell-and-tube heat exchanger is a class of heat exchanger designs.[1][2] It is the most common type of heat exchanger in oil refineries and other large chemical processes, and is suited for higher-pressure applications. As its name implies, this type of heat exchanger consists of a shell (a large pressure vessel) with a bundle of tubes inside it. One fluid runs through the tubes, and another fluid flows over the tubes (through the shell) to transfer heat between the two fluids. The set of tubes is called a tube bundle, and may be composed of several types of tubes: plain, longitudinally finned, etc. Shell-and-tube heat exchanger - Wikipedia.
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