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 with traverse of Invention I and claims 1-10 in the reply filed on 04/16/2026 is acknowledged. The traversal is on the ground(s) that both inventions relate to exemplary aspects of a heating assembly for a water heater. This is not found persuasive because Invention II and claims 11-18 are not drawn to a water heater appliance. They are broadly drawn to a refrigeration system that is not specific to water heating and therefore is classified separate from the water heater appliance of Invention I.
The requirement is still deemed proper and is therefore made FINAL.
Claims 11-18 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 04/16/2026.
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 3-6, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bailey (US 2018/0017286 A1) in view of Teraki (JP 2016-205682 A).
Regarding claim 1, Bailey discloses a water heater appliance (Bailey 100) comprising:
A housing (Bailey 159);
A tank (Bailey 112) attached to the housing, the tank defining an interior volume (Bailey 114);
A refrigeration system (Bailey 120) comprising a sealed refrigerant loop in thermal communication with the tank to heat the interior volume (Bailey [0023]);
An electronics board (Bailey 150) attached to the housing apart from the tank (see Bailey figure 1);
Bailey is silent regarding a conductive interface proximal to the electronics board and a conduction line extending between the conductive interface and the sealed refrigerant loop to convey waste heat away from the electronics board to the sealed refrigerant loop.
However, Teraki teaches a cooling system for electrical components comprising an electronics board (Teraki 61) comprising heat generating components (Teraki 63), a conductive interface (Teraki 90, outer surface contacting heat generating components, see translation [0048]) proximal to the electronics board and spaced apart from the sealed refrigerant loop, the conductive interface comprising a plurality of fins (Teraki 91b and 92b); and a conduction line (Teraki 91a and 91b) extending between the conductive interface and the sealed refrigerant loop (see Teraki figures 1 and 2, examiner notes cooling pipe 15 is part of the refrigerant loop).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Bailey’s water heater appliance to incorporate Teraki’s teachings of cooling an electronics board utilizing a conductive interface and a conduction line in communication with a refrigerant loop to produce a predictable result of providing improved cooling for the electronics board to improve performance.
Regarding claim 3, Bailey and Teraki as applied to claim 1 teach the conductive interface (Teraki 90, outer surface) is connected to the electronics board (see Teraki figure 2) in conductive thermal communication therewith to draw heat from the electronics board to the conductive interface (Teraki translation [0010]).
Regarding claim 4, Bailey and Teraki as applied to claim 1 teach the conduction line is clipped to the sealed refrigerant loop by a refrigerant jacket (Teraki 80).
Regarding claim 5, Bailey and Teraki as applied to claim 1 teach the conduction line extends from a first end proximal to the conductive interface (see Teraki figure 2) to a second end proximal to the sealed refrigerant loop (see Teraki figure 2) and above the first end (see Teraki figure 2),
Regarding claim 6, Bailey and Teraki as applied to claim 5 teach the sealed refrigerant loop comprises an evaporator (Teraki 31), and wherein the second end of the conduction line is proximal to the evaporator (see Teraki figure 1) and in conductive thermal communication therewith (Teraki translation [0039], Examiner notes the cooling pipe must be in thermal communication with the evaporator to provide cooling).
Regarding claim 10, Bailey and Teraki as applied to claim 1 teach the electronics board and conduction line are disposed directly above the tank (see Bailey figure 2).
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.
Claim 1, 2, and 4-10 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 2, and 4-10 of copending Application No. 18/461185 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because The corresponding claims of the copending application recite each limitation with the only difference being the use of the term "heat pipe" instead of "conduction line" however a heat pipe conducts heat and therefore is being interpreted as reading upon the present claims which recite "conduction line".
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 2, and 7-9 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Current prior art of record teaches the conductive interface and conduction line are integral together and therefore it would not have been obvious to one of ordinary skill to separate the two as recited in claim 2. Further while Weyant (US 9,952,000 B1) teaches a heat pipe comprising conductor wings it would not have been obvious to one of ordinary skill in the art at the time of filing to modify Teraki’s conduction line structure which is in direct contact with the refrigerant loop to be directly attached to the evaporator .
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES R BRAWNER whose telephone number is (571)272-0228. The examiner can normally be reached Monday - Friday 8:00am - 4:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Helena Kosanovic can be reached at (571) 272-9059. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHARLES R BRAWNER/ Examiner, Art Unit 3762
/HELENA KOSANOVIC/ Supervisory Patent Examiner, Art Unit 3762
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