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 .
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 1-14 are rejected under 35 U.S.C. 112(a), 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.
In claims 1, 3, 8 and 10, Applicant utilizes language interpreted to invoke 35 U.S.C. 112(f) as described under the heading “Claim Interpretation” in the non-final Office action mailed May 22, 2025. As required by 35 U.S.C. 112(f), the claimed presetting module, judging module, a target pressure value acquisition module, a pressure detection module, a control module, operating mode detection module, are limited to what is disclosed in the written description and equivalents thereof.
A claim limitation expressed in means- (or step-) plus-function language "shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. If the specification fails to disclose sufficient corresponding structure, materials, or acts that perform the entire claimed function, then the claim limitation is indefinite because the applicant has in effect failed to particularly point out and distinctly claim the invention as required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. In re Donaldson Co., 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994) (en banc). Such a limitation also lacks an adequate written description as required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because an indefinite, unbounded functional limitation would cover all ways of performing a function and indicate that the inventor has not provided sufficient disclosure to show possession of the invention. See also MPEP § 2181. Since Applicant’s disclosure fails to clearly link the corresponding structure, materials, or acts that perform the entire claimed function the presetting module, judging module, a target pressure value acquisition module, a pressure detection module, a control module, operating mode detection module, the claims lack adequate written description
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 1-10 are 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.
With respect to claim 1, the claim requires a presetting module configured to preset the heat exchanger to be on an evaporating side and on a condensing side, and preset a dataset of preset target pressure values at different ambient temperatures. This claim is indefinite because it cannot be determined what would or would not be considered presetting the heat exchanger to be on an evaporating side and on a condensing side, nor what would or would not be considered presetting a dataset of preset target pressure values at different ambient temperatures. Applicant’s disclosure provides no further explanation as to what would or would not be considered “presetting”. Is the act of providing a heat pump with an indoor heat exchanger and an outdoor heat exchanger count as “presetting the heat exchanger to be on an evaporating side and on a condensing side”? Does a controller have to be programmed to recognize a heat exchanger that can be used in either a condensing or evaporating function? Or is there some other structure or steps that would need to be performed to be considered “presetting the heat exchanger to be on an evaporating side and on a condensing side”? Similarly, would writing down a table for pressure values at different ambient temperatures be considered presetting “a dataset of preset target pressure values at different ambient temperatures”? What if the values were only recognized in the head of an operator? Or does the different target values have to be entered into a controller? With regards to both of these limitations, Applicant’s specification does not provide any further guidance that would inform one skilled in the art what would or would not be considered presetting the heat exchanger to be on an evaporating side and on a condensing side, and presetting a dataset of preset target pressure values at different ambient temperatures beyond what is claimed. Accordingly, one skilled in the art would not be able to ascertain what would or would not be preset the heat exchanger to be on an evaporating side and on a condensing side, and preset a dataset of preset target pressure values at different ambient temperatures and the claim is indefinite.
With respect to claim 8, the claim requires a step of presetting the heat exchanger to be on an evaporating side and on a condensing side, and presetting a dataset of preset target pressure values at different ambient temperatures. This claim is indefinite because it cannot be determined what would or would not be considered presetting the heat exchanger to be on an evaporating side and on a condensing side, nor what would or would not be considered presetting a dataset of preset target pressure values at different ambient temperatures. Applicant’s disclosure provides no further explanation as to what would or would not be considered “presetting”. Is the act of providing a heat pump with an indoor heat exchanger and an outdoor heat exchanger count as “presetting the heat exchanger to be on an evaporating side and on a condensing side”? Does a controller have to be programmed to recognize a heat exchanger that can be used in either a condensing or evaporating function? Or is there some other structure or steps that would need to be performed to be considered “presetting the heat exchanger to be on an evaporating side and on a condensing side”? Similarly, would just writing down a table for pressure values at different ambient temperatures be considered presetting “a dataset of preset target pressure values at different ambient temperatures”? What if the values were only recognized in the head of an operator? Or does the different target values have to be entered into a controller? With regards to both of these limitations, Applicant’s specification does not provide any further guidance that would inform one skilled in the art what would or would not be considered presetting the heat exchanger to be on an evaporating side and on a condensing side, and presetting a dataset of preset target pressure values at different ambient temperatures beyond what is claimed. Accordingly, one skilled in the art would not be able to ascertain what would or would not be preset the heat exchanger to be on an evaporating side and on a condensing side, and preset a dataset of preset target pressure values at different ambient temperatures and the claim is indefinite.
With further respect to claims 1, 3, 8 and 10, many terms the claims have been interpreted under 35 USC 112(f) as discussed “in the non-final Office action mailed May 22, 2025. Since 35 USC 112(f) specifically requires that if one employs means plus function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant by that language, if an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by 35 USC 112(b). In the present case, applicant does not explicitly state what corresponding structure or material acts will perform the recited function, nor does Applicant implicitly set forth such structure which would be clear to those skilled in the art what structure or material acts correspond to the means-plus-function limitation. There is no structure or material present in the specification that would perform the entire claimed functions. There is no disclosure of a controller programmed to so perform, no computer or algorithm, nor any of the related structural components that would be necessary to perform the claimed specialized functions in their entirety. Since there is insufficient structure in the specification to perform the specialized functions claimed, the claims are indefinite as it cannot be determined what structure would or would not encompass the structure for so performing.
Claims 2-7 and 9-14 are also rejected by virtue of dependency.
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.
Claims 1-3 and 8-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wo2021/135679 to Song et al. hereinafter referred to as Song (see English language translation provided herewith).
In reference to claims 1 and 8, Song discloses the claimed invention including:
A control device for a DC fan of an air source heat pump system/air conditioning system, the DC fan being disposed corresponding in position to a heat exchanger (see underlined portion of page 6 of the English language translation, the DC fan is selected as the external fan 7), the control device comprising:
a presetting module configured to preset the heat exchanger to be on an evaporating side and on a condensing side (description of an air conditioner operating in a refrigeration mode and heating mode on page 6 is interpreted to be sufficient to meet the limitations of presetting the heat exchanger to be on an evaporating side and on a condensing side, i.e. different modes of operation), and preset a dataset of preset target pressure values at different ambient temperatures (see underlined portion of page 7 the English language translation, Compare the pressure value with a preset pressure threshold; for example, in a more preferred embodiment, the preset pressure threshold is determined based on the outdoor ambient temperature);
a judging module configured to judge whether the DC fan is on the evaporating side or on the condensing side in real time (disclosure of differing operations based on whether the air conditioner is in the heating or refrigerating mode implies that the system would necessarily judge if the DC fan is on the condensing or evaporating side, see page 7. After obtaining the pressure value, compare the pressure value with the preset pressure threshold value under the current outdoor ambient temperature, that is, in the cooling mode, compare the high pressure value with the preset high pressure threshold value, and in the heating mode, compare the low pressure pressure The value is compared with the preset low pressure threshold);
a target pressure value acquisition module communicatively connected with the presetting module and the judgment module, the target pressure value acquisition module configured to, according to a judgment result of the judgment module, an ambient temperature of an environment in which the DC fan operates and the dataset of preset target pressure values, obtain a preset target pressure value of the heat exchanger corresponding in position to the DC fan at the ambient temperature (See page 7. After comparing the pressure value with the preset pressure threshold, it is possible to know whether the current high and low pressure of the air conditioner meets the requirements. Such an operation would require acquiring the target pressure value);
a pressure detection module configured to detect an actual pressure Pa of the heat exchanger in real time (see page 6, after the external fan is started, obtain the pressure value of the refrigerant pipeline through the pressure sensor. Note the pressure value at 9 is considered to represent the pressure value at the entrance of heat exchanger 3 and the pressure value at 10 is considered to represent the pressure value of the exit of heat exchanger 5 since the values will be substantially the same); and
a control module communicatively connected with the pressure detection module and the target pressure value acquisition module, the control module configured to adjust the speed of the DC fan according to a comparison result between the actual pressure Pa and the preset target pressure value (see underlined portion of page 7 of the English language translation. when the high and low pressure do not meet the requirements, the pressure value can be changed by adjusting the speed of the external fan).
wherein the control module is configured to adjust the speed of the DC fan further based on a combination of: an operating mode of the air source heat pump system/air conditioning system (refrigeration mode), positioning of the DC fan on the condensing side or on the evaporating side of the heat exchanger (see underlined portion of page 6 of the English language translation where the pressure of the external fan with outdoor heat exchanger 3 is collected which would be the condensing side during refrigeration mode), and type of the heat exchanger (in the refrigeration mode the outdoor heat exchanger would be the condenser). See the underlined portion of page 7 the English language translation where the speed of the fan is adjusted based on the mode being in the refrigeration mode.
With respect to claim 8, In process or method claims, a prior art device anticipates a claimed process or method if the device carries out the process during normal operation. Since the device taught by Song is the same as a device described in the applicant's specification for carrying out the claimed method, it can be assumed that the devices of the prior art will inherently perform the claimed process, see MPEP 2112.02, Process Claims.
In reference to claims 2 and 9, Song discloses the claimed invention including:
the relationship between the ambient temperature and the preset target pressure value is a linear relationship or a non-linear relationship. Although Song is silent as to the relationship between the ambient and preset target pressure, the relationship with always be either linear or non-linear.
In reference to claims 3 and 10, Song discloses the claimed invention including:
an operating mode detection module (detection step) configured to detect an operating mode in which the air source heat pump system/air conditioning system operates; the judgment module communicatively connected with the operating mode detection module, and the judgment module configured to judge whether the DC fan is on the evaporating side or on the condensing side according to the operating mode and the position of the DC fan. This function would be inherently necessary. In order to perform the method disclosed by Song, there would necessarily be a detection module (step) in order to accurately perform the method of refrigeration and/or heating as described on at least page 7 of the English language translation.
In reference to claim 11, Song discloses the claimed invention including:
the control module is further configured to cyclically adjust the speed of the DC fan based on real-time comparison between the actual pressure (Pa) and the preset target pressure value. See figure 5 and paragraph 3 of page 11 of the English language translation where the method returns to judge Pd and P after 10 seconds. This return after 10 seconds is considered a cyclical adjustment.
In reference to claim 12, Song discloses the claimed invention including:
the control module is further configured to adjust the speed of the DC fan in multiple predefined intervals. See figure 5 and paragraph 3 of page 11 of the English language translation where the method returns to judge Pd and P after 10 seconds. The predefined intervals would be 10 seconds.
In reference to claim 13, Song discloses the claimed invention including:
the control module is configured to adjust the speed of the DC fan based on a multi-threshold comparison between the actual pressure (Pa) and the preset target pressure value, with different fan speed increments or decrements corresponding to predefined pressure difference bands. See page 11 where the multi thresholds and pressure difference bands are P .sub.d > P .sub.1tar, and; P .sub.d <P .sub.1tar, and where the with different fan speed increments or decrements are increase by 10rmp and decrease by 10rpms.
In reference to claim 14, Song discloses the claimed invention including:
the control module is further configured to maintain the speed of the DC fan when the actual pressure (Pa) is within a pressure band defined between the preset target pressure value and a threshold value offset. See page 11 where the maintain speed is maintained when P .sub.d =P .sub.1tar; where P .sub.d is the actual pressure and P .sub.1tar is the target pressure value and the threshold value offset would be 0 (zero).
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.
Claims 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Song in view of US20120253543 to Laughman et al., hereinafter referred to as Laughman.
In reference to claim 4, Song and Laughman disclose the claimed invention including:
Song discloses when in the cooling mode, the DC fan is on the condensing side, the heat exchanger is an outdoor side condenser, the ambient temperature is an outdoor ambient temperature, and the preset target pressure value corresponding to the heat exchanger is Po, if Po + c < Pa, control the speed of the DC fan to increase by n revolutions per minute; if Pa < Po - e, control the speed of the DC fan to decrease by n revolutions per minute; and if Po < Pa < Po + d, maintain the current speed; wherein, c, d, and e are all pressure value constants, and c > d, and n and m are constants, and n > m (see underlined portion of pages 9-11 of the English language translation).
Song fails to disclose if Po + d < Pa < Po + c, control the speed of the DC fan to increase by m revolutions per minute nor if Po - e < Pa < Po, control the speed of the DC fan to decrease by m revolutions per minute.
However, Laughman teaches that in the art of vapor compression systems, that the condenser fan speeds can be optimized to have varying levels of rotations per minute in order to optimize the energy consumption of the system [0077]. Accordingly, the rotation speed of the condenser fan is recognized as a result effective variable, because it is a variable that achieves a recognized result. That is, energy consumption of the system. It would have been obvious to one having ordinary skill in the art at the time the invention was made to control an optimum rotational speed of the condensing fan of Song such that if Po + d < Pa < Po + c, control the speed of the DC fan to increase by m revolutions per minute and if Po - e < Pa < Po, control the speed of the DC fan to decrease by m revolutions per minute, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering optimum or workable ranges involves only routine skill in the art, see MPEP 2144.05 (II).
In reference to claim 5, Song and Laughman disclose the claimed invention including:
Song discloses when in the cooling mode, the DC fan is on the evaporating side, the heat exchanger is an indoor side evaporator, the ambient temperature is an indoor ambient temperature, and the preset target pressure value corresponding to the heat exchanger is Pp', if Pp' + c < Pa, control the speed of the DC fan to decrease by n revolutions per minute (10 rpm); if Pa < Pp' - e, control the speed of the DC fan to increase by n revolutions per minute (10 rpm); and if Pp'< Pa < Pp' + d, maintain the current speed; wherein, c, d, and e are all pressure value constants, and c > d, and n and m are constants, and n > m (see underlined portion of page 11 of the English language translation).
Song fails to disclose; if Pp' + d < Pa < Pp' + c, control the speed of the DC fan to decrease by m revolutions per minute nor if Pp' - e < Pa < Pp', control the speed of the DC fan to increase by m revolutions per minute.
However, Laughman teaches that in the art of vapor compression systems, that the evaporator fan speeds can be optimized to have varying levels of rotations per minute in order to optimize the energy consumption of the system [0077]. Accordingly, the rotation speed of the evaporator fan is recognized as a result effective variable, because it is a variable that achieves a recognized result. That is, energy consumption of the system. It would have been obvious to one having ordinary skill in the art at the time the invention was made to control an optimum rotational speed of the condensing fan of Song such that if Pp' + d < Pa < Pp' + c, control the speed of the DC fan to decrease by m revolutions per minute and if Pp' - e < Pa < Pp', control the speed of the DC fan to increase by m revolutions per minute, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering optimum or workable ranges involves only routine skill in the art, see MPEP 2144.05 (II).
In reference to claim 6, Song and Laughman disclose the claimed invention including:
Song discloses when in the heating mode, the DC fan is on the evaporating side, the heat exchanger is an outdoor side evaporator, the ambient temperature is an outdoor ambient temperature, and the preset target pressure value corresponding to the heat exchanger is Pp, if Pp + c < Pa, control the speed of the DC fan to decrease by n revolutions per minute; if Pa < Pp - e, control the speed of the DC fan to increase by n revolutions per minute; and if Pp < Pa < Pp + d, maintain the current speed; wherein, c, d, and e are all pressure value constants, and c > d, and n and m are constants, and n > m (see underlined portion of pages 13 and 14 of the English language translation).
Song fails to disclose if Pp + d < Pa < Pp + c, control the speed of the DC fan to decrease by m revolutions per minute nor if Pp - e < Pa < Pp nor control the speed of the DC fan to increase by m revolutions per minute.
However, Laughman teaches that in the art of vapor compression systems, that the evaporator fan speeds can be optimized to have varying levels of rotations per minute in order to optimize the energy consumption of the system [0077]. Accordingly, the rotation speed of the evaporator fan is recognized as a result effective variable, because it is a variable that achieves a recognized result. That is, energy consumption of the system. It would have been obvious to one having ordinary skill in the art at the time the invention was made to control an optimum rotational speed of the condensing fan of Song such that if Pp + d < Pa < Pp + c, control the speed of the DC fan to decrease by m revolutions per minute and if Pp - e < Pa < Pp, control the speed of the DC fan to increase by m revolutions per minute, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering optimum or workable ranges involves only routine skill in the art, see MPEP 2144.05 (II).
In reference to claim 7, Song and Laughman disclose the claimed invention including:
Song discloses when in the heating mode, the DC fan is on the condensing side, the heat exchanger is an indoor side condenser, the ambient temperature is an indoor ambient temperature, and the preset target pressure value corresponding to the heat exchanger is Po', if Po' + c < Pa, control the speed of the DC fan to increase by n revolutions per minute; if Pa < Po' - e, control the speed of the DC fan to decrease by n revolutions per minute; and if Po'< Pa < Po' + d, maintain the current speed; wherein, c, d, and e are all pressure value constants, and c > d, (see underlined portion of page 15 of the English language translation).
Song fails to disclose if Po' + d < Pa < Po' + c, control the speed of the DC fan to increase by m revolutions per minute nor if Po' - e < Pa < Po', control the speed of the DC fan to decrease by m revolutions per minute.
However, Laughman teaches that in the art of vapor compression systems, that the condenser fan speeds can be optimized to have varying levels of rotations per minute in order to optimize the energy consumption of the system [0077]. Accordingly, the rotation speed of the condenser fan is recognized as a result effective variable, because it is a variable that achieves a recognized result. That is, energy consumption of the system. It would have been obvious to one having ordinary skill in the art at the time the invention was made to control an optimum rotational speed of the condensing fan of Song such that if Po' + d < Pa < Po' + c, control the speed of the DC fan to increase by m revolutions per minute and if Po' - e < Pa < Po', control the speed of the DC fan to decrease by m revolutions per minute, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering optimum or workable ranges involves only routine skill in the art, see MPEP 2144.05 (II).
Response to Arguments
Applicant's arguments filed August 20, 2025 have been fully considered but they are respectfully not found persuasive.
Applicant argues with respect to the rejection of claims 1-10 under 35 USC 112 (a), that Applicant’s specification describes the modules both structurally and functionally. Applicant asserts that figure 1 and paragraph [0029] describes the modules as distinct hardware components. This is respectfully not found persuasive. Figure one does not provide the detail required to show that these modules require any structure or hardware. The modules are represented as plain boxes which could represent any structure and nothing specific enough to meet the requirements of 35 USC 112(f). Further, [0029] does not further define any specific hardware or structure more than the claimed modules. There is nothing of record which would indicate that the modules are any structure that would perform the entire functions that would meet the standards of 35 USC 112(f). See specifically MPEP 2181 (I)(A) where the Federal Circuit determined that "the word 'module' does not provide any indication of structure because it sets forth the same black box recitation of structure for providing the same specified function as if the term ‘means’ had been used." Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir.) (en banc) (citation omitted). Replacing the word “means” with a generic “black box” nonce word such as “module,” in a format consistent with a traditional means-plus-function claim limitation, is “simply a generic description for software or hardware that performs a specified function” and “do[es] not connote sufficiently definite structure.” Id. at 1350. Claims 1 and 8 recites several “modules” as a nonce word for the claimed functions thereby invoking 35 U.S.C. § 112(f). The claim does not describe how the modules work or otherwise impart a structure to the module. The analysis of the rejections under 35 U.S.C. § 112 (a/b), involves two questions: (1) whether the limitation at issue is a “means-plus-function” limitation and, as such, invokes the application of 35 U.S.C. § 112, sixth paragraph; and (2) if the limitation at issue is treated as a “means-plus-function” limitation under § 112, sixth paragraph, whether the Specification discloses sufficient corresponding structure, i.e., an algorithm for performing the functions recited in the limitation. Ex parte Rodriguez, 92 USPQ2d 1395 (BPAI 2009) (precedential). In other words, if 35 U.S.C.§ 112, sixth paragraph, is invoked, an indefiniteness rejection under § 112(b), is appropriate if Appellant’s Specification discloses no corresponding algorithm associated with the function recited in the claim. Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1337–38 (Fed. Cir. 2008). Mere reference to a general-purpose computer or processor with appropriate programming without providing an explanation of the appropriate programming, or to “software” without providing detail about the means to accomplish the software functions, is not an adequate disclosure. Id. at 1334; Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340–41 (Fed. Cir. 2008). Moreover, simply reciting the claimed functions in the Specification, while saying nothing about how the computer or processor ensures that those functions are performed, is not a sufficient disclosure for an algorithm that, by definition, must contain a sequence of steps. Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir. 2009). As an example, an algorithm is defined as a “finite sequence of steps for solving a logical or mathematical problem or performing a task.” Microsoft Computer Dictionary 23 (5th ed. 2002). An applicant may express the algorithm in the specification in any understandable terms including as a mathematical formula, in prose in a flow chart, or “in any other manner that provides sufficient structure.” Finisar, 523 F.3d at 1340. Accordingly, the rejection of claims 1-14 under 35 USC 112(a/b) is proper and remains.
Applicant argues with respect to the rejection of claims 1 and 8 under 35 USC 112(b), that the “presetting” refers to configuring the control logic and storing the predefined parameters. This is respectfully not found persuasive. There is no disclosure as to any control logic nor and storing of any parameters. The specification should ideally serve as a glossary to the claim terms so that the examiner and the public can clearly ascertain the meaning of the claim terms. Correspondence between the specification and claims is required by 37 CFR 1.75(d)(1), which provides that claim terms must find clear support or antecedent basis in the specification so that the meaning of the terms may be ascertainable by reference to the specification. Since the specification itself does not provide clear support or antecedent basis control logic and storing the predefined parameters the term “presetting” is not ascertainable, see MPEP 2173.03, as such the metes and bounds of the claims are unclear and the rejection under 35 USC 112(b) remains.
Applicant further argues that there is no disclosure in Song that the adjusting the speed is based on the type of heat exchanger. This is respectfully not found persuasive. Song clearly states that the fan is on the outdoor heat exchanger and that this heat exchanger changes function based on the operating parameters. Accordingly, the step of judging is inherently performed when the operating mode is determined as the external heat exchanger will be either a condenser or evaporator based on the mode of operation.
Applicant further argues that Song does not disclose the positional relationship with respect to the heat exchanger. This is respectfully not found persuasive. Song clearly states that the fan is positioned adjacent the external heat exchanger. The external fan is positioned at the condensing side during cooling, and the evaporating side during heating even though the fan is static. There is nothing in the claims that require the fan to be physically moved from the internal to the external heat exchanger or vice versa to meet the claimed limitations. A static fan positioned adjacent a heat exchanger that operates according to several modes of operation and changing the parameters based on the operating mode of the system would inherently require determining whether the fan was on the condensing or evaporating side and adjusting the fan based on that determination.
Applicant argues that the evaporator fan is always associated with the evaporator and the condenser fan is always associated with the condenser. This is respectfully not found persuasive. The fan (7) is the external fan. The fan that is controlled is always fan (7). And the heat exchanger (3) is an evaporator or condenser based on the mode of operation and valve (2). Thus fan (3) is not always associated with the evaporator as it can be the condenser during heating. The control of internal fan (8) is not addressed in the description of Song. Since the fan (7) is controlled based on an operating mode which switches the function of the heat exchanger, Song inherently discloses the claimed subject matter and the rejection is proper and remains.
In conclusion, since Song discloses adjusting the external fan according to the operating mode of the system, the control is inherently based on a combination of the operating mode (heating or cooling), the positioning of the fan on the condensing side or evaporating side (which heat exchanger (3) fluctuates between during heating or cooling), and the type of heat exchanger (external heat exchanger 3).
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.
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/CASSEY D BAUER/Primary Examiner, Art Unit 3763