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 .
Response to Amendment
This Office action is in response to the reply filed on July 24, 2026.
Receipt and entry of the replacement drawings, amendments to the specification, and amended claims filed on July 24, 2026 are acknowledged.
Claims 1 through 10 are pending. Of these, claims 3 through 5 are as amended, whereas the remaining claims are all as originally presented.
Response to Arguments
Applicants’ amendments and remarks filed on July 24, 2026 have obviated the objections to the drawings as cited in the previous Office action.
Election/Restriction
As previously noted in the Office communication mailed on June 3, 2026, applicant’s election of the various species (i.e., of the first species as recited in claim 1 corresponding to the heat transfer area being formed as a fin-tube block; of the first species as recited in claim 3 corresponding to the fluid collector being inseparably connected to the heat transfer area by being welded to the heat transfer area; of the first species as recited in claim 4 corresponding to the valve unit being connected to the heat transfer area and/or to the fluid collector area by being force-fit and/or by being form-fitting in a separable manner; and, of the second species as recited in claim 8 corresponding to the fluid collector being formed in one piece from a part of the heat transfer area) in the reply filed on February 19, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
As also previously noted in the Office communication mailed on June 3, 2026, no claims are hereby withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to the various non-elected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on February 19, 2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The replacement drawings corresponding to Figures 3 and 4 has been filed on July 24, 2026. These drawings are acceptable.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following features must be shown or the feature(s) canceled from the claim(s): the valve unit having filters as recited in claim 7, for example. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: in paragraph [00039] as amended via the reply July 24, 2026, “Fig. 4 depicts exemplary bolts 11” should be replaced with “Fig. 4 schematically depicts exemplary bolts 11” in order to more accurately and more generally describe the amendments to Figure 4 made via the replacement drawings filed on July 24, 2026.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “shut-off devices” in claim 6.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
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 through 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.
Base claim 1 recites an alternative limitation in lines 8-9 of the claim (i.e., “to control the fluid flow through the heat transfer area and/or the fluid collector”). This alternative limitation in base claim 1 is followed by a multiplicity of other/additional alternative limitations in at least dependent claims 2 through 4 and claims 6 through 8. The aforementioned multiplicity of alternative limitations in the claims has the same effect on the scope of the claims as an improperly multiple dependent claim set would have, thus rendering indefinite the metes and bounds of protection sought by the claims.
Also with regard to base claim 1 and all claims depending therefrom, it is not entirely clear which designs or configurations of the heat exchanger are intended to be encompassed by the limitations “wherein the heat transfer area, the fluid collector, and the valve unit are designed as a single unit” because it is not entirely clear what is intended to be encompassed by the limitation “designed as a single unit” as it appears at the end of the claim. In other words, what configurations are intended to be encompassed by the limitation “designed as a single unit” and which configurations are intended to be excluded thereby? The disclosure taken as a whole fails to clarify the aforementioned point.
Any claim not specifically mentioned is at least rejected as being dependent on a rejected claim.
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.
As best can be understood in view of the indefiniteness of the claims, claims are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Donaldson (U.S. Patent No. 3,497,936).
With regard to claim 1 of the instant application, Donaldson discloses a heat exchanger (i.e., Figure 1) comprising: a heat transfer area having a first fluid path (i.e., through tubes 12) for a first fluid (i.e., oil) flow and a second fluid path (i.e., through fins 13) for a second fluid (i.e., air) flow, the first fluid path being in thermal contact with the second fluid path for heat transfer between the first fluid/oil and the second fluid/air; a fluid collector or tank 10 having a first fluid inlet 26 and a first fluid outlet or overflow fitting 24 for an inflow of the first fluid/oil into the fluid collector or tank 10 for storage of the first fluid/oil in the fluid collector or tank 10 and for an outflow of the first fluid/oil from the fluid collector 10; and a valve unit 47/48 to control the fluid flow through the heat transfer area or tubes 12 and/or the fluid collector or tank 10, wherein the heat transfer area, the fluid collector or tank 10, and the valve unit 47/48 are designed as a single unit (i.e., they are all interconnected and constitute a single heat exchanger as shown in Figure 1).
With regard to claim 2 of the instant application, Donaldson discloses the heat exchanger according to claim 1, wherein the fluid collector or tank 10 and/or the valve unit 47/48 is or are separably and/or inseparably connected to the heat transfer area.
With regard to claim 3 of the instant application, Donaldson discloses the heat exchanger according to claim 1, wherein the fluid collector or tank 10 is inseparably connected to the heat transfer area by being welded (i.e., see column 2, lines 46-48), soldered and/or glued, and wherein the valve unit 47/48 is connected to the heat transfer area and/or to the fluid collector or tank 10 in a separable and/or inseparable manner.
With regard to claim 4 of the instant application, Donaldson discloses the heat exchanger according to claim 2, wherein the valve unit 47/48 is connected to the heat transfer area and/or to the fluid collector or tank 10 in a separable manner or wherein the valve unit 47/48 is connected to the heat transfer area and/or to the fluid collector or tank 10 in an inseparable manner by being welded, soldered and/or glued.
With regard to claim 5 of the instant application, Donaldson discloses the heat exchanger according to claim 1, wherein the valve unit 47/48 is connected to the fluid collector or tank 10 and to the heat transfer area.
With regard to claim 6 of the instant application, Donaldson discloses the heat exchanger according to claim 1, wherein the valve unit 47/48 has fluid paths and at least one or more shut-off devices 48 for releasing and/or shutting off at least one or more fluid paths for controlling the fluid flow through the heat transfer area and/or the fluid collector or tank 10.
With regard to claim 7 of the instant application, Donaldson discloses the heat exchanger according to claim 1, wherein the valve unit 47/48 has one or more valves 48 at least.
With regard to claim 8 of the instant application, Donaldson discloses the heat exchanger according to claim 1, wherein the fluid collector or tank 10 is part of the valve unit 47/48 and/or part of the heat transfer area, and wherein the fluid collector or tank 10 is formed in one piece from the valve unit 47/48 or from a part of the valve unit 47/48 or from a part of the heat transfer area.
With regard to claim 9 of the instant application, Donaldson discloses the heat exchanger according to claim 1, wherein the valve unit 47/48 has a number of fluid inlets and fluid outlets (i.e., at least one inlet and at least one outlet) via which the heat transfer area and the fluid collector or tank 10 are fluidly connected.
With regard to claim 10 of the instant application, Donaldson discloses the heat heat exchanger according to claim 1, wherein the heat transfer area is divided into a first heat transfer area (i.e., closer to the top of the heat exchanger) and a second heat transfer area (i.e., closer to the bottom of the heat exchanger), each having a fluid inlet and a fluid outlet (i.e., elements 24 and 26 in the first heat transfer area and elements 46 and 47.48 in the second heat transfer area).
The reference thus reads on the claims.
Conclusion
The additional related and/or prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LJILJANA V CIRIC whose telephone number is (571)272-4909. The examiner can normally be reached Monday-Saturday, flexible.
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, Len Tran can be reached at 571-272-1184. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ljiljana V. Ciric/Primary Examiner, Art Unit 3763
LJILJANA (Lil) V. CIRIC
Primary Examiner
Art Unit 3763
