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 .
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.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 100 (e.g., see paragraph 0009 on page 5. 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. 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.
Additionally, Figures 4 and 5 - described in paragraph 0006 on page 3 as being views of the outdoor unit as seen from the upper surface and front view, respectively - appear to be the same.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 4-6, 13, and 16 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.
The limitations of claim 4 defines the term "RF," however, this term does not appear in claim 1 from which claim 4 depends.
The limitations of claim 5 defines the term "RF," however, this term does not appear in claim 1 from which claim 5 depends.
The limitations of claim 6 defines the term "RSi," however, this term does not appear in claim 1 from which claim 6 depends.
The limitation "a concentration of the etching liquid is 10 to 60% by mass" renders claim 13 indefinite because it is unclear what this concentration refers to. It is noted that claim 13 depends from claim 11, while the etching liquid containing acid compounds is first introduced in claim 12.
Claim 16 is rendered indefinite because the terms in formula
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are unclear. This formula should be rewritten in a manner that clearly identifies the terms (e.g., "10-2" versus "10-2").
Claim Interpretation
For the purpose of examination, claims 4-6 are taken to depend from claim 2 (i.e., the first claim that recites RF and RSi) while claim 13 is taken to depend from claim 12 and the concentration is understood to refer to the concentration of the compound(s) in the etching liquid.
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.
Claims 1-15 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang et al. (US 2014/0182790) in view of Nose (WO 2020/066533).
Since WO 2020/066533 was not published in the English language, this citations in this action refer to EP 3,858,496 which was cited in the Information Disclosure Statement filed 17 December 2024.
Hwang is directed to an evaporator having a super-hydrophobic surface (paragraph 0007). The surface comprises a metal base material that has been anodized to form a ceramic layer with microstructures over which a polymer layer is formed (paragraph 0008). The metal base material may be aluminum (paragraph 0009). The anodizing treatment is performed at 0-40 oC under a voltage of 20-200 V for a time of 5-10 min (paragraph 0011) employing a solution containing phosphoric or oxalic acid (paragraph 0042). The polymer layer may be formed from a fluorinated silane (paragraph 0012). The evaporator is part of a device for exchanging heat (paragraph 0075). The evaporator may further comprise fins of the metal base material with a super-hydrophobic surface (paragraph 0015) that are arranged in parallel with a space (Figure 13).
Hwang do not teach that polymer layer comprises a fluoropolyether group-containing compound. However, the polymer layer is designed to form a super-hydrophobic surface and may be a fluorine containing silane.
Nose is directed to a surface treating layer providing an article with water-repellency in addition to other properties such as weather and chemical resistance (paragraph 0006). The layer is formed by applying a surface-treating agent comprising a polyether group-containing silane to the surface (paragraph 0007). The agent comprises a compound of the formula:
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wherein R1, R1', X1, and X2 are defined such that the agent correspond to the structures recited in claim 3 (paragraph 0007). The surface-treating agent further comprises a second fluoropolyether group-containing silane, such as one of the formula (paragraph 0007):
(Rf - PFPE)b' - X105 - (SiR14nR153-n)b
wherein Rf, PFPE, X105, R14, R15, n, b, and b' are defined such that the agent correspond to the structures recited in claims 2 and 6 (paragraph 0007). PTFE is represented by the same structure designated to RF in claims 4 and 5 (paragraph 0007).
It would have been obvious to one of ordinary skill in the art to use the surface-treating agent of Nose to form the hydrophobic polymer layer of Hwang to provide the resulting evaporator with weathering and chemical resistance in addition to the water-repellency characteristic of a hydrophobic coating. One of ordinary skill in the art would have an expectation of success since Hwang teaches that fluorine containing silanes may be used to form the hydrophobic polymer layer.
Regarding the etching treatment limitations recited in claims 11-15, these represent product-by-process type limitations. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claim in a product-by-process claim, the burden is on the applicant to present evidence from which the examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. In re Brown, 459 F. 2d 531, 173 USPQ 685 (CCPA 1972); In re Fessman, 489 F. 2d 742, 180 USPQ 324 (CCPA 1974). This burden is NOT discharged solely because the product was derived from a process not known to the prior art. In re Fessman, 489 F. 2d 742, 180 USPQ 324 (CCPA 1974). Furthermore, the determination of patentability for a product-by-process claim is based on the product itself and not on the method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985) and MPEP § 2113. In this case, since both the etching treatment of the instant invention and the anodization treatment of Hwang are designed to provide protruding portions, the evaporator of Hwang taken in view Nose appears to be identical with or only slightly different than that of claims 11-15. As such, the burden is on the applicant to conclusively demonstrate that the invention of product-by-process claims 11-15 is patentably distinct from that of the prior art.
Regarding claim 17, the limitations of this claim are taken to be met since Hwang teaches the use of aluminum as the metal base material and does not require any material besides aluminum to be present in the aluminum base material.
Regarding claim 19, while Hwang is silent regarding the distance between the parallel rows of fins, it would have required no more than routine experimentation and ordinary skill to determine a suitable distance between adjacent fins. One of ordinary skill in the art would expect such routine experimentation to lead one of ordinary skill in the art to values satisfying the limitations of claim 19 since the fins of the instant invention and that of Hwang are both designed to improve heat exchange efficiency (paragraph 0080).
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of U.S. Patent No. 12,038,239 in view of Hwang et al. (US 2014/0182790) and Nose (WO 2020/066533).
Claims 1 and 4 of U.S. Patent No. 12,038,239 recite all the limitations of claims 1-19 except for forming the heat exchanger out of anodized aluminum and using a fluoropolyether group-containing compound as the water-repellent coating.
Hwang is directed to an evaporator used in a heat exchanger formed from a metal base material that has been anodized to form a ceramic layer with microstructures over which a polymer layer is formed (paragraph 0008). The metal base material may be aluminum (paragraph 0009). The anodizing treatment is performed at 0-40 oC under a voltage of 20-200 V for a time of 5-10 min (paragraph 0011) employing a solution containing phosphoric or oxalic acid (paragraph 0042).
Nose is directed to a surface treating layer providing an article with water-repellency in addition to other properties such as weather and chemical resistance (paragraph 0006). The layer is formed by applying a surface-treating agent comprising a polyether group-containing silane to the surface (paragraph 0007). The agent comprises a compound of the formula:
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wherein R1, R1', X1, and X2 are defined such that the agent correspond to the structures recited in claim 3 (paragraph 0007). The surface-treating agent further comprises a second fluoropolyether group-containing silane, such as one of the formula (paragraph 0007):
(Rf - PFPE)b' - X105 - (SiR14nR153-n)b
wherein Rf, PFPE, X105, R14, R15, n, b, and b' are defined such that the agent correspond to the structures recited in claims 2 and 6 (paragraph 0007). PTFE is represented by the same structure designated to RF in claims 4 and 5 (paragraph 0007).
It would have been obvious to one of ordinary skill in the art to use anodized aluminum as the base material of the heat exchanger since the courts have held the selection of a known material (in this case, anodized aluminum) based on its suitability for its intended use (a heat exchanger) supported a prima facie obviousness determination. See MPEP 2144.07.
Additionally, it would have been obvious to one of ordinary skill in the art to use the surface-treating agent of Nose to form the water-repellent coating of the claims to provide the resulting heat exchanger with weathering and chemical resistance in addition to water-repellency.
Regarding the etching treatment limitations recited in claims 11-15, these represent product-by-process type limitations. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claim in a product-by-process claim, the burden is on the applicant to present evidence from which the examiner could reasonably conclude that the claimed product differs in kind from those of the prior art for the reasons outline above in the product-by-process discussion in paragraph 15 of this Office action. Since the surface structures recited in claim 1 of U.S. Patent No. 12,038,239 is the same as that of instant claim 16 and since etching is designed to provide surface structures, the burden is on the applicant to conclusively demonstrate that the invention of product-by-process claims 11-15 is patentably distinct from that recited in claim 1 of U.S. Patent No. 12,038,239.
Regarding claim 17, the limitations of this claim are taken to be met since Hwang teaches the use of aluminum as the metal base material and does not require any material besides aluminum to be present in the aluminum base material.
Regarding claim 19, while the claims of U.S. Patent No. 12,038,239 are silent regarding the distance between the parallel rows of fins, it would have required no more than routine experimentation and ordinary skill to determine a suitable distance between adjacent fins. One of ordinary skill in the art would expect such routine experimentation to lead one of ordinary skill in the art to values satisfying the limitations of claim 19 since the fins of the instant invention and that claimed in U.S. Patent No. 12,038,239 are both designed to improve heat exchange efficiency.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAMSEY E ZACHARIA whose telephone number is (571)272-1518. The best time to reach the examiner is weekday afternoons, Eastern time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho, can be reached on 571 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RAMSEY ZACHARIA/Primary Examiner, Art Unit 1787