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 .
The claim amendment received 6/22/2026 is entered. Claims 1-30 and 60 are cancelled.
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.
The following limitation(s) is/are 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 means or a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the means or generic placeholder is not preceded by a structural modifier.
“control element” includes the generic/nonce term “element” coupled with the function of “control”. A return to the specification provides a valve [0040]. Therefor the limitation is interpreted as the same or equivalents thereof.
“drive device” includes the generic/nonce term “device” coupled with the function of “drive”. A return to the specification provides a motor. Therefor the limitation is interpreted as the same or equivalents thereof.
“compression mechanism” includes the generic/nonce term “mechanism” coupled with the function of “compression”. A return to the specification provides orbiting and fixed spirals. Therefor the limitation is interpreted as the same or equivalents thereof.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the phrase “exterior surface” added to claim 31 in the amendment dated 6/22/2026 does not appear in the specification.
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 31-59 and 61 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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.
Claim 31 recites “wherein the device further includes an exterior surface that is exposed to the compressed fluid disposed within the first portion of the discharge chamber, and wherein the exterior surface of the device does not define a pathway for the fluid within the interior of the device.”
Firstly, the phrase “exterior surface” is not within the original disclosure.
Secondly, a surface cannot be “exterior” and within the first portion of the discharge chamber.
Thirdly, a surface cannot be simultaneously exposed to the compressed fluid and not define a pathway. A surface which is exposed to a fluid defines the path of said fluid.
Finally the above includes a negative limitation not previously presented.
Claims depending from a rejected claim are rejected due to their dependency.
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 31-59 and 60 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.
Claim 31 recites “wherein the device further includes an exterior surface that is exposed to the compressed fluid disposed within the first portion of the discharge chamber, and wherein the exterior surface of the device does not define a pathway for the fluid within the interior of the device.”
A surface cannot be “exterior” and within the first portion of the discharge chamber. Thus the phrase “exterior” is being used inconsistently with its accepted meaning. The specification does not redefine the term. Therefor the scope of the claim is unclear.
A surface cannot be simultaneously exposed to the compressed fluid and not define a pathway. A surface which is exposed to a fluid defines the path of said fluid. Thus the phrases “exposed” and “define” are being used inconsistently with their accepted meaning. The specification does not redefine the terms. Therefor the scope of the claim is unclear.
Claim 31 recites “the compressed fluid” which lacks antecedent basis.
Claims depending from a rejected claim are rejected due to their dependency.
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.
Claim(s) 31-44, 48-52, and 59 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Okada et al (US 6,663,364).
Regarding claim 31, Okada discloses a device for cooling a fluid to be compressed in a compressor with a heat carrier fluid, the device for cooling the fluid comprising:
at least one first flow channel (from 4:45 “intake port” to discharge port 64) for guiding the fluid,
at least one second flow channel (40) for guiding the heat carrier fluid and from an inlet to an outlet for the heat carrier fluid (440 and 441 of figure 2); and
wherein a core element (identified in annotated figure below) is formed such that the device, including the core element thereof, can be arranged as a separate component on a longitudinal axis between housing elements of a modular compressor or can be integrated into a housing of the compressor (4 is between housings 3 and 5 of the compressor),
wherein the device for cooling the fluid is arranged within a discharge chamber (61) of the compressor provided as an open space (space is open as discharge gas flows therethrough) disposed within the compressor downstream of a compression mechanism (41 and 53 are the fixed and orbital scrolls) thereof,
wherein the device for cooling the fluid is spaced apart from the compression mechanism of the compressor by a first portion of the discharge chamber with respect to a direction of the longitudinal axis (the device for cooling, within 6, is spaced apart from the scrolls by at least the spaces 42 and 44), and
wherein the first portion of the discharge chamber receives the fluid following compression thereof within the compression mechanism (61 receives the compressed fluid after compression),
wherein each of the at least one first flow channel extends through an interior of the device (the first flow channel passes from the intake port to the outlet port 64 which includes the interior of the device),
wherein the device further includes an exterior surface that is exposed to the compressed fluid disposed within the first portion of the discharge chamber (surface of channels 61 are exposed to the compressed fluid and are exterior when end plate 7 is removed), and
wherein the exterior surface of the device does not define a pathway for the fluid within the interior of the device (as was noted above the limitation is unclear and unsupported by the original disclosure nonetheless to the extent that the surface is exterior it is not defining interiorly).
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Regarding claim 32, Okada discloses the outer contours and dimensions of the core element (said components connect together and thus correspond) and the housing elements are formed corresponding to one another.
Regarding claim 33, Okada discloses the core element (identified in annotated figure above is plate shaped) is formed in the shape of a plate.
Regarding claim 34, Okada discloses the core element has at least one through opening for the compressed fluid running in a direction of the longitudinal axis (opening passing through 43).
Regarding claim 35, Okada discloses the core element is formed with a constant wall thickness in a direction of the longitudinal axis in a region of an outer circumference and with a flat depression of uniform depth in the direction of the longitudinal axis on at least one lateral surface in a center (identified core element in annotated figure above has constant thickness portion at outer circumference and a depression for the passage 44).
Regarding claim 36, Okada discloses the core element has recesses on at least one lateral surface which are formed respectively extending into the core element starting from the surface (recesses for passages 44).
Regarding claim 37, Okada discloses the recesses are formed on the at least one lateral surface in a center with a flat depression of uniform depth in a direction of the longitudinal axis (depression at 42).
Regarding claim 38, Okada discloses at least one plate-shaped intermediate element (identified in annotated figure below) is formed which is arranged such that a first side bears against the at least one lateral surface of the core element in a plane spanned perpendicular to the longitudinal axis, covering the recesses (44) in a fluid-tight manner, wherein the covered recesses form the at least one second flow channel of the heat carrier fluid.
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Regarding claim 39, Okada discloses the at least one second flow channel are formed respectively extending from an inlet distribution connected to the inlet to an outlet opening connected to the outlet (shown in figure 2).
Regarding claim 40, Shaffer discloses outer contours and dimensions of the at least one intermediate element (3 and/or 4) and at least one depression (10) are formed corresponding to one another such that the at least one intermediate element is arranged within the at least one depression or that the outer contours and dimensions of the at least one intermediate element and an inner casing surface of a ring (O-ring within 10) of the core element circumscribing an outer circumference are formed corresponding to one another.
Regarding claim 41, Okada discloses the at least one intermediate element (identified in annotated figure at claim 38) has a shape of a planar, circular sheet and the at least one depression (44) is circularly formed, wherein an outer diameter of the intermediate element corresponds to an outer diameter of the at least one depression plus a clearance for assembly and an extension of the at least one depression in a direction of the longitudinal axis corresponds to a wall thickness of the at least one intermediate element.
Regarding claim 42, Okada discloses the at least one intermediate element (identified in annotated figure at claim 38) has at least one through opening for the compressed fluid running in a direction of the longitudinal axis (through discharge valve 43).
Regarding claim 43, Okada discloses at least one plate- shaped outer element is formed with formations (formations engaging with extensions from the intermediate element) and is arranged such that it bears against a second side of the at least one intermediate element in a plane spanned perpendicular to the longitudinal axis, wherein the formations formed in the at least one outer element are covered by the at least one intermediate element and thus the at least one first flow channel are formed (first flow channel of compressed refrigerant fluid passing through 61).
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Regarding claim 44, Okada discloses the core element (identified in annotated figure above) is respectively formed with a depression of uniform depth in a direction of the longitudinal axis and recesses at the at least one lateral surface in a center (shown in figure 2), wherein the recesses are respectively covered in a fluid-tight manner by each of the at least one intermediate element arranged in the depression with a respective first side of each of the at least one intermediate element, and in that a respective one of the at least one outer element with formations is arranged such that it bears against the second sides of each of the at least one intermediate element, wherein the formations are covered by the at least one intermediate element.
Regarding claim 48, Okada discloses the core element is formed in a shape of a hollow circular cylinder (core element identified in annotated figures above is cylindrical with hollow portion for passages 42 and 44).
Regarding claim 49, Okada discloses a wall element (identified in annotated figure below) shaped as a hollow circular cylinder is arranged within the core element and a cylinder-shaped central element is arranged within the wall element, which are oriented coaxially to the longitudinal axis.
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Regarding claim 50, Okada discloses wherein a diameter of an inner casing surface of the core element corresponds to a diameter of an outer casing surface of the wall element and a diameter of an inner casing surface of the wall element corresponds to a diameter of a casing surface of the central element and the respective casing surfaces bear against one another in a fluid-tight manner (said components assemble together in a fluid-tight manner and thus their diameters ‘correspond’).
Regarding claim 51, Okada discloses the wall element (wall element identified in annotated figure at claim 49) is formed with a recess for the at least one second flow channel of the heat carrier fluid on the outer casing surface (recess for passage at 44).
Regarding claim 52, Okada discloses the wall element is formed with a recess for the at least one first flow channel on an inner casing surface (recess of path 61).
Regarding claim 61, Okada discloses the device for cooling is disposed within the discharge chamber (chamber containing 42 and 61) to divide the discharge chamber into the first portion disposed to a first side of the device and a second portion disposed to an opposing second side of the device, wherein the second portion of the discharge chamber extends in the direction of the longitudinal axis towards a longitudinal end of the compressor, and wherein an outlet for the fluid from the compressor extends from the second portion of the discharge chamber (division between compression mechanism and spirally shaped outlet path at 61).
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.
Claim(s) 53-54 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okada et al (US 6,663,364).
Regarding claim 53, Okada discloses the recess of the at least one first flow channel is formed in a shape of a circumferentially running helical groove whose inlet and outlet are arranged spaced apart from one another in a direction of the longitudinal axis (shown in figure 3). While Okada discloses a helical grove for the first flow channel there is not such an arrangement for the second flow channel. Okada provides for a plurality of flow channel shapes (figures 3-7). It would have been obvious to one of ordinary skill in the art to have provided the second flow channel in a helical groove shape in order to increase heat transfer between the fluids.
Regarding claim 54, Okada discloses the device according to claim 31, but lacks a control element. In the previous office action on the merits the Examiner took Official Notice that valves for controlling fluid flow are old and well known. In his subsequent reply to this office action, the applicant did not traverse Examiner’s assertion of Official Notice with regard to these elements. Therefore the Official Notice statements by the Examiner regarding these elements are now taken as admitted prior art by Applicant. See MPEP §2144.03(C). It would have been obvious to one of ordinary skill in the art to have provided Shaffer with a control valve, integrated within the core element, in order to control a cooling rate within the compressor.
Claim(s) 55-59 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okada et al (US 6,663,364) in view of Perevozchikov et al (US 6,655,172).
Regarding claim 55, Okada discloses the compressor (1) for compressing the fluid, having the housing, a drive device (3:34) and a compression mechanism (41 and 53) driven by the drive device.
Okada discloses the use as a compressor but lacks the use as a refrigerant compressor and the drive device within the housing. Perevozchikov discloses that refrigeration cycles utilize compressors and including the drive device within the housing. It has been held that where there exists an art recognized suitability for an intended purpose that it is obvious to apply the known means to the known purpose. MPEP 2144.07. In this instance Okada provides for a compressor. Perevozchikov evidences that compressors are used in refrigeration cycles. Merely applying the known compressor to the known purpose of compressing refrigerant is prima facie obvious yielding predictable results. It is also noted that as refrigeration cycles are closed loops, all components are upstream and downstream of all others. Further locating the drive device within the housing aids to seal the arrangement, commonly referred to as hermitic compressors, and allows refrigerant to cool the motor.
Regarding claim 56, Okada discloses the compression mechanism is formed of an orbiting spiral (53) and a fixed spiral (41), and wherein the device is formed between an outlet for the fluid out of the fixed spiral and the outlet of the compressor as a separate element between the housing elements of the housing arranged on the longitudinal axis or integrated into the housing of the compressor, or as a component of the fixed spiral.
Regarding claim 57, Okada discloses the device for cooling the fluid has an extension in a direction of the longitudinal axis, but is silent concerning the value of the dimension.
It has been held that the optimization of a result-effective variable is obvious. In this instance the thickness of the device effects structural robustness and fluid capacity. Therefor because extension in the longitudinal direction is recognized as effecting the result of robustness and fluid capacity; the value of 25-30mm is not a product of innovation but of ordinary skill and is obvious.
Regarding claim 58, Okada discloses a pressure prevalent within the at least one first flow channel for guiding the fluid and a pressure prevalent within a volume which borders a wall delimiting the at least one first flow channel are substantially equal in size (further as modified by Perevozchikov the compressor is of the hermetic type thus prevailing pressures are substantially equal in differing regions, e.g. within the compression mechanism itself and within discharge muffler 80).
Regarding claim 59, Okada discloses a method for operating the compressor according to claim 55, wherein a performance of the device for cooling the fluid to be compressed in the compressor is regulated via a mass flow of the heat carrier fluid through the device and a supply temperature of the heat carrier fluid such that an outlet condition of the compressed fluid is set at the outlet of the compressor independent of an operating condition of the compressor (3:57-59 discloses a separate pump for the cooling water).
Allowable Subject Matter
Claims 45-47 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 45 recites “The device according to claim 44, wherein there are at least two outer elements and a first one of the at least two outer elements has an inlet opening and a second one of the at least two outer elements has an outlet opening for the compressed fluid.” While Okada provides for an outer element as identified in claim 43. There is no reason to provide the arrangement of Okada with a second outer element in the manner claimed.
Response to Arguments
Applicant's arguments filed 6/22/2026 have been fully considered but they are not persuasive. Newly amended claim 31 is unclear and unsupported by the original disclosure. In arguing against applying the Okada reference, applicant provides a potential interpretation of the reference as applied to the amended claim and argues that Okada fails to anticipate. The above rejection identifies a different surface of Okada to meet the “exterior surface” of the claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lifson et al (US 2010/0132402) heat exchanger for compressor suction gas.
Satoh et al (US 6,905,320) heat exchanger for scroll compressor.
Durand et al (US 11,815,295) compressor heat exchanger.
Green et al (US 3,907,468) rotary engine cooling.
Guttinger (US 5,346,374) cooling spiral pump.
Spies et al (US 12,104,592) compressor cooling.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER R ZERPHEY whose telephone number is (571)272-5965. The examiner can normally be reached M-F 7:00-4:00 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, Jianying Atkisson can be reached at 5712707740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER R ZERPHEY/Primary Examiner, Art Unit 3799
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