DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of Species II, claims 11-20 in the reply filed on 12 March 2026 is acknowledged. The traversal is on the ground(s) that MPEP 803 and that the species are sufficiently related such that a thorough search of one Species would encompass a search for the remaining claims, and that the entire application could be searched and examined without serious burden. This is not found persuasive because MPEP 803 is directed at applications under US restriction/election practice, while the current Application falls under Unity of Invention as lacking the same or corresponding technical feature.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12 March 2026.
Claim Objections
Claim 11 is objected to because of the following informalities: “a first expansion” appears to be in error for “a first expansion valve”. Appropriate correction is required.
Claim 11 is objected to because of the following informalities: “that decompressed” appears to be in error for “that decompresses”. 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: “physical property adjustment part” (i.e. part [generic placeholder] for physical property adjustment [functional language]) in claims 11-20; and “heating source” (i.e. source [generic placeholder] for heating [functional language]) in claims 18-19.
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. In the case of “physical property adjustment part”, tube or valve is found to be the corresponding structure(s). In the case of “heating source”, heater is found to be the corresponding structure(s).
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.
Claim 13 is 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 13 recites the limitation “to have different resistance by varying the length or diameter from the second expansion valve”. It is unclear if the different resistance is the same or different from that of claim 12. It is believed to be the same. Additionally, “by varying the length or diameter from the second expansion valve” is unclear. Limitation “the length” lacks antecedent basis, and “from the second expansion valve” is not understood. Does Applicant mean for a comparison with the second expansion valve? Clarification is requested.
Claim 15 is 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 15 recites the limitation “the same diameter”. There is insufficient antecedent basis for this limitation in the claim. It should first be established that the first path and discharge path each have a diameter and then indicate that the diameters are the same.
Claims 18-19 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 18 recites the limitation “at an adjacent portion of the first evaporator”. This is unclear. It appears Applicant may have meant adjacent to a portion of the first evaporator. Claim 19 is rejected insofar as it is dependent on claim 18 and therefore includes the same error(s).
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) 11-14, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maehara et al. (US 4,644,758).
Regarding claim 11, Maehara et al. shows a refrigerator comprising:
a compressor that compresses a refrigerant (see at least compressor #501),
a condenser that condenses the refrigerant compressed by the compressor (see at least condenser #502) and discharges the condensed refrigerant to a discharge flow path (see path between condenser #502 and valves #511/#512/#513),
a first expansion that decompresses the refrigerant condensed in the condenser (see at least expansion valve #531),
a first evaporator that evaporates the refrigerant decompressed by the first expansion valve (see at least evaporator #411),
a first refrigerant flow path that guides the flow of the refrigerant passing through the first expansion valve and the first evaporator from the discharge flow path (see at least path/line including #521/#531),
a second expansion valve that decompressed the refrigerant condensed in the condenser (see at least expansion valve #532),
a second evaporator that evaporates the refrigerant decompressed in the second expansion valve (see at least evaporator #412),
a second refrigerant flow path that guides the flow of 73 the refrigerant passing through the second expansion valve and the second evaporator from the discharge flow path (see at least path/line including #522/#532);
a hot gas flow path that guides the flow of the refrigerant from the discharge flow path to the second evaporator through the first evaporator (see at least path/line through #511/#411/#551; or path/line through #511/#411/#551 and up to #513);
a physical property adjustment part provided in the hot gas flow path and adjusting physical properties of the refrigerant flowing to the second evaporator through the first evaporator (see at least valve #511);
a guide flow path that guides the refrigerant flowing to the second evaporator through the second expansion valve or the physical property adjustment part (see at least path/line between #551 to #522; or portion of hot gas path/line between #551 and #513); and
a flow path switching valve that switches the flow path so that the refrigerant flows from the discharge flow path to at least one of the first refrigerant flow path, the second refrigerant flow path, or the hot gas flow path (see at least valve #513; c.f. Figures 4 and 6).
Regarding claim 12, Maehara et al. further shows wherein the physical property adjustment part is configured to provide a different resistance from the second expansion valve (see at least valve #511 is a magnetic open/close valve and valve #532 is automatic thermal expansion valve, thus the two have different resistances).
Regarding claim 13, Maehara et al. further shows wherein the physical property adjustment part is formed to have different resistance by varying the length or diameter from the second expansion valve (see at least valve #511 is a magnetic open/close valve and thus will have a different diameter range compared to the expansion valve #532).
Regarding claim 14, Maehara et al. further shows wherein the hot gas flow path includes;
a first path from the flow path switching valve to the first evaporator (see at least path/line between #513 and #551), and
a second path from the first path to the physical property adjustment part through the first evaporator (see at least path/line between #551 and #511 through #411).
Regarding claim 20, Maehara et al. further shows wherein, when the first evaporator is defrosted, the flow path switching valve operates such that the refrigerant passing through the discharge flow path passes through the hot gas flow path (see at least Figure 6, in the case that the first evaporator #411 is defrosted, valve #513 is operated to be closed so that the flow is through the hot gas path).
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maehara et al. (US 4,644,758).
Maehara et al. discloses all the elements of claim 14, upon which claims 15-16 depend (see rejection(s) above).
Regarding claims 15 and 16, Maehara et al. is silent regarding wherein the first path is formed to have the same diameter as the discharge flow path; and wherein the second path is formed to have a larger diameter than the first path.
There is no evidence of record that establishes that providing wherein the first path is formed to have the same diameter as the discharge flow path; and wherein the second path is formed to have a larger diameter than the first path would result in a difference in function of the Maehara et al. system. Further, a person having ordinary skill in the art, being faced with modifying the system of Maehara et al., would have reasonable expectation of success in making such a modification and it appears that the system would function as intended being given the claimed dimensions. Lastly, Applicant has not disclosed that the claimed dimensions solve any stated problem, indicating that the paths “may” have the claimed diameters, and therefore there appears to be no criticality placed on the dimensions as claimed such as that they produce an unexpected result.
It would, therefore, have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide the system of Maehara et al. with wherein the first path is formed to have the same diameter as the discharge flow path; and wherein the second path is formed to have a larger diameter than the first path as an obvious matter of design choice within the skill of the art (see also In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.). In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.).).
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maehara et al. as applied to claim 14 above, and further in view of OFFICIAL NOTICE.
Regarding claim 17, Maehara et al. is silent regarding wherein the first evaporator includes a plurality of heat exchange fins, and the second path is connected to be in contact with each heat exchange fin of the first evaporator while passing therethrough.
Examiner notes that it is old and well-known for an evaporator of the type disclosed by Maehara et al. to include a plurality of heat exchange fins.
It would, therefore, have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide the evaporator of Maehara et al. with wherein the first evaporator includes a plurality of heat exchange fins, since such provision is old and well-known in the art and would provide the predictable benefit of enhancing heat exchange.
Maehara et al. as modified to include heat exchange fins further discloses and the second path is connected to be in contact with each heat exchange fin of the first evaporator while passing therethrough (Examiner notes that the second path will at minimum be in thermal contact with each heat exchange fin).
Claim(s) 18 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maehara et al. as applied to claim 11 above, and further in view of Ruff (US 1,970,340).
Regarding claim 18, Maehara et al. does not disclose wherein a heating source is provided in the first evaporator or at an adjacent portion of the first evaporator.
However, it was old and well-known to provide a heating source in or adjacent an evaporator in a refrigerating system, as evidenced by Ruff (see at least heating element #26 adjacent the lower end of evaporator #11).
It would, therefore have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide the refrigerator of Maehara et al. with wherein a heating source is provided in the first evaporator or at an adjacent portion of the first evaporator, since, as evidenced by Ruff, such provision wad old and well-known in the art and would provide the predictable benefit of allowing for rapid heating of the refrigerant to allow for hot gases to circulate through the evaporator coil (see at least page 1, lines 24-28 and lines 105-108).
Regarding claim 19, Maehara et al. as modified by Ruff further discloses wherein at least a portion of the hot gas flow path is formed to be heated by receiving heat from the heating source (see at least Ruff page 1, lines 24-28).
Conclusion
The 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 TAVIA SULLENS whose telephone number is (571)272-3749. The examiner can normally be reached M-R 6:30-4:30 Eastern.
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/TAVIA SULLENS/Primary Examiner, Art Unit 3763
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