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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/06/2026 has been entered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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:
securing device in at least claim 4.
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.
Securing device is interpreted to cover at least a base and a rod projecting from the base as per claim 5 of applicant specification; 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 § 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 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
The following claims are rejected under 35 U.S.C. 103 as being unpatentable over Calderone (US 20190039440 A1) in view of Plank (EP 1614559 A1).
Regarding claim 1:
Calderone discloses a heat-producing unit #500 for a vehicle (Fig. 1-2 and 10), the heat-producing unit configured to thermally treat a heat-transfer fluid, comprising
at least one heat-transfer fluid circuit which is designed to have a heat-transfer fluid passing there through (see described coolant circuit in para [0049]),
a refrigerant fluid circuit which is designed so that the refrigerant can circulate therein and including components comprising at least one compressor unit #504 for compression of the refrigerant fluid, at least one heat exchanger #506 which is configured to exchange calories between the refrigerant fluid and the heat-transfer fluid ([0046], [0049]), and ducts #518 connecting the components,
wherein the heat-producing unit further comprises at least one fluid interface #514 which is designed to connect the at least one heat-transfer fluid circuit to an installation outside the heat-producing unit ([0051]),
the heat-producing unit further comprising a thermal and acoustic insulation device #528 which extends at least partly around the components of the refrigerant fluid circuit (see Fig. 10, [0059]: #528 clearly partly extends around the components of the refrigerant fluid circuit) and matches the form of the components such that the components are mechanically retained by the thermal and acoustic insulation device maintaining the position of the components of the refrigerant fluid circuit the heat-producing unit (Fig. 10, [0059]: the components are mechanically retained within #538).
Note: the term “matches the form of the components such that the components are mechanically retained by the thermal and acoustic insulation device maintaining the position of the components of the refrigerant fluid circuit within the heat-producing unit” constitute a functional limitation of the thermal and acoustic insulation device. The thermal and acoustic insulation device #528 is as a shell that mechanically retains and maintains the position of the components therein.
MPEP 2114 states that apparatus claims cover what a device is, not what a device does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. In the instant case, the thermal and acoustic insulation device is the structural limitation that is also found in the prior art by Calderone. Thus, recitation with respect to the manner in which the thermal and acoustic insulation device is intended to be employed does not differentiate the instant claim from the prior art since the prior art teaches the thermal and acoustic insulation device as structural limitation.
To the extend that applicant still submit otherwise, Plank teaches a thermal and acoustic insulation device (Fig. 1-3) including a first half-shell #20 and a second half-shell #24 which cooperate with one another in order to delimit receptacles in which the components of a heat producing unit are provided ([0031-0033]); such that the components are mechanically retained by the thermal and acoustic insulation device maintaining the position of the components (best seen in Fig. 1-2 & 7; abstract: thermal and acoustic insulation device #20 is provided so that inner contours thereof retain and maintain the position of component).
Thus, it would have been obvious for one of ordinary skills in the art before the effective filing date to have provided the apparatus of Calderone with the thermal and acoustic insulation device provided such that the components are mechanically retained by the thermal and acoustic insulation device maintaining the position of the components; in a similar manner as taught by Plank.
One of ordinary skills would have recognized that doing so would have provided excellent heat insulating properties and excellent noise damping effect as suggested by Plank.
Regarding claim 2:
Calderone either alone or as modified discloses all the limitations.
Calderone further discloses an envelope (see latter of front trunk, including the hood in Fig. 1; which envelopes the unit #500) which participates in delimiting at least partly an inner volume which receives the components of the refrigerant fluid circuit and the at least one heat-transfer fluid circuit (see at least Fig. 1), with the thermal and acoustic insulation device taking the form of a foam ([0059]) which extends at least into the inner volume between the envelope and the components of the refrigerant fluid circuit and the at least one heat-transfer fluid circuit (see Fig. 1 & 10; [0059]).
Regarding claim 3:
Calderone either alone or as modified discloses all the limitations, except for wherein the thermal and acoustic insulation device including a first half-shell and a second half-shell which cooperate with one another in order to delimit receptacles in which the components of the refrigerant fluid circuit and the at least one heat-transfer fluid circuit extend.
In the same field of endeavor, Plank teaches a thermal and acoustic insulation device (Fig. 1-3) including a first half-shell #20 and a second half-shell #24 which cooperate with one another in order to delimit receptacles in which the components of a heat producing unit extend ([0031-0033]).
Thus, it would have been obvious for one of ordinary skills in the art before the effective filing date to have provided the apparatus of Calderone with the thermal and acoustic insulation device including a first half-shell and a second half-shell which cooperate with one another in order to delimit receptacles in which the components of the refrigerant fluid circuit and the at least one heat-transfer fluid circuit extend; in a similar manner as taught by Plank.
One of ordinary skills would have recognized that doing so would have the components of the heat producing unit to be effectively held together by the thermal and acoustic insulation device; thereby, providing excellent sound insulation effect as suggested by Plank ([0011-0013]).
Regarding claim 4:
Calderone either alone or as modified discloses all the limitations.
Calderone further discloses at least one securing device #524 for securing of the heat-producing unit, designed to secure the heat-producing unit on a chassis of a vehicle ([0059] & [0057]).
Regarding claim 6:
Calderone either alone or as modified discloses all the limitations.
Calderone further discloses an envelope (see latter of front trunk, including the hood in Fig. 1; which envelopes the unit #500) which participates in delimiting at least partly an inner volume which receives the components of the refrigerant fluid circuit and the at least one heat-transfer fluid circuit (see at least Fig. 1), with the thermal and acoustic insulation device taking the form of a foam which extends at least into the inner volume between the envelope and the components of the refrigerant fluid circuit and the at least one heat-transfer fluid circuit (see Fig. 1 & 10; [0059]), wherein the at least one securing device extends in the inner volume (Fig. 1), with the thermal and acoustic insulation device maintaining the position of the at least one securing device within the inner volume (the limitation “the thermal and acoustic insulation device maintaining the position of the at least one securing device within the inner volume” constitutes an intended use limitation that does not further limit the structure of the claimed invention. It has been held that “apparatus claims cover what a device is, not what a device does. Hewett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)).
Regarding claim 7:
Calderone either alone or as modified discloses all the limitations.
Calderone further discloses a first heat exchanger #522, wherein the at least one heat exchanger #506 is a second heat exchanger wherein at least one of the first and second heat exchangers is installed on the exterior of the thermal and acoustic insulation device (see Fig. 10).
Regarding claim 8:
Calderone either alone or as modified discloses all the limitations.
Calderone further discloses wherein the first heat exchanger is used as a gas condenser or cooler, with the second heat exchanger being used as an evaporator (the limitation “the first heat exchanger is used as a gas condenser or cooler, with the second heat exchanger being used as an evaporator” constitutes an intended use limitation that does not further limit the structure of the claimed invention. It has been held that “apparatus claims cover what a device is, not what a device does. Hewett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)).
Regarding claim 9:
Calderone either alone or as modified discloses all the limitations.
Calderone further discloses at least one fluid heat exchanger connection interface (at least one of #534 and the openings of the TXV #520) between the refrigerant fluid circuit and the first heat exchanger installed on the exterior of the thermal and acoustic insulation device (see Fig. 10).
Regarding claims 10-11, 16-22:
The subject matter claimed here is substantially similar to that discussed above. Thus, for sake of simplicity, conciseness, and brevity, please refer to the rejections above for the rejection of claims 10-13.
Allowable Subject Matter
Claim 5 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.
The following is a statement of reasons for the indication of allowable subject matter:
There is no teaching in the prior art of record that would, reasonably and absent impermissible hindsight, motivate one of ordinary skill in the art to modify the teachings of Calderone so as to provide the at least one securing device with a base and a rod projecting from the base, an insulating cylinder installed around the rod, with the at least one securing device including a wall integral with the insulating cylinder and the thermal and acoustic insulation device.
Response to Arguments
Applicant’s arguments with respect to claim(s) 12/02/2025 have been considered but are moot in view of the new ground of rejection presented herein.
Applicant submitted that both Calderone and Plank, either alone or in combination, fail to teach or suggest the features of, inter alia, "a heat-producing unit including a thermal and acoustic insulation device which extends at least partly around at least one of the components of the refrigerant fluid circuit and matches the form of the components such that the components are mechanically retained by the thermal and acoustic insulation device maintaining the position of the components of the refrigerant fluid circuit within the heat-producing unit".
It was pointed out to the applicant that the term “matches the form of the components such that the components are mechanically retained by the thermal and acoustic insulation device maintaining the position of the components of the refrigerant fluid circuit within the heat-producing unit” constitute a functional limitation of the thermal and acoustic insulation device. The thermal and acoustic insulation device #528 is as a shell that mechanically retains and maintains the position of the components therein.
MPEP 2114 states that apparatus claims cover what a device is, not what a device does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. In the instant case, the thermal and acoustic insulation device is the structural limitation that is also found in the prior art by Calderone. Thus, recitation with respect to the manner in which the thermal and acoustic insulation device is intended to be employed does not differentiate the instant claim from the prior art since the prior art teaches the thermal and acoustic insulation device as structural limitation.
It was also pointed out to the applicant that Plank teaches a thermal and acoustic insulation device (Fig. 1-3) including a first half-shell #20 and a second half-shell #24 which cooperate with one another in order to delimit receptacles in which the components of a heat producing unit are provided ([0031-0033]); such that the components are mechanically retained by the thermal and acoustic insulation device maintaining the position of the components (best seen in Fig. 1-2 & 7; abstract: thermal and acoustic insulation device #20 is provided so that inner contours thereof retain and maintain the position of component).
Accordingly, it would have been obvious for one of ordinary skills in the art before the effective filing date to have provided the apparatus of Calderone with the thermal and acoustic insulation device provided such that the components are mechanically retained by the thermal and acoustic insulation device maintaining the position of the components; in a similar manner as taught by Plank. The benefits of doing so include providing excellent heat insulating properties and excellent noise damping effect as suggested by Plank.
Applicant argument is not persuasive. The instant claims remain unpatentable over the prior art of record.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIONEL W NOUKETCHA whose telephone number is (571)272-8438. The examiner can normally be reached on Mon - Fri: 08:00 AM - 04:00 PM.
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/LIONEL NOUKETCHA/Primary Examiner, Art Unit 3763