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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/22/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
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 “heat/cooling source” as claimed in at least claim 1 must be shown or the feature(s) canceled from the claim(s). 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “5” has been used to designate the followings:
a compressor/heat pump (see at least [0035]);
heat/cooling system (see at least [0036]);
VRF (Variable Refrigerant Flow) (see at least [0038]); and
room devices (see at least [0038]).
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.
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: “800” (see at least para [0038]). 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.
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 claims call for the limitation “heat/cooling source” (see at least line 3 of claim 1). The specification fails to provide clear support for said “heat/cooling source”. In other words, the specification does not allow the meaning of the terms in the claims to be ascertainable by reference to the description. To overcome this objection, applicant should:
(A) clarify the record by amending the written description such that it expressly recites what structure performs the function recited in the claim element in a manner that does not add prohibited new matter to the specification; or
(B) state on the record what structure performs the function recited in the means- (or step-) plus-function limitation.
A similar issue is found with the recitation “energy consuming heat/cooling device” in claim 3; “blocking device” in at least claim 6; “geothermal device” in at least claim 8; and “supplemental heating system” in at least claim 11. Appropriate correction is required.
See 112 section below, and MPEP, 37 CFR 1.75(d)(1).
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:
In at least claim 1:
heating/cooling system
a heat/cooling source
heat/cooling delivery device
In at least claim 3:
energy consuming heat/cooling device
In at least claim 6:
blocking device
In at least claim 8:
geothermal device
In at least claim 11:
supplemental heating system
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.
Heating/cooling system is interpreted to cover “a plurality of refrigerant line sets” as per claim 9 of applicant specification; and equivalents thereof.
Heat/cooling delivery device is interpreted to cover a cassette as per para [0039] 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 § 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(s) 1-22 is/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 pre-AIA the applicant regards as the invention.
Claims 1 and 16 each recites the limitation “a heat/cooling source”, which limitation is indefinite as it is unclear which particular structure the applicant is referring to as “heat/cooling source”. The specification is devoid of adequate structure for the claimed heat/cooling source. In other words, there is no disclosure of any particular structure, either explicitly or inherently, that is used as a heat/cooling source to perform the function of providing heat/cooling. The use of the term “heat/cooling source” is not adequate structure for performing the control function because it does not describe a particular structure for performing the function. Because the specification does not provide sufficient details such that one of ordinary skill in the art would understand which mechanical structure perform the claimed function, the claim is indefinite. See MPEP 2181.
Note: MPEP 2181 states that a claim limitation expressed in means- (or step-) plus- function language "Shall be construed to cover the corresponding structure...described in the specification and equivalents thereof." "If one employs means plus function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant by that language. If an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the 35 U.S.C. 112(b)." In re Donaldson Co., 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994). The proper test for meeting the definiteness requirement is that the corresponding structure of a means- (or step-) plus-function limitation must be disclosed in the specification itself in a way that one skilled in the art will understand what structure will perform the recited function. If there is no disclosure of structure, material or acts for performing the recited function, the claim fails to satisfy the requirements of 35 U.S.C. 112(b).
A similar issue is found with the limitations:
“energy consuming heat/cooling device” in claim 3;
“blocking device” in at least claim 6;
“geothermal device” in at least claim 8.
supplemental heating system in at least claim 11.
The term “substantially the same” in claims 15 and 19 is a relative term which renders the claim indefinite. Said term is not defined by the claim. The specification does not provide a standard for ascertaining the requisite degree of substantially the same. Because one of ordinary skill in the art would not be reasonably apprised of the scope of “substantially the same”, the invention is indefinite.
Claim(s) 2-15 and 17-22 is/are indefinite for their dependency on an indefinite base claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 16-22 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Two claims 16 are provided.
Second claim 16 is a method claim that depends on system claim 15. Since claim 16 recites both an apparatus and the method steps of using the apparatus; it is unclear whether infringement occurs when one creates the apparatus or when one actually uses the apparatus (see MPEP 2173.05(p), In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011).
A similar issue is found in each of claims 19-22. Appropriate correction is required.
Claim 17 depends on claim 16. However, it is unclear which of the previously recited claims 16 applicant is referring to.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim(s) 17-22 is/are in improper dependent form for their dependency on a claim in improper dependent form.
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 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) 1-3 and 13-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sotokawa (US 20210207826 A1).
Regarding claim 1:
Sotokawa discloses an HVAC system for a building (abstract; Fig. 1; [0024]) comprising:
a heat exchanger #2 which comprises a fan #23;
a heating/cooling system #3 with a heat/cooling source #5 remote to a heat/cooling delivery device #4, a heat transfer fluid transferred between the heat/cooling source and the heat/cooling delivery device to enable the heat/cooling delivery device to deliver heat/cooling ([0035]);
a first duct (#19 & #17) connected to the heat exchanger such that the first duct is in fluid communication with a first exchanger space of the heat exchanger and the first duct is in fluid communication with a room space in order to introduce fluid into the room space ([0028]);
a second duct (#16 & #18) connected to the heat exchanger such that the second duct is in fluid communication with a second exchanger space of the heat exchanger and the second duct in fluid communication with the first room space in order to receive fluid from the room space ([0028]);
wherein the heat exchanger transfers heat between fluid passing through the second heat exchanger space to fluid passing through the first heat exchanger space such that external fluid to the building which is the fluid passing through the first heat exchanger space is brought closer in temperature to the fluid from the room space ([0026]);
the heat/cooling delivery device is located in the room space and receives the heat transfer fluid to warm and/or cool the room space (Fig. 1, [0035]).
Regarding claim 2:
Sotokawa further discloses a controller (#20 & #30) in communication with the heat exchanger and the heating/cooling system wherein the controller coordinates operation of the heat exchanger and the heating/cooling system based on sensor data received from one or more sensors in the room space (see at least Fig. 1-2; [0040-0043]).
Regarding claim 3:
Sotokawa further discloses wherein between the heat exchanger and the room space along the first duct an energy consuming heat/cooling device is absent such that pre-heating and pre-cooling between the heat exchanger and the room space is substantially not provided for the fluid exiting the heat exchanger and entering the room space via the first duct (see Fig. 1).
Regarding claim 13:
Sotokawa further discloses an air quality sensor #34 positioned in the room space (Fig. 2) and connected to the controller wherein the fan of the heat exchanger is activated by the controller based on the air quality sensor indicating air quality below a threshold ([0036]).
Regarding claim 14:
Sotokawa further discloses wherein when the heat exchanger is activated by the controller, the controller activates the heating/cooling system based on a set point for the room space as compared to a measured temperature of the room space ([0033]).
Note: the limitation “when the heat exchanger is activated by the controller, the controller activates the heating/cooling system based on a set point for the room space as compared to a measured temperature of the room space” is a contingent limitation. The broadest reasonable interpretation of a system (or apparatus or product) claim having structure that performs a function, which only needs to occur if a condition precedent is met, requires structure for performing the function should the condition occur. See MPEP 2111.04, II. Contingent limitations, See Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016)). By virtue of all the structural limitations required by the claim being present in the prior art, the prior art can achieve this function.
Regarding claim 15:
Sotokawa further discloses wherein a temperature of air exiting the heat exchanger into the first duct is substantially the same as a temperature of that air exiting the first duct into the first room space (Fig. 1: by virtue of all the limitations being met by the prior art, the prior art can achieve this limitation).
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.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sotokawa (US 20210207826 A1).
Regarding claim 8:
Sotokawa discloses all the limitations, except for the heating/cooling system is a geothermal device.
Nonetheless, geothermal air conditioning system uses underground pipes (ground loops) to exchange heat with the stable temperature of the earth, acting as a heat source in winter and a heat sink in summer, via a water-to-refrigerant heat pump is well-known in the art (official notice).
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 Sotokawa with the air conditioning system being a geothermal air conditioning system.
One of ordinary skills would have recognized that doing so would have provided highly efficient, quiet, and eco-friendly heating and cooling system.
Claim(s) 4-7 and 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sotokawa (US 20210207826 A1) in view of Hur (US 20230151996 A1).
Regarding claim 4:
Sotokawa discloses all the limitations, except for wherein the room space comprises a plurality of room spaces, the heat/cooling delivery device includes a plurality of heat/cooling delivery devices, the first duct includes a plurality of first ducts and the second duct includes a plurality of second ducts each one of the plurality of room spaces including one of the plurality of heat/cooling delivery devices and each one of the plurality of room spaces connected to one of the first ducts and to one of the second ducts.
The difference between the prior art and the claim is that the claimed structured are provided in pluralities.
However, such concept is known in the art as taught by Hur. Hur teaches a plurality of room spaces (Fig. 9A) to be individually conditioned; wherein a plurality of first ducts and a plurality of second ducts are provided so as to communicate with each one of the room spaces.
It has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. See MPEP 2144.04 - In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
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 Sotokawa with the claimed arrangement above, since this concept is as taught by Hur.
One of ordinary skills would have recognized that doing so would have provided independent air conditioning arrangements for multiple occupants; thereby, increasing the serviceability of the system.
Regarding claim 5:
Again, the concept of coordinates operation of each of the plurality of rooms is disclosed by Hur.
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 Sotokawa with the claimed arrangement of claim 5, since this concept is as taught by Hur.
One of ordinary skills would have recognized that doing so would have provided independent air conditioning arrangements for multiple occupants; thereby, increasing the serviceability of the system.
Regarding claim 6:
Again, the concept of coordinates operation of each of the plurality of rooms is disclosed by Hur.
Hur further teaches wherein one or more of the plurality of first and/or second ducts includes a blocking device configured to fully or partially close its associated duct (see dampers in Fig. 9A).
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 Sotokawa with the claimed arrangement of claim 6, since this concept is as taught by Hur.
One of ordinary skills would have recognized that doing so would have provided independent air conditioning arrangements for multiple occupants; thereby, increasing the serviceability of the system.
Regarding claim 7:
The subject matter claimed here is substantially similar to that of claim 4. Thus, for sake of simplicity, conciseness, and brevity, please refer to the rejection of claim 4 above for the rejection of claim 7.
Regarding claim 9:
Sotokawa as modified discloses all the limitations.
Sotokawa further discloses wherein the heating/cooling system includes a plurality of refrigerant line sets, each refrigerant line set supplies refrigerant to at least one refrigerant line that supplies refrigerant to one of the plurality of heat/cooling delivery devices ([0038]).
Regarding claim 10:
Sotokawa as modified discloses all the limitations.
Note: the limitation “when one of the plurality of room spaces requires cooling and another one of the plurality of room spaces requires heating the system directs heat transfer fluid that has already passed through the heat/cooling delivery device of the room space that requires cooling to the heat/cooling delivery device of the another one of the plurality of room spaces that requires heating” is a contingent limitation. The broadest reasonable interpretation of a system (or apparatus or product) claim having structure that performs a function, which only needs to occur if a condition precedent is met, requires structure for performing the function should the condition occur. See MPEP 2111.04, II. Contingent limitations, See Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016)). By virtue of all the structural limitations required by the claim being present in the prior art, the prior art can achieve this function.
Regarding claims 16-22:
If a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will perform the claimed process. Thus, the method of claims 16-22, as claimed, would necessarily result from the normal operation of the apparatus of claim 1-16. See MPEP 2112.02.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hirai (US 20220146138 A1), Moffet (US 20210389014 A1), Matsuda (US 20200300513 A1), Zhou (US 20190137129 A1), Kurelowech (US 20120064818 A1), Takahashi (US 20100015906 A1), and Haglid (US 20080003940 A1).
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.
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, Frantz Jules can be reached on 571-272-6681. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIONEL NOUKETCHA/Primary Examiner, Art Unit 3763