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 .
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 “blocking device” in at least claim 6 and “geothermal device” in at least claim 8. 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:
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.
Heat/cooling delivery device is interpreted to cover a cassette as per para [0039] of applicant specification.
Heat/cooling device is interpreted to cover at least one of a VRF system and heat pump as per para [0035] of applicant specification.
Supplemental heating system is interpreted to cover at least one of baseboard heating and forced hot air as per para [0038] of applicant specification.
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, 3, 5-14, 16-19, and 21-23 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, 13, 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:
“blocking device” in at least claim 6;
“geothermal device” in at least claim 8.
Claims 5-7 and 9-12 either depend from a non-existing claim (i.e. claim 5 depends on claim 24; which claim does not exist) or a claim that has been cancelled (i.e. claim 7 depends on claim 2; which claim has been cancelled). It is unclear what the scope of each of these claims is. Accordingly, said claims are indefinite.
All dependent claims from 1 and 16 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 5-7 and 9-12 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.
Each of the claims above either depend from a non-existing claim (i.e. claim 5 depends on claim 24; which claim does not exist) or a claim that has been cancelled (i.e. claim 7 depends on claim 2; which claim has been cancelled). Accordingly, the aforementioned claims are in improper dependent form.
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 Rejections – prior art
Where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
Response to Arguments
Applicant's arguments filed on 05/15/2026 have been fully and thoroughly considered.
With respect to 112(f), applicant submitted in the remarks (pages 3-4) that “the heat/cooling source and delivery device are structural features of the heating/cooling system as the source and device are connected via the heat transfer fluid transferred between them "to enable the heat/cooling delivery device to deliver heat/cooling". These are elements related to heating and cooling when combined and connected as claimed create a system which delivers heat/cooling.”
This assertion does not change the fact each 112(f) term in the claims Shall be construed to cover the corresponding structure described in the specification. See MPEP 2181. Absent proper structure for each 112(f) term, issue(s) pertaining to 112(b) are raised.
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).
Applicant further submitted on page 4 of the remarks with respect to "heat/cooling delivery device" that heat/cooling is a structural property that is measurable from a thermodynamic perspective. A device which delivers that heat/cooling is a delivery device, thus a "heat/cooling delivery device". Because heat/cooling is structural and delivery of heat/cooling is measurable a device which delivers heat/cooling is therefore structural and measurable.
In response to this, the examiner submits that "Heat/cooling delivery device" in the application must be linked to a structure capable of transferring thermal energy. That is why the examiner made reference to para [0039] of applicant specification to interpret heat/cooling delivery device to cover a cassette.
Applicant further submitted on page 4 of the remarks that “heat/cooling is a property of measurable thermodynamics. A source of heat/cooling is where the measurable thermodynamic property of heat/cooling comes from…. Heat/cooling is a thermodynamic property. Delivery of heat or cooling is a structural movement of thermodynamic energy. A source of heat or cooling is a structural presence of thermodynamic energy.”
In response to this, the examiner submits that the argument does not point out what structure the applicant is referring to as heat/cooling source. While applicant asserts that delivery of heat or cooling is a structural movement of thermodynamic energy, applicant specification does not set forth in the specification an adequate disclosure showing what is meant by that language. Because there is no disclosure of a corresponding structure for performing the recited function of sourcing heat/cooling, the requirements of 35 U.S.C. 112(b) is not satisfied.
Note: applicant submitted on page 2 of the remarks that “a VRF is disclosed, the heat pump/compressor is disclosed and these are but some examples of sources of heat/cooling that a POSITA understands as such.”
In response to this, the examiner submits that para [0035] of applicant specification point out that “a VRF system, heat pump or other heating/cooling device that enables delivery on a room space by room space basis can be utilized.” Thus, an ordinary skill artisan reading the specification will interpret a VRF system and a heat pump as heating/cooling device; not as heat/cooling source.
Even if, as per applicant argument, a VRF and a heat pump/compressor were structural limitations corresponding to the heat/cooling source, a new issue of which structure correspond to the heat/cooling device of claim 3 would be raised.
With respect to the argument of page 2 of the remarks that “the POSITA must be the same for all purposes and examiner asserts that a geothermal device is so well known that it is subject to official notice (Page 13). Examiner cannot allege that this is something so well known in the art to the POSITA in one area of the rejection while alleging its unknown or unclear in another”; the examiner submits that in page 13, official notice is made by referencing a geothermal air conditioning system. Not a geothermal device. Geothermal air conditioning system is a structure of the general state of the art that falls under geothermal device.
However, applicant geothermal device does not make reference to a corresponding structure so as to be in accordance with MPEP 2181. Thus, applicant argument that a geothermal device is well known in the art to the POSITA is not directed to the requirements of MPEP 2181; which states that the corresponding structure of a means- (or step-) plus-function limitation must be disclosed in the specification; or else, the requirements of 35 U.S.C. 112(b) will not be satisfied.
Conclusion
THIS ACTION IS MADE FINAL. 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 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
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