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 .
This action is in response to the filing made 3/8/2024.
Claims 1-19 are pending.
Allowable Subject Matter
The claims will be allowable provided a terminal disclaimer is filed, and the 112 rejections are overcome without broadening the scope of the claims.
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 10 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 10
The claim recites, “compute a pressure difference between a desired refrigerant pressure and a detected refrigerant pressure at the EEEV”. This is not clear because if the pressure being measured is a high pressure upstream of the expansion valve, or a low pressure downstream of the expansion valve.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over:
claims 1-20 of U.S. Patent No. 11,927,377 (‘377),
claims 1-21 of US Patent 11,480,372 (‘372),
claims 1-20 of US Patent 10,753,661 (‘661), and US 2014-0020637 to Yamin
claims 1-22 of US Patent 10,119,738 (‘738).
Although the claims at issue are not identical, they are not patentably distinct from each other.
In the case of the ‘377 patent, the present application’s independent claims are essentially the same, except that the ‘377 patent’s claims recite a “diverter” while the present application’s claims recite a “fluid divider”. In the specifications and figures of ‘377 and the present application, these are merely different terms, for the same structure, at the same location, in the same system.
The present application’s claim language adds details on the position and function provided by the fluid divider, (i.e., the fluid divider being positioned to direct a portion of the refrigerant from the refrigerant circuit to the economizer circuit in the heating mode and to direct none of the refrigerant from the refrigerant circuit to the economizer circuit in the cooling mode).
However, this added detail would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, given that the claimed system layouts of both documents are the same, they operate in the same or similar modes, and diverters/dividers have to be at the same position and function the same way for each system to perform their claimed operating modes.
In the case of the ‘372 patent, the comments above regarding the “fluid divider” and diverter also apply in this case.
Further, in the independent claims of both the ‘372 patent and the present application, two different expansion valves (the EPEV and EEEV) are claimed, and are arranged in the same fashion and perform the same functions in various modes. However, the present application adds additional details to describe how these valves function in different operating modes. This added detail is obvious to one of ordinary skill in the art, prior to the effective filing date, because the same valves, located in the same places in both system layouts, will necessarily perform in the same manner in the same operating modes.
In the case of the ‘661 patent, the comments above regarding the “fluid divider” and diverter also apply in this case.
The ‘661 patent’s independent claims add some functional details regarding the expansion valves that can also be performed by the structure of the instant application, similar to the situation discussed in the immediately preceding discussion of the ’372 patent.
While the claims of both documents recite heat exchangers, the ‘661 patent’s claims further limit such heat exchangers to “coaxial” heat exchangers.” However, the use of coaxial heat exchangers is obvious, to one of ordinary skill in the art, prior to the effective filing date, in view of US 2014-0020637 to Yamin, which teaches that coaxial heat exchangers can be interchanged with other types of heat exchangers (par. 47).
In the case of the ‘738 patent, the comments above regarding the “fluid divider” and diverter also apply in this case. The ‘738 patent independent claims also limit the heat exchangers to co-axial heat exchangers, and limits the compressor to a scroll compressor, while the present application does not limit the heat exchangers and compressor to any specific type. Consequently the present application would be obvious to one of ordinary skill in the art, prior to the effective filing date, in view of the ‘738 patent, because the present application is a broader version of the device than that found in the ‘738 patent..
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HENRY T CRENSHAW whose telephone number is (571)270-1550. The examiner can normally be reached M-F 9:00 am to 5:00 pm.
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/HENRY T CRENSHAW/Primary Examiner, Art Unit 3763