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 Group I (claims 1-18) n the reply filed on 3/23/2026 is acknowledged. The traversal is on the ground(s) that the search and examination of all the claims can be made without serious burden. This is not found persuasive because the restriction requirement has shown that the product and method claims are distinct, and a burden of examination occurs when the subject matters are examined together that requires different classification, field, and strategy of search.
The requirement is still deemed proper and is therefore made FINAL.
Claims 19 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 3/23/2026.
Specification/Drawings
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:
Figs. 23A-23D do not include “inlet manifold header tracers 372” described in paragraph 00145.
Figs. 25A-25B do not include “412 (FIG. 25A)” and “414 (FIG. 25B)” described in paragraph 00148-00149.
Figs. 28A-28B do not include “converging header tracer 357” described in paragraph 00152.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
“416” in Figs. 24C, 25A and 25B.
Noted that the list above is not exhaustive. The lengthy specification and figures have not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant' s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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.
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: “alignment members” in claim 17. “members” is a generic placeholder that is coupled with functions “alignment” and “configured to align the tracer panel with an upstream or downstream tracer panel”. Further, the generic placeholder is not preceded by a structural modifier.
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.
Paragraph 0159 in specification discloses “Alternatively, or additionally, the alignment members 170 may be alignment projections 172 (e.g., tubes, bars, other projections, or the like) that extend from a portion of the tracer panel 100, that may butt up to portions of the structure 50 and/or adjacent alignment projections 172”. Therefore, the alignment members may have a structure having projections, tubes, bars, other projections.
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 Objections
Claim 17 is objected to because of the following informalities:
“the panel tracer” in claim 17 should read -- the tracer panel--.
Appropriate correction is required.
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.
Claims 2 and 15 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 2 recites “an intermediate serpentine header tracer”. It is unclear if it is a new element or is a part of or referring to “one or more intermediate serpentine header tracers” earlier recited in claim 2.
For examination purposes, “an intermediate serpentine header tracer” is construed as --an intermediate serpentine header tracer of the one or more intermediate serpentine header tracers--.
The term “flexible” in claim 15 is a relative term which renders the claim indefinite. The term “flexible” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
For examination purposes, “flexible members” in claim 15 is construed as -- members--.
Claim Rejections - 35 USC § 102
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) 1-11 and 13-17 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Mackenzie (US Patent No. 9,010,407).
Regarding claim 1, Mackenzie discloses a tracer panel (one heat exchanger module 46, or a group of two or three heat exchanger modules 46, Fig. 6) of a plurality of tracer panels (of three heat exchanger modules 46, Fig. 6 and can include any number of heat exchanger modules 46, col. 5, lines 48-53) in a tracer system for heating or cooling a fluid within a structure (in a pipe system 16 to provide heat recovery surrounding a waste water pipe 40), the tracer panel comprising:
two or more tracers spaced apart from each other (individual straight pipe segments 73 in the one heat exchanger module 46, or serpentine pipes 72 with the segments 73 and U joints 75 in the two or three heat exchanger modules 46);
an inlet header tracer (fitting 58 or an inlet manifold 42) operatively coupled to at least one of the two or more tracers (coupled to at least one of the straight pipe segments 73 or serpentine pipes 72); and
an outlet header tracer (fitting 66 or an outlet manifold 44) operatively coupled to at least one of the two or more tracers (coupled to at least one of the straight pipe segments 73 or serpentine pipes 72);
wherein the tracer panel is at last partially curved to form a curved tracer panel (the one or two heat exchanger modules 46, Fig. 6 is/are curved) configured to be installed on a non-linear surface of the structure (to be installed to the waste water pipe 40).
Regarding claim 2, Mackenzie in claim 1 further discloses wherein the two or more tracers comprise two or more longitudinal tracers (the individual straight pipe segments 73 are longitudinal pipes parallel to an axis of the pipe 40), and wherein the tracer panel further comprises:
one or more intermediate serpentine header tracers (U joints 75);
wherein an intermediate serpentine header tracer of the one or more intermediate serpentine header tracers operatively couples ends of two longitudinal tracers of the two or more longitudinal tracers (a U joint 75 couples two ends of two adjacent straight pipe segments 73); and
wherein the one or more intermediate serpentine header tracers have one or more bends to form the curved tracer panel (the U joints 75 have U bend to form the heat exchanger modules 46 with the pipes 73).
Regarding claim 3, Mackenzie in claim 2 further discloses wherein the two or more longitudinal tracers have one or more bends (the tube wall of the straight pipe segments 73 is circular shown in Fig. 6 having one or more bends), and wherein the curved tracer panel is a longitudinal serpentine elbow panel (the heat exchanger module 46 is an elbow and curved shaped panel with longitudinal extending and straight pipe segments 73).
Regarding claim 4, Mackenzie in claim 1 further discloses wherein the two or more tracers comprise two or more longitudinal tracers (the serpentine pipes 72 having straight pipes 73 are longitudinal pipes extending parallel to an axis of the pipe 40); wherein the inlet header tracer is an inlet header manifold (the inlet manifold 42) operatively coupled to first ends of the two or more longitudinal tracers (coupled to ends of two serpentine pipes 72 in the two heat exchanger modules 46); and wherein the outlet header tracer is an outlet header manifold (the outlet manifold 44) operatively coupled to second ends of the two or more longitudinal tracers (coupled to second ends of the two serpentine pipes 72 in the two heat exchanger modules 46).
Regarding claim 5, Mackenzie in claim 4 further discloses wherein the two or more longitudinal tracers have one or more bends (the serpentine pipes 72 have bends at the U joints 75), and wherein the curved tracer panel is a longitudinal parallel elbow tracer panel (the heat exchanger modules 46 are an elbow and curved shaped panel with longitudinal extending and parallel straight pipe segments 73).
Regarding claim 6, Mackenzie in claim 1 further discloses wherein the two or more tracers comprise two or more transverse tracers (the serpentine pipes 72 having U joints 75 are also transverse pipes extending perpendicular to an axis of the pipe 40), wherein the two or more transverse tracers each have one or more bends that form the curved tracer panel (the U joints 75 have U bend to form the heat exchanger modules 46 with the pipes 73).
Regarding claim 7, Mackenzie in claim 6 further discloses wherein the inlet header tracer is an inlet header manifold (the inlet manifold 42) operatively coupled to first ends of the two or more transverse tracers (coupled to inlet ends of two serpentine pipes 72 in the two heat exchanger modules 46), and wherein the outlet header tracer is an outlet header manifold (the outlet manifold 44) operatively coupled to second ends of the two or more transverse tracers (coupled to outlet ends of the two serpentine pipes 72 in the two heat exchanger modules 46).
Regarding claim 8, Mackenzie in claim 7 further discloses wherein the inlet header manifold or the outlet header manifold have one or more bends (the manifolds 42 and 44 are curved, see Fig. 5), and wherein the curved tracer panel is a transverse parallel elbow panel (the heat exchanger modules 46 are an elbow and curved shaped panel with transverse extending U joints 75 and parallel straight pipe segments 73).
Regarding claim 9, Mackenzie in claim 6 further discloses wherein the two or more transverse tracers comprise three or more transverse tracers (the three serpentine pipes 72 in the group of three heat exchanger modules 46 are transverse pipes extending perpendicular to an axis of the pipe 40), wherein the tracer panel further comprising:
one or more converging serpentine header tracers (an outlet manifold 44) operatively coupling converging ends of two transverse tracers (receiving and converging a heat exchanging fluid from outlet ends at fittings 66 of the three serpentine pipes 72); and
one or more diverging serpentine header tracers (an inlet manifold 42) operatively coupling diverging ends of two transverse tracers (receiving and diverging a heat exchanging fluid to inlet ends at fittings 58 of the three serpentine pipes 72);
wherein the one or more converging serpentine header tracers and the one or more diverging serpentine header tracers form a transverse serpentine elbow panel (the manifolds 42 and 44 form the heat exchanger modules 46 having an elbow and curved shaped with the three serpentine pipes 72).
Regarding claim 10, Mackenzie in claim 6 further discloses tracer bracing operatively coupling the two or more transverse tracers (a clamp 76 couples the two serpentine pipes 72, Fig. 6).
Regarding claim 11, Mackenzie in claim 1 further discloses wherein the two or more tracers (the individual pipes 73 or the serpentine pipes 72) are operatively coupled to each other (the individual pipes 73 are coupled to each other by U bends 75; the serpentine pipes 72 are coupled to each other by an inlet manifold 42 and outlet manifold 44) or the inlet header tracer and the outlet header tracer (the serpentine pipes 72 are also coupled to the inlet manifold 42 and outlet manifold 44) through tracer connectors (the U bends 75 to connect the individual pipes 73; or the fittings 58, 66 to connect the serpentine pipes 72 to each other or to the inlet manifold 42 and outlet manifold 44).
Regarding claim 13, Mackenzie in claim 1 further discloses wherein the two or more tracers are formed to a length on-site (the serpentine pipes 72 are formed as shown on the site of the pipe 40, see Fig. 3) and operatively coupled to the inlet header tracer and the outlet header tracer on site (and the serpentine pipes 72 are connected to the fittings 58, 66 or the manifolds 42, 44 on the site of the pipe 50).
Regarding claim 14, Mackenzie in claim 13 further discloses wherein the inlet header tracer and the outlet header tracer are at least partially pre-formed by bending before shipping on-site (“by bending before shipping on-site” is product-by-process limitation, and the patentability of a product does not depend on its method of production, see MPEP 2113. The product-by-process does not imply a distinct structure to the “the inlet header tracer and the outlet header tracer” itself formed by bending or any other method like casting. Therefore, the required structure is “wherein the inlet header tracer and the outlet header tracer are at least partially pre-formed”, and the broadest reasonable interpretation to “at least partially pre-formed” is any work, connection, installation or assembly before the finished tracer panel. Mackenzie discloses that the manifolds 42, 44, fittings 58, 66 are connected and require connection, col, 5, lines 26-45, inherently before the finished product and thus Mackenzie meets the BRI of the claim).
Regarding claim 15, Mackenzie in claim 1 further discloses one or more members operatively coupling the two or more tracers (a clamp 76 couples the two serpentine pipes 72, Fig. 3), wherein the one or more members are configured to allow installation of the tracer panel on structures having different curved surfaces (the clamp 76 allows the two heat exchanger modules 46 to be installed on the pipe 40 having different curved surfaces at different locations of the pipe).
Regarding claim 16, Mackenzie in claim 1 further discloses one or more stiffeners operatively coupling the two or more tracers (a clamp 76 couples the two serpentine pipes 72, Fig. 3), wherein the one or more stiffeners aid in resisting deformation of the tracer panel (the clamp retains shape of the two heat exchanger modules 46).
Regarding claim 17, Mackenzie in claim 1 further discloses one or more alignment members on the tracer panel (a clamp 76 couples the two serpentine pipes 72 of the two heat exchanger modules 46, Fig. 3) configured to align the tracer panel with an upstream or downstream tracer panel (the clamp 76 having a bar structure as interpreted above aligns the two heat exchanger modules 46 with another heat exchanger modules 46 around the pipe 40).
Claim(s) 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ferraro (US Patent No. 7,216,696).
Regarding claim 18, Mackenzie discloses a panel tracer system for heating or cooling a structure (heat exchanger elements 101 surrounding an exhaust flue pipe 107 to provide heat recovery, Fig. 10), the panel tracer system comprising:
two or more tracer panels operatively coupled in series (heat exchanger elements 101 in a series arrangement in Fig. 10G), wherein the two or more tracer panels comprise:
two or more tracers spaced apart from each other (tubes 115, Fig. 10B of each heat exchanger elements 101 are separated from each other);
an inlet header tracer (nipple 104 supplying a fluid flow into a heat exchanger element 101) operatively coupled to at least one of the two or more tracers (the heat exchanger element 101 on left side of Fig. 10G); and
an outlet header tracer (nipple 104 receiving a fluid flow from a heat exchanger element 101) operatively coupled to at least one of the two or more tracers (the heat exchanger element 101 on right side of Fig. 10G);
wherein the two or more tracer panels are at last partially curved to form curved tracer panels configured to be installed on one or more non-linear surfaces of the structure (the heat exchanger element 101 are curved panels to be installed on a curved surface of the flue pipe 107).
Claim Rejections - 35 USC § 103
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) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mackenzie (US Patent No. 9,010,407) alone.
Regarding claim 12, Mackenzie in claim 11 fails to explicitly disclose wherein the tracer connectors comprise compression fittings, flared JIC fittings, butt welding, or socket welding.
Mackenzie further discloses “The inlet 52 may be fluidly coupled with the first preheat conduit 24 of the water supply system 12 via an adaptor, compression fitting, slip nut, welding, soldering, brazing, for example, and/or other suitable means” col. 5, lines 26-35. The compression fitting is provided to connect first preheat conduit 24 and the inlet 52.
Since the U bends 75 to connect the individual pipes 73; or the fittings 58, 66 (as the “the tracer connectors” claimed) in Mackenzie are also connectors of the individual pipes 73 or the serpentine pipes 72, the U bends 75 and the fittings 58, 66 may be modified to comprise compression fitting so that the individual pipes 73 or the serpentine pipes 72 may be coupled together.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided wherein the tracer connectors comprise compression fittings, flared JIC fittings, butt welding, or socket welding in Mackenzie in order to couple the fittings 58, 66, individual pipes 73, the serpentine pipes 72 and manifolds 42 and 44 together.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FOR K LING whose telephone number is (571)272-8752. The examiner can normally be reached Monday through Friday, 8:30 am to 5 pm.
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/JIANYING C ATKISSON/Supervisory Patent Examiner, Art Unit 3763
/F.K.L/Examiner, Art Unit 3763