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 allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). 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, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 5/27/2025 has been entered.
Response to Amendment
The reply filed on 5/27/2025 amended claims 1 and 5, Claims 1-9 are currently pending herein.
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 “mechanically and thermally coupled to one or more demand systems” (Claim 2) and “an HVAC system” (Claim 2/5), and “each chamber being coupled to an HVAC system in a parallel configuration” (Claim 3), and “wherein at least two of said chambers are mechanically and/or thermally decoupled” (Claim 4) and “one or more motors, one or more inverters, one or more batteries, and a cabin” (Claim 6) must all be shown and labeled 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.
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.
Claims 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 11,752,830 and claims 1-4 of U.S. Patent No. 11,975,591. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-9 are generic to all that is recited in claims 1-5 of U.S. Patent No. 11,752,830 and claims 1-4 of U.S. Patent No. 11,975,591. In other words, claims 1-5 of U.S. Patent No. 11,752,830 and claims 1-4 of U.S. Patent No. 11,975,591, fully encompasses the subject matter of claims 1-9, and therefore anticipate claims 1-9. Since claims 1-9 are anticipated by claims 1-5 and 1-4 of the patents, they are not patentably distinct from claims 1-5 and 1-4. Thus, the invention of claims 1-5 and 1-4 of the patents are in effect a species of the generic invention of claims 1-9. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1-9 are anticipated (fully encompassed) by claims 1-5 and 1-4 of the patents, claims 1-9 are not patentably distinct from claims 1-5 and 1-4, regardless of any additional subject matter present in claims 1-9.
Claim Objections
Claim 2/3 is objected to because of the following informalities: the limitation “HVAC” (line 2) should be rewritten as: “Heating Ventilation and Air Conditioning (HVAC).” Appropriate correction is required.
Claim 5 is objected to because of the following informalities: the limitation “HVAC” (line 16) should be rewritten as: “Heating Ventilation and Air Conditioning (HVAC).” 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 1-4 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. Regarding claim 1, the claim recites the limitation “A heat exchanger" (line 1) and “a heat exchanger” (line 5) which renders the claims indefinite, since it's not clear regarding antecedent basis and whether the claim limitations refer to the same element or different elements. It is suggested that the first mention be rewritten as “An aerodynamic heat exchanger apparatus.” Appropriate correction is required.
Claim 2 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 pre-AIA the applicant regards as the invention. Regarding claim 2, the claim recites the limitation “to or from" (line 3) which is unclear and therefore renders the claims indefinite. For rewriting see a similar limitation from Claim 5. Appropriate correction is required.
Claim 1, 3, and 4 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. Regarding claim 1 and 3, the claim recites the limitation “said aerodynamic heat exchanger" (Claim 1, line 6; Claim 3, line 1) which renders the claims indefinite, since it's not clear regarding antecedent basis. Furthermore, both instances should most likely be rewritten as “said aerodynamic heat exchanger” Appropriate correction is required.
Claim 4 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 pre-AIA the applicant regards as the invention. Regarding claim 4, the claim recites the limitation “at least two of said chambers" (line 1) which renders the claims indefinite, since it's not clear regarding antecedent basis. Claim 1 only recites “a chamber.” Appropriate correction is required.
Claim 4 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 pre-AIA the applicant regards as the invention. Regarding claim 4, the claim include limitations linked by the phrase "and/or." This renders the claim indefinite, as it is unclear if the combination of limitations is required or optional. Appropriate correction is required.
Claims 5-9 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. Regarding claim 5, the claim recites the limitation “proximate" (line 22) which is unclear and therefore renders the claims indefinite. The term "proximate" is a relative term and 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. Since no tolerances have been defined by the specification or claims, it's impossible to determine what range has been actually claimed, thus rendering the scope of the claim(s) not clearly defined. Appropriate correction is required.
Claims 8 and 9 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. Regarding claim 8 and 9, the claims recites the limitation “at least about 50% to at least about 90%" (line 1) which is unclear and therefore renders the claims indefinite. The term "about" is a relative term and 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. Since no tolerances have been defined by the specification or claims, it's impossible to determine what range has been actually claimed, thus rendering the scope of the claim(s) not clearly defined. Appropriate correction is required.
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 (i.e., changing from AIA to pre-AIA ) 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) 1-4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Golembeski et al. (US 9,926,022 B1).
[Claim 1] Regarding Claim 1, Golembeski discloses: A heat exchanger (See, e.g., Fig.1-4) comprising:
an aerodynamic panel (See, e.g., Fig.1-4, 54) having a smooth body exposed to an ambient environment (See, e.g., Fig.1-4);
a heat exchanger (See, e.g., Fig.1-4, 46) formed in said aerodynamic panel (See, e.g., Fig.1-4) said aerodynamic heat exchanger comprising:
a chamber (See, e.g., Fig.1-4, 54) including an inner chamber portion and an outer chamber portion (See, e.g., Fig.1-4, 54), said inner chamber portion having an inlet (See, e.g., Fig.1-4, 25+72) and an outlet (See, e.g., Fig.1-4, 64), and a fluid channel (See, e.g., Fig.1-4, 54), wherein at least a portion of said outer chamber forms at least a portion of said body (See, e.g., Fig.1-4),
wherein in an assembled configuration, said inner and outer chamber portions form said chamber adapted to receive a fluid at said inlet, to expel said fluid at said outlet, said fluid passing along said fluid channel (See, e.g., Fig.1-4).
[Claim 2] Regarding Claim 2, Golembeski discloses: further comprising an HVAC system (See, e.g., Fig.1-4, 52) coupled to said inlet and said outlet of said aerodynamic heat exchanger (See, e.g., Fig.1-4), said HVAC system being mechanically and thermally coupled to one or more demand systems (See, e.g., Fig.1-4, 34) and adapted to transfer heat to or from said aerodynamic heat exchanger to thereby be rejected to said ambient environment (See, e.g., Fig.1-4).
[Claim 3] Regarding Claim 3, Golembeski discloses: wherein said aerodynamic heat exchanger comprises a plurality of chambers (See, e.g., Fig.1-4, 54), each chamber being coupled to an HVAC system in a parallel configuration (See, e.g., Fig.1-4).
[Claim 4] Regarding Claim 4, Golembeski discloses: wherein at least two of said chambers are mechanically and/or thermally decoupled (See, e.g., Fig.1-4)
Allowable Subject Matter
Claims 5-9 would be allowable if rewritten or amended 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure, and can be found on the attached Notice of References Cited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M DOLAK whose telephone number is (571)270-7757. The examiner can normally be reached on 9-530 EST Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, J ALLEN SHRIVER can be reached on 303-297-4337. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES M DOLAK/Primary Examiner, Art Unit 3613