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 .
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:
“an electric heating element” in claims 2-3, 6-7.
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.
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.
After reviewing the specification, electric heating element is not defined.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2-3, 6-7 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because the claim purports to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim.
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 limitation “electric heating element” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The claim invokes 112f as it recites the functional language of “heating” and the generic placeholder of “element” which renders the claim indefinite as it is unclear what structure constitutes the limitation and what is performing the functions of the claim. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 2021/0309069).
Regarding claim 1, Kim teaches a thermal circuit for a battery-electric motor vehicle (see Title, Abstract), the thermal circuit comprising:
a first partial circuit for a high-voltage battery (defined as the circuit indicated by 20, see 24, Fig. 1, paragraph [0060]);
a second partial circuit for a chiller (30, Fig. 1, see paragraph [0051], the partial circuit defined as the 30 is positioned on);
a third partial circuit (10, Fig. 1) for at least one electric drive machine (15, Fig. 1, see paragraph [0056]); and
a fourth partial circuit (40, Fig. 1, paragraph [0075]) for an air conditioner of a refrigerant circuit for a transport compartment (50, Fig. 1, paragraphs [0077]-[0078]),
wherein some of the partial circuits comprises a pump (14, 22, Fig. 1, paragraph [0062]) and a temperature control medium (see paragraph [0062]) which is configured to be circulated by the pump within a respective partial circuit sealed off from at least one of the other partial circuits (see Fig. 1), and
wherein at least two of the partial circuits can be connected to each other in a mixable manner by at least one mixing valve (V2, Fig. 1, paragraph [0060]).
Kim does not teach that each partial circuit comprises a pump. However, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date, to provide Kim with each partial circuit having a pump, as it has been held that a mere duplication of essential working parts of a device involves only routine skill in the art.
Regarding claim 2, Kim as modified teaches the thermal circuit according to claim 1, wherein the partial circuits that can be connected to each other in a mixable manner share at least one of the following: the chiller of the second partial circuit, an air heat exchanger (12, Fig. 1, paragraph [0055]), an expansion tank (16, Fig. 1, paragraph [0071]), and an electric heating element (see 26, paragraph [0075]).
Regarding claim 3, Kim as modified teaches the thermal circuit according to claim 1, wherein the first partial circuit or the second partial circuit or a connection section between the first partial circuit and the second partial circuit further comprises: an electric heating element (see 26, paragraph [0075]), and/or an on-board charger (not required as the claim is claimed in the alternative).
Regarding claim 4, Kim as modified teaches the thermal circuit according to claim 1, wherein the temperature control medium is a dielectric liquid and at least one of the following is immersion tempered: the at least one electric drive machine (see paragraph [0059] which notes the drive machine is cooled by coolant);
the high voltage battery, at least one pulse inverter for one of the at least one drive machines, an on-board charger, and a step-up converter (the following limitations are not required as the claim is claimed in the alternative).
Regarding claim 5, Kim as modified teaches the thermal circuit according to claim 1, wherein the chiller interacts with the refrigerant circuit for the transport compartment, for retempering and the refrigerant circuit is in air-heat exchange with the fourth partial circuit for the air conditioner of the transport compartment (see Fig. 1).
Regarding claim 6, Kim as modified teaches the thermal circuit according to claim 1, wherein by a first of the at least one mixing valves, at least two of the following operating states and a mixing of the partial circuits according to the operating states can be set:
a closed first partial circuit exclusively via the high-voltage battery (see Fig. 4);
a closed first partial circuit exclusively via the high-voltage battery and an electric heating element (not required as the claim is claimed in the alternative); and
a common circuit of the first partial circuit and the second partial circuit (see Fig. 3).
Regarding claim 7, Kim as modified teaches the thermal circuit according to claim 1, wherein by a second one of the at least one mixing valves, at least two of the following operating states and a mixing of the partial circuits according to the individual operating states can be set:
a closed second partial circuit exclusively via the chiller (not required as the claim is claimed in the alternative);
a closed second partial circuit exclusively via the chiller and an electric heating element (see Fig. 4); and
a common circuit of the first partial circuit and the second partial circuit (see Fig. 3).
Regarding claim 8, Kim as modified teaches the thermal circuit according to claim 1, wherein, by a third one of the at least one mixing valves, at least two of the following operating conditions and a mixture of the partial circuits according to the individual operating conditions can be set:
a closed third partial circuit exclusively via the at least one electric drive machine (Fig. 7);
a closed third partial circuit exclusively via the at least one electric drive machine and an air heat exchanger (not required as the claim is claimed in the alternative); and
a common circuit from the third partial circuit to the first partial circuit and/or the second partial circuit (see Fig. 3).
Regarding claim 9, Kim as modified teaches the thermal circuit according to claim 1, wherein by a fourth of the at least one mixing valves at least one of the following operating states and a mixing of the partial circuits according to the individual operating states can be set:
a closed fourth partial circuit exclusively via the air conditioner (see Fig. 3); and
a common circuit of the fourth partial circuit with the third partial circuit.
Regarding claim 10, Kim as modified teaches a motor vehicle having an electrified drive (see at least paragraph [0003]), comprising a transport compartment and the thermal circuit according to claim 1 for tempering the electrified drive and the transport compartment (see rejection of claim 1 above), wherein the electrified engine comprises:
at least one electric drive machine (15, Fig. 1, see paragraph [0056]);
at least one high-voltage battery for supplying an electrical power current to the at least one electric drive machine (24, Fig. 1, paragraph [0051]); and
at least one propulsion wheel for propelling the motor vehicle using a torque output of the at least one electric drive machine (inherently required for a vehicular system).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NAEL N BABAA whose telephone number is (571)270-3272. The examiner can normally be reached M-F, 9-5 EST.
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, Jerry-Daryl Fletcher can be reached at (571)-270-5054. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NAEL N BABAA/Primary Examiner, Art Unit 3763
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