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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04/12/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
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 “a liquefaction unit” (see at least claim 5). The specification fails to provide clear support for said “liquefaction unit”. 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.
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:
a. liquefaction unit in at least claim 5.
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.
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) 3, 5-6, 9, 14, 16-17, and 20 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.
Claim 3 calls for the limitation “a second intermediate medium storage unit configured to store the intermediate medium prior to liquefaction of the intermediate medium for which the second heat exchange has occurred”, which limitation is indefinite as the term “liquefaction of the intermediate medium” lacks proper antecedent basis. The claim makes reference to a step of liquefaction, which was not previously introduced in the claim. Therefore, the scope of the limitation is indefinite.
Claim 3 calls for the limitation “configured to store the intermediate medium prior to liquefaction of the intermediate medium”; which limitation is indefinite as it is unclear as to how liquefaction is achieved, when there is no structure or known mechanism provided to achieved such limitations. Appropriate correction is required.
Claim 5 recites the limitation “a liquefaction unit”, which is indefinite as it is unclear which particular structure the applicant is referring to as “liquefaction unit”. The specification is devoid of adequate structure for the claimed liquefaction unit. In other words, there is no disclosure of any particular structure, either explicitly or inherently, that is used as a liquefaction unit configured to compress and liquefy the intermediate medium. 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 of compressing and liquefying the intermediate medium, the claim is indefinite. See MPEP 2181.
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).
Claim 9 calls for the limitation “a fourth heat exchange occurs”; which limitation is indefinite as it is unclear as to how a fourth heat exchange occurs in the claim when there is no prior recitation of a third heat exchange occurring. It raises some confusion as to whether elements are omitted in the claim. Appropriate correction is required.
Similar issues as those above are found in claims 14 with the recitation “prior to liquefaction of the intermediate medium”; “a liquefaction unit” in claim 16, and ‘a fourth heat exchange occurs between the intermediate medium and an external environment” in claim 20. Appropriate correction is required.
Claim(s) 5-6 and 17 is/are indefinite for their dependency on an indefinite base claim.
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 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) 1-2, 4, 7, and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ryu (KR 20210001307 A).
Regarding claim 1:
Ryu discloses a system #100 for managing a heat source using cold energy ([0004]), the system comprising:
a liquefied gas storage unit configured to store a liquefied gas (see “liquefied gas storage tank”; [0038]);
a heat exchange unit #120 configured to cause cold energy of the liquefied gas to be transferred to an intermediate medium (“heat medium in line #130”; [0034]) so that a first heat exchange occurs between the liquefied gas and the intermediate medium ([0038]); and
a first intermediate medium storage unit #150 configured to store the intermediate medium for which the first heat exchange has occurred ([0043]), and capable of being switched from a closed state to an open state or from an open state to a closed state ((i) this limitation constitutes an intended use limitation that does not further limit the structure of the claimed invention. It has been held that “apparatus claims cover what a device is, not what a device does. Hewett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987); MPEP 2114/Il. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. (ii) with appropriate tools provided, an ordinary skill artisan is capable of closing unit #150 in order to service the system).
Regarding claim 2:
Ryu further discloses wherein a second heat exchange occurs between the heat source and the intermediate medium for which the first heat exchange has occurred (heat exchange in evaporator #160; using a “heat source”. see [0046]).
Regarding claim 4:
Ryu further discloses a power generation unit #170 configured to generate electrical energy using the intermediate medium for which the second heat exchange has occurred ([0051]).
Regarding claim 7:
Ryu further discloses wherein the second heat exchange occurs between the intermediate medium and the heat source as the intermediate medium moves out of the first intermediate medium storage unit (heat exchange in evaporator #160. see [0046]).
Regarding claim 11:
Ryu further discloses wherein a heat medium #90 in which heat generated by the heat source is stored is capable of being stored in a thermal energy storage facility ([0046]. Note: sea water in line #90 is capable of being stored in a thermal energy storage facility).
Claim Rejections - 35 USC § 103
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 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 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 8 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ryu (KR 20210001307 A).
Regarding claim 8:
Ryu discloses all the limitations.
Note that the heat source has not been claimed as part of the invention. Thus, the limitation “a third heat exchange occurs between the intermediate medium and the heat source in a state in which the intermediate medium is stored in the first intermediate medium storage unit” constitutes an intended use limitation that does not further limit the structure of the claimed invention. It has been held that “apparatus claims cover what a device is, not what a device does. Hewett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987); MPEP 2114/Il.)
To the extent that applicant submit otherwise, the examiner submits that it is known to provide multiple stages of heat exchange between an intermediate medium and a heat source in analogous applications (official notice).
Thus, it would have been obvious for one of ordinary skills in the art before the effective filing date to have provided the apparatus of Ruy with a third heat exchange occurs between the intermediate medium and the heat source in a state in which the intermediate medium is stored in the first intermediate medium storage unit.
One of ordinary skills would have recognized that doing so would have increased overall energy efficiency at least by capturing waste heat that would otherwise be lost from the heat sorce; thereby, lowering greenhouse gas emissions.
Regarding claim 10:
Ryu discloses all the limitations.
Note that the heat source has not been claimed as part of the invention. Thus, the limitation “wherein the heat source comprises a power generation facility, wherein the liquefied gas vaporized as the first heat exchange occurs is supplied to the power generation facility, and wherein heat generated by the power generation facility is transferred to the intermediate medium so that the second heat exchange occurs between the power generation facility and the intermediate medium” constitutes an intended use limitation that does not further limit the structure of the claimed invention. It has been held that “apparatus claims cover what a device is, not what a device does. Hewett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987); MPEP 2114/Il.)
To the extent that applicant submit otherwise, the examiner submits that it is known to use a power generation facility as a heat source in analogous applications (official notice).
Thus, it would have been obvious for one of ordinary skills in the art before the effective filing date to have provided the apparatus of Ruy with a power generation facility as a heat source.
One of ordinary skills would have recognized that doing so would have increased overall energy efficiency at least by capturing waste heat that would otherwise be lost; thereby, lowering greenhouse gas emissions.
Regarding claims 12-13, 15, 18-19, and 21-22:
If a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will perform the claimed process. Thus, the method of claims 12-13, 15, 18-19, and 21-22, as claimed, would necessarily result from the normal operation of the apparatus of claims 1-2, 4, 7-8, and 10-11. See MPEP 2112.02.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Mu (CN 217841760 U), Fu (US 20200263831 A1), Lee (WO 2019245097 A1), Dong (CN 109339884 A), and Hoskinson (US 4329842 A).
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LIONEL NOUKETCHA/Primary Examiner, Art Unit 3763 /FRANTZ F JULES/Supervisory Patent Examiner, Art Unit 3763