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 08/02/2024 and 06/07/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered.
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. actuating unit in at least claim 1.
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.
Actuating unit is interpreted to cover a cam disk as per para [0049] of applicant specification; 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) 1-18 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 1 calls for the limitation “wherein each elastocaloric element is in fluidic contact with a chamber” in lines 4-5. It is unclear as to how “a chamber” herein relates to the previously recited “one or more chambers” of line 3 of claim 1.
For examination purpose, the limitation above will be interpreted as “wherein each elastocaloric element is in fluidic contact with a respective chamber of the one or more chambers”.
Claim 5 calls for the limitation “wherein one, some or all the elastocaloric elements at least one of surrounds and/or forms a respective chamber”; which limitation is indefinite for not being understood. It is unclear what the applicant is referring to in the limitation above.
Claim 11 calls for the limitation “during or immediately after the relaxation of an elastocaloric element, the valve unit connects a chamber that is in fluidic contact with the elastocaloric element to the cooling inlet and the cooling outlet”; which limitation recites both an apparatus and the method steps of using the apparatus. It is unclear whether infringement occurs when one creates the apparatus or when one actually uses the apparatus (see MPEP 2173.05(p), In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011).
A similar issue is found in claims 12-14, with the recitation “during or immediately after the …”
Claim 16 calls for the limitation “wherein the valve unit has multiple fluid channels subjected to slot control that are formed in a shaft”; which limitation is indefinite as it is unclear what the term “that are formed in a shaft” is referring to.
For examination purpose, the limitation above will be interpreted as “wherein the valve unit has multiple fluid channels subjected to slot control; wherein the multiple fluid channels are formed in a shaft”.
Claim(s) 2-18 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, 6-15, and 17-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fitger (US 20230137699 A1).
Regarding claim 1:
Fitger discloses a device for at least one of heating or cooling fluid (Fig. 1 & 5), wherein the device comprises:
one or more chambers #4 & #5,
one or more elastocaloric elements #11 & #12 ([0082-0083]), wherein each elastocaloric element is in fluidic contact with a respective chamber of the one or more chambers (see Fig. 1),
an actuating unit #30 which is configured to elongate and to relax the elastocaloric elements in an alternating manner ([0042] & [0102]), and
a valve unit (made by #7, #9, & #10) which is configured to conduct fluid selectively through the one or more chambers ([0080-0082]).
Regarding claim 2:
Fitger further discloses wherein the one or more chambers comprises multiple chambers that are arranged along a circle (see Fig. 5).
Regarding claim 4:
Fitger further discloses wherein one, some or all the elastocaloric elements are arranged in a respective chamber (see Fig. 5).
Regarding claim 6:
Fitger further discloses wherein one, some or all the elastocaloric elements are in the form of a wire or in the form of a wire bundle ([0082]).
Regarding claim 7:
Fitger further discloses wherein one, some or all the elastocaloric elements are of elongate and/or rod-shaped form and are subjected to tensile elongation ([0082-0083]).
Regarding claim 8:
Fitger further discloses wherein one, some or all the elastocaloric elements are at least one of a spiral-shaped form or in the form of a helical spring and are subjected to torsional elongation ([0082-0083]).
Regarding claim 9:
Fitger further discloses wherein one, some or all the elastocaloric elements are formed from a shape-memory material ([0082-0083]: Nickel-titanium alloy Ni55.8Ti44.2 is a shape memory alloys (SMAs)).
Regarding claim 10:
Fitger further discloses wherein the actuating unit #30 is in the form of a cam disk (Fig. 5, [0102]).
Regarding claim 11:
Fitger further discloses wherein the valve unit has a cooling inlet and a cooling outlet (Fig. 5; [0080-0082]), and the valve unit is configured such that, during or immediately after the relaxation of an elastocaloric element, the valve unit connects a chamber that is in fluidic contact with the elastocaloric element to the cooling inlet and the cooling outlet (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.)
Regarding claim 12:
Fitger further discloses wherein the valve unit has a heating inlet and a heating outlet (Fig. 5; [0080-0082]), and the valve unit is configured such that, during or immediately after the elongation of an elastocaloric element, the valve unit connects a chamber that is in fluidic contact with the elastocaloric element to the heating inlet and the heating outlet (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.)
Regarding claim 13:
Fitger further discloses wherein the valve unit has a heating inlet and a heating outlet (Fig. 5; [0080-0082]), and the valve unit is configured such that, during or immediately after the elongation of a first elastocaloric element and a second elastocaloric element, the valve unit connects a first chamber that is in fluidic contact with the first elastocaloric element to the heating inlet, connects the first chamber at least partially to a second chamber that is in fluidic contact with the second elastocaloric element, and connects the second chamber to the heating outlet (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.)
Regarding claim 14:
Fitger further discloses wherein the valve unit has a cooling inlet and a cooling outlet (Fig. 5; [0080-0082]), and the valve unit is configured such that, during or immediately after the relaxation of a first elastocaloric element and a second elastocaloric element, the valve unit connects a first chamber that is in fluidic contact with the first elastocaloric element to the cooling inlet, connects the first chamber at least partially to a second chamber that is in fluidic contact with the second elastocaloric element, and connects the second chamber to the cooling outlet (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.)
Regarding claim 15:
Fitger further discloses wherein the valve unit is coupled rotationally to the actuating unit (see Fig. 5: #7, #9, #10 are mechanically coupled to #30 via #4, #5, and the corresponding conduits; while #30 rotates with respect to #7, #9, #10).
Regarding claim 17:
Fitger further discloses wherein multiple elastocaloric elements are arranged in one, some or all the chambers (see Fig. 1 & 5).
Regarding claim 18:
Fitger further discloses an air-conditioning system for a motor vehicle, having a device as claimed in claim 1.
Note: The device being specifically provided for an air-conditioning system for a motor vehicle is considered an intended use limitation. See Corning Glass Works, 868 F.2d at 1257, 9 USPQ2d at 1966. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQe2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation").
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) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fitger (US 20230137699 A1).
Regarding claim 3:
Fitger further discloses wherein each of the one or more chambers is transverse to the throughflow direction of the fluid (see Fig. 1 & 5).
Fitger does not specifically disclose wherein each of the one or more chambers has a circular cross section.
However, it has held that the particular shape of a structure is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular shape of the claimed invention was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
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 Fitger with each of the one or more chambers having a circular cross section.
One of ordinary skills would have recognized that doing so would have provided lower fluid resistance around the chambers; thereby, providing a more efficient and less wasteful heat transfer.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fitger (US 20230137699 A1) in view of Lee (US 20030084940 A1).
Regarding claim 16:
Fitger discloses all the limitations, except for wherein the valve unit has multiple fluid channels subjected to slot control, wherein the multiple channels are formed in a shaft.
Nonetheless, Lee teaches a valve unit (Fig. 2) having multiple fluid channels #11a and #11b subjected to slot control (via #27), wherein the multiple channels are formed in a shaft #10.
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 Fitger with the valve unit having the claimed configuration above; in a similar manner as taught by Lee.
One of ordinary skills would have recognized that doing so would have provided a more precise control of the quantity of fluid as suggested by Lee ([0011]); thereby optimizing the performance of the system.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Radermacher (US 20180283742 A1), Cui (US 20120273158 A1), and Schroeder (US 20200217566 A1).
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.
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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.
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/LIONEL NOUKETCHA/Primary Examiner, Art Unit 3763