FINAL OFFICE 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 .
Response to Amendment
This Final Office Action is in response to Applicant’s Remarks/Amendments filed 10 June, 2026. The amendments have been entered.
Disposition of Claims
Claims 12-16 and 18-22 are pending.
Claims 1-11 and 17 are cancelled.
Drawings
The drawings are objected to because:
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:
“at least one sensor” described in claim 16
“a flap configured to change the opening cross section” described in claim 17
“a flap is configured to change an opening cross section of the at least one opening” described in claim 21
, must be shown 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.
Specification
The amendment filed 19 July, 2024, with regards the amendments to page 1 of the amended specification to incorporates Cross-Reference to Related Application section, is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
MPEP 608.01(p) – I(B) states,
“ As a safeguard against the omission of a portion of a prior application for which priority is claimed under 35 U.S.C. 119(a)-(d) or (f), or for which benefit is claimed under 35 U.S.C. 119(e) or 120, applicant may include a statement at the time of filing of the later application incorporating by reference the prior application. See MPEP § 201.06(c) and 211 et seq. where domestic benefit is claimed. See MPEP §§ 213 - 216 where foreign priority is claimed. See MPEP § 217 regarding 37 CFR 1.57(b). The inclusion of such an incorporation by reference statement in the later-filed application will permit applicant to include subject matter from the prior application into the later-filed application without the subject matter being considered as new matter. For the incorporation by reference to be effective as a proper safeguard, the incorporation by reference statement must be filed at the time of filing of the later-filed application. An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a) ). Although, as discussed above, an incorporation by reference statement can be used as a safeguard against an omission of a portion of a prior application for which priority is claimed under 35 U.S.C. 119(a)-(d) or (f), or for which benefit is claimed under 35 U.S.C. 119(e) or 120, it should be noted that an incorporation by reference statement will not satisfy the specific reference requirement of 35 U.S.C. 119(e) or 120 or 37 CFR 1.78. See Droplets, Inc. v. E*TRADE Bank, 887 F.3d 1309, 126 USPQ2d 317 (Fed. Cir. 2018).”
, and wherein MPEP 1893.03(b) states,
“An international application designating the U.S. has two stages (international and national) with the filing date being the same in both stages. Often the date of entry into the national stage is confused with the filing date. It should be borne in mind that the filing date of the international stage application is also the filing date for the national stage application. Specifically, 35 U.S.C. 363 provides that
An international application designating the United States shall have the effect, from its international filing date under Article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office.
Similarly, PCT Article 11(3) provides that
...an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.”
As such, the inclusion of the recitation,
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,is new matter, as the recitation to include the incorporation by reference of the applications was made after (i.e., 19 July, 2024) the effective filing date of the instant application (i.e., 4 January, 2023).
Applicant is required to cancel the new matter in the reply to this Office Action.
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:
“at least one spacing element” in claim 13.
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 § 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) 12-16 and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over BLASZCZYK (US 2002/0041823 A1 – published 11 April, 2002), in view of WOODS (US 4,823,829 – published 25 April, 1989).
As to claim 12, BLASZCZYK discloses a system comprising:
an arrangement having an inner wall (13) and an outer wall (14), wherein
the inner wall encloses a liquid gas (LM; par. 17) in a first chamber (interior to tank, 2; par. 17),
a second chamber (interior of tank, 1, as defined between the inner and outer wall) is formed between the inner wall and the outer wall (figure 1), and
the inner wall has at least one opening (8; par. 20-21) configured to expand the liquid gas into the second chamber (figure 2, as shown by the movement of the gaseous medium, GM; par. 20 and 26).
However, BLASZCZYK does not disclose including a flap configured to change the opening cross section.
WOODS, however, is within the field of endeavor provided a system (abstract) having an inner wall (14a/14b forming tank 14) with at least one opening (16; figure 3) which includes a flap (19 with stopper 26 at an end thereof; figure 3) configured to change the opening cross section (col. 3, lines 24-32). Particularly, WOODS provides the flap for controlling the distribution of fluid from the interior of the inner wall to an exterior thereof (col. 2, lines 21-28). Therefore, it would have been obvious to one having ordinary skill within the art, prior to the date the invention was effectively filed, to modify BLASZCZYK, in view of WOODS, to include flap changing the cross section of the opening for this reason.
As to claim 13, BLASZCZYK, as modified, discloses the inner wall is arranged with at least one spacing element (15) within the outer wall (see figures 1-2; par. 24).
As to claim 14, BLASZCZYK, as modified, discloses wherein the arrangement has at least one connection piece (4 and/or 5; par. 18).
As to claim 15, BLASZCZYK, as modified, discloses wherein the arrangement has more than two openings (figure 1-2; par. 20-21 and 26).
As to claim 16, BLASZCZYK, as modified, discloses wherein the system has at least one sensor (par. 25).
As to claim 18, BLASZCZYK, as modified, further teaches the produced system as set forth by claim 12 (see rejection of claim 12).
As such, providing the manner of which the system is produced (i.e., “produced generatively”) is merely a product-by-process claim limitation. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113 – I.
For this, the combination as set forth teaches the requirements of the product, and thereby, claim 18 is rendered obvious.
As to claim 19, BLASZCZYK, as modified, further teaches the produced system as set forth by claim 12 (see rejection of claim 12).
As such, providing the manner of which the system is produced (i.e., “produced in a conventional manner”) is merely a product-by-process claim limitation. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP § 2113 – I.
For this, the combination as set forth teaches the requirements of the product, and thereby, claim 19 is rendered obvious.
As to claim 20, BLASZCZYK, as modified, further discloses wherein the outer wall has a coating (par. 21).
Claim(s) 21-22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by LEACHMAN (US 2018/0106427 A1 – published 19 April, 2018), in view of COOPER (NPL: Chapter 10 – Stereolithography of Cooper, K. (2001). Rapid Prototyping Technology: Selection and Application (1st ed.). CRC Press. https://doi.org/10.1201/9780203910795) and WOODS (US 4,823,829 – published 25 April, 1989).
As to claim 21, LEACHMAN discloses a method of producing a system comprising:
producing an arrangement having an inner wall(interior wall forming storage compartment, 12) and an outer wall (14), wherein
the inner wall encloses a liquid gas(liquid hydrogen, LH₂; par. 36) in a first chamber (12),
a second chamber is formed between the inner wall and the outer wall (passages 18, 20),
the inner wall has at least one opening(11) configured to expand the liquid gas into the second chamber ( par. 41)
the producing comprising selectively exposing a build material to radiation (par. 30 – stereolithography, at least)
"To serve as an anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill." Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749-50 (Fed. Cir. 1991). See MPEP § 2131.01 – III. COPPER provides wherein stereolithography forming processes necessarily require a construction material of which the product being produced by stereolithography is formed on through application of light energy that is selectively radiated to produce the product. By LEACHMAN forming the arrangement for passive cooling of liquid gases by at least stereolithography, LEACHMAN necessarily requires this method of producing steps to form the arrangement. As such, the claimed invention of claim 21 is anticipated by the disclosure of LEACHMAN.
More so, LEACHMAN does not expressly disclose wherein a flap is configured to change an opening cross section of the at least one opening.
WOODS, however, is within the field of endeavor of a method producing(product shown in figure 3) a system (abstract) having an inner wall (14a/14b forming tank 14) with at least one opening (16; figure 3) which includes a flap (19 with stopper 26 at an end thereof; figure 3) configured to change the opening cross section (col. 3, lines 24-32). Particularly, WOODS provides the flap for controlling the distribution of fluid from the interior of the inner wall to an exterior thereof (col. 2, lines 21-28). Therefore, it would have been obvious to one having ordinary skill within the art, prior to the date the invention was effectively filed, to modify LEACHMAN, in view of WOODS, to include flap changing the cross section of the opening for this reason.
As to claim 22, LEACHMAN, as modified, discloses further comprising using the system to flow therethrough liquid gases, in order to provide the gases in gaseous form (par. 41).
Response to Arguments
Drawings
Applicant's arguments filed 10 June, 2026, with regards to the drawings, have been fully considered but they are not persuasive. Applicant alleges, see page 4 of Applicant’s Remarks/Amendments filed 10 June, 2026, “Thus, § 1.83(a) does not independently require illustration of every claimed feature absent a determination under § 1.81(a0 that such drawings are necessary for understanding the invention”. This is not persuasive. 37 CFR § 1.83(a) makes clear “The drawing in a nonprovisional application must show every feature of the invention specified in the claims”. The drawings remain objected for not showing the features recited in the claims, as indicated above.
Specification
Applicant's arguments filed 10 June, 2026, with regards to the specification, have been fully considered but they are not persuasive. Applicant alleges, see pages 5-8 of Applicant’s Remarks/Amendments filed 10 June, 2026, “In particular, MPEP § 213 expressly states: “For applications filed on or after September 21, 2004, a claim under 37 CFR 1.55 for priority of a prior-filed foreign application that was present on the filing date of the application is considered an incorporation by reference of the prior-filed foreign priority application as to inadvertently omitted material, subject to the conditions and requirements of 37 CR 1.57(b)” (emphasis added). MPEP § 213 further states: “The purpose of 37 CFR 1.57(b) is to provide a safeguard for applications when all or a portion of the specification and/or drawing(s) is (are) inadvertently omitted from an application,” MPEP § 213 further provides: “However, applicants are encouraged to provide an explicit incorporation by reference statement to the prior-filed foreign priority application(s) for which priority is claimed under 37 CFR 1.55 if applicants do not wish the incorporation by reference to be limited to inadvertently omitted material pursuant to 37 1.57(b)” (emphasis added).” However, the instant application is an application entered as a national stage application under 35 U.S.C. § 371 from an international application, which must comply with the PCT Articles and Regulations. See MPEP § 213. For applications entering the national stage under 35 U.S.C. § 371 from an international application, the claim for priority must be made and a certified copy of the foreign application must be filed within the time limit set forth in the PCT Articles and Regulations. See 37 CFR § 1.55(d)(2). Again, MPEP 608.01(p) – I(B) states,
“ As a safeguard against the omission of a portion of a prior application for which priority is claimed under 35 U.S.C. 119(a)-(d) or (f), or for which benefit is claimed under 35 U.S.C. 119(e) or 120, applicant may include a statement at the time of filing of the later application incorporating by reference the prior application. See MPEP § 201.06(c) and 211 et seq. where domestic benefit is claimed. See MPEP §§ 213 - 216 where foreign priority is claimed. See MPEP § 217 regarding 37 CFR 1.57(b). The inclusion of such an incorporation by reference statement in the later-filed application will permit applicant to include subject matter from the prior application into the later-filed application without the subject matter being considered as new matter. For the incorporation by reference to be effective as a proper safeguard, the incorporation by reference statement must be filed at the time of filing of the later-filed application. An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a) ). Although, as discussed above, an incorporation by reference statement can be used as a safeguard against an omission of a portion of a prior application for which priority is claimed under 35 U.S.C. 119(a)-(d) or (f), or for which benefit is claimed under 35 U.S.C. 119(e) or 120, it should be noted that an incorporation by reference statement will not satisfy the specific reference requirement of 35 U.S.C. 119(e) or 120 or 37 CFR 1.78. See Droplets, Inc. v. E*TRADE Bank, 887 F.3d 1309, 126 USPQ2d 317 (Fed. Cir. 2018).”
, and wherein MPEP 1893.03(b) states,
“An international application designating the U.S. has two stages (international and national) with the filing date being the same in both stages. Often the date of entry into the national stage is confused with the filing date. It should be borne in mind that the filing date of the international stage application is also the filing date for the national stage application. Specifically, 35 U.S.C. 363 provides that
An international application designating the United States shall have the effect, from its international filing date under Article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office.
Similarly, PCT Article 11(3) provides that
...an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.”
As such, the inclusion of the recitation,
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,is new matter, as the recitation to include the incorporation by reference of the applications was made after (i.e., 19 July, 2024) the effective filing date of the instant application (i.e., 4 January, 2023).
Applicant, further, argues “The mere addition of new words does NOT constitute new matter. Rather, the inquiry is whether the added language introduces new substantive matter into the disclosure of the invention”, in addition to arguing the Applicant would not amend the claims to include any language presented from the incorporation by reference statement at issue. These arguments are not persuasive. Incorporation by reference inherently includes the entirety of the disclosure from the cited priority documents, such that ANY information provided within these documents not submitted on the date of the filing date of the instant application, or otherwise provided at the time of the instant application being effectively filed, would be included within the presented disclosure of the instant application. See 37 CFR § 1.57. See MPEP § 2163.07(b). This would constitute substantive subject matter being included within the instant national stage application. Lastly, Applicant alleges, “the date when the objected language is added to an application is also completely irrelevant to the “new matter” inquiry, simply because the objected to language is non substantive and is routine added to applications at all stages during prosecution”. This is not persuasive, in view of the MPEP sections cited above. For these reasons, the specification remains objected to.
Claim Rejections - 35 USC § 102/ § 103
Applicant’s arguments with respect to claim(s) 12-16 and 18-22 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
It will be noted at page 11-13, Applicant appears to allege modifications to BLASZCZYK to include a valve, flap, or the like, to open and close the openings of BLASZCZYK would change the principle of operation of BLASZCZYK. However, this is not correct, while the addition of a metering structure, e.g., a valve, flap, or the like, would not prevent BLASZCZYK from allowing gas expansion through the openings upon opening thereof. In fact, BLASZCZYK encourages the regulation of the flow through the openings for the purpose of slowing down the process of liquid hydrogen evaporation. See paragraph 21 of BLASZCZYK. As such, one having ordinary skill within the art would, in view of teachings of incorporating a metering structure, e.g., a valve, flap, or the like, understand such incorporation of these features would enable BLASZCZYK to accomplish this goal and protect the first vessel wall from being exposed to extreme temperature differences between the inner and outer vessel surfaces. See paragraph 21 of BLASZCZYK. For this, the addition of such metering features, i.e., a flap as taught by WOODS (US 4,823,829 – published 25 April, 1989), would not change the principle of operation of BLASZCZYK, as alleged by the Applicant.
It will be, further, noted at page 12, Applicant alleges improper hindsight reasoning to rely upon a teaching of a metering structure, e.g., a valve, flap, or the like, within the prior art teachings of BLASZCZYK, as BLASZCZYK does not identify any need to vary the opening cross section. However, it is not a requirement, when establishing prima facie obviousness, that the primary prior art reference recognize a need to be addressed by secondary prior art references. See MPEP §2141. In addition, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). See MPEP § 2145 – X(A). For this, the addition of such metering features, i.e., a flap as taught by WOODS (US 4,823,829 – published 25 April, 1989), is not based on hindsight reasoning.
It will be noted, Applicant discusses LEACHMAN and COOPER at page 13, but does not present any argument particularly traversing the teachings thereof.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNA M MARONEY whose telephone number is (571)272-8588. The examiner can normally be reached Monday - Friday 7AM to 4PM, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Len Tran can be reached at (571) 272-1184. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNA M MARONEY/Primary Examiner, Art Unit 3763 8/25/2026
JENNA M. MARONEY
Primary Examiner
Art Unit 3763
Prosecution Insights