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:
switching device,
condensing unit.
The aforementioned limitation meets the three-prong test outlined herein since:
the term “device” is a generic placeholder, (B) the generic placeholder is modified by functional language (e.g. “switching”), and (C) the generic placeholder is not modified by sufficient structures, material or acts for performing the claimed function.
the term “unit” is a generic placeholder, (B) the generic placeholder is modified by functional language (e.g. “condensing”), and (C) the generic placeholder is not modified by sufficient structures, material or acts for performing the claimed function.
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.
A review of the specification shows that the following appear to be the corresponding structures for the aforementioned 112(f) limitation(s):
The disclosure defines switching device as a 16-way valve, see 500 in Figure 1. Therefore, the switching device will be construed as a 16-way valve, and/or equivalents thereof.
The disclosure defines condensing unit as condenser, see 443 in Figure 8. Therefore, the condensing unit will be construed as condenser, and/or 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.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are:
heat exchange device.
temperature adjustment target apparatus.
The aforementioned limitation does not meet the three-prong test outlined herein since:
the term “device” is a generic placeholder, (B) the generic placeholder is modified by functional language (e.g. “switching”), and (C) the generic placeholder is modified by sufficient structures, material or acts for performing the claimed function (i.e. that performs heat exchange between outside air and the heat medium and includes a first heat exchanger, a second heat exchanger, and a third heat exchanger).
the term “apparatus” is a generic placeholder, (B) the generic placeholder is not modified by functional language since temperature adjustment target is not pure functional language of the form “ apparatus for [performing X]”.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 4, the recitation of “the condensing unit and the supercooling unit are connected to the switching device through a third flow path and a fourth flow path, respectively” is unclear since a first and a second flow path were not defined in order to have a third flow path and a fourth flow path. To expedite prosecution, Examiner interprets the above to read as if Applicant is reciting “a third flow path and a fourth flow path” as names.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4 are rejected under 35 U.S.C. 102(a) (1) as being anticipated by ENOMOTO (JP2014020280A: Machine Translation is provided by Examiner).
Regarding claim 1, ENOMOTO teaches a thermal management circuit (10: see Figure 1) installed in an electrical apparatus, the thermal management circuit (10) comprising: an apparatus arrangement circuit (circuit of the battery 40) through which a heat medium that exchanges heat with a temperature adjustment target apparatus (40) is circulated (see Figure 1), the temperature adjustment target apparatus (40) being an apparatus that is a target of temperature adjustment ( see ¶ [0013] i.e. “If it is estimated or detected that the battery (40) Apparatus and method of manufacturing. is below a predetermined temperature, or if it is necessary to heat the battery (40)”); a refrigeration cycle (41) that is connected to a chiller (35) and a water-cooled capacitor (37); a heat exchange device (26, 27 and 39 or battery cooling heat exchanger of 41a) that performs heat exchange between outside air and the heat medium ( see ¶ [0046]); and
a switching device (21 and 22) that is able to switch a circulation route of the heat medium (see Figure 1 and ¶ [0013]), wherein: the heat exchange device (26, 27 and 39 or battery cooling heat exchanger of 41a) includes a first heat exchanger (27), a second heat exchanger (26), and a third heat exchanger (39) that are provided separately from each other (see Figure 1); and a connection state between each of the first heat exchanger (27), the second heat exchanger (26), and the third heat exchanger (39 or battery cooling heat exchanger of 41a) and each of the apparatus arrangement circuit (circuit of the battery 40) and the refrigeration cycle (41) is switched by the switching device (see Figures 10-13).
Regarding claim 2, ENOMOTO further teaches wherein: the third heat exchanger (39) is connected to the refrigeration cycle (41: see Figure 1); the water-cooled capacitor (37) includes a condensing unit that changes the heat medium from a vapor phase to a liquid phase; and in the third heat exchanger, the heat medium changed to the liquid phase in the condensing unit and the outside air exchange heat (see ¶ [0043], it’s implicit that condenser includes condensing unit that changes the heat medium from a vapor phase to a liquid phase).
Regarding claim 3, ENOMOTO further teaches wherein: the water-cooled capacitor (37) includes a condensing unit that changes the heat medium from a vapor phase to a liquid phase (see ¶ [0043], it’s implicit that condenser includes condensing unit that changes the heat medium from a vapor phase to a liquid phase), and a supercooling unit (39) that cools the heat medium changed to the liquid phase in the condensing unit (see ¶ [0045]); the condensing unit and the supercooling unit are connected to the switching device (21 and 22) through a first flow path and a second flow path, respectively; and each of the first flow path and the second flow path includes a first direction flow path through which the heat medium circulates toward the switching device, and a second direction flow path through which the heat medium circulates in a direction opposite to a direction in which the heat medium circulates in the first direction flow path (see Figure 1 where 39 and the condensing unit of 37 include are connected to the switching device (21 and 22) through a first flow path and a second flow path (19 and 20) wherein each of 19 and 20 includes a first direction flow path through which the heat medium circulates toward the switching device, and a second direction flow path through which the heat medium circulates in a direction opposite to a direction in which the heat medium circulates in the first direction flow path).
Regarding claim 4, ENOMOTO further teaches wherein: the water-cooled capacitor (37) includes a condensing unit that changes the heat medium from a vapor phase to a liquid phase (see ¶ [0043], it’s implicit that condenser includes condensing unit that changes the heat medium from a vapor phase to a liquid phase), and a supercooling unit (39) that cools the heat medium changed to the liquid phase in the condensing unit (see ¶ [0045]); the condensing unit and the supercooling unit are connected to the switching device through a third flow path and a fourth flow path, respectively (see Figure 1 where 39 and the condensing unit of 37 include are connected to the switching device (21 and 22) through a third flow path and a fourth flow path (19 and 20)); the third flow path (19) is constituted by a third direction flow path through which the heat medium circulates from the condensing unit (the condensing unit of 37 ) toward the switching device (21 and 22: see Figure 1); and the fourth flow path (20) is constituted by a fourth direction flow path through which the heat medium circulates from the switching device (21 and 22) toward the supercooling unit (39: see Figure 1).
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 (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over ENOMOTO (JP2014020280A: Machine Translation is provided by Examiner).
Regarding claim 5, ENOMOTO further teaches wherein the first heat exchanger (27) is disposed on an upstream side of the second heat exchanger (26) in a circulation direction of the outside air flowing into the heat exchange device (see ¶ [0034]).
ENOMOTO discloses the claimed invention except for the third heat exchanger is disposed on an upstream side of the second heat exchanger (26) in a circulation direction of the outside air flowing into the heat exchange device.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to rearrange the heat exchangers in order to position the third heat exchanger on an upstream side of the second heat exchanger in a circulation direction of the outside air flowing into the heat exchange device. The third heat exchanger performs the same function whether located upstream or downstream the second heat exchanger since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70 and since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art, In re Einstein, 8 USPQ 167.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KHALED AL SAMIRI whose telephone number is (571)272-8685. The examiner can normally be reached 10:30AM~3:30PM, M-F (E.S.T.).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jianying Atkisson can be reached at (571) 270-7740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KHALED AHMED ALI AL SAMIRI/ Examiner, Art Unit 3763 /JOEL M ATTEY/Primary Examiner, Art Unit 3763
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