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 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.
Claims 1-20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “the conduit remains above a connection point” but it is unclear is said recitation refers to the specific vertical positioning of the conduit relative to the connection point. Claim 1 is interpreted such that conduit remains positioned vertically above a connection point. Claims 2-20 are similarly rejected and interpreted if reciting any relative positioning of the conduit or other elements.
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.
Claim(s) 1-2, 6, 10-13, 15-16, 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Goel (US 20150330685).
Regarding claim 1,
Referring to Fig. 1A, Goel teaches a compensator 101 for an indoor unit 102 of a reversible heat pump 100, the compensator comprising: a conduit 124 of a predefined profile having a first end (e.g. at 122B), and a second end (e.g. at the top of conduit 124, not labeled); wherein the first end of the conduit is adapted to be fluidically coupled to a thermal expansion device 116A and a primary header of the indoor unit (e.g. the entrance of coils 118 during a cooling operation), such that the conduit remains above a connection point 122A between the conduit, the thermal expansion device, and the primary header (see par. 31).
Regarding claim 2,
Goel teaches wherein the conduit 124 is positioned outside the indoor unit.
Regarding claim 6,
Goes teaches wherein the first end of the conduit is connected to a predetermined connection point on a supply tube 114 that fluidically connects the thermal expansion device and the primary header, such that the conduit remains above the predetermined connection point (see par. 31).
Regarding claim 10,
Goel teaches wherein the predefined profile of the conduit is a vertical configuration.
Regarding claim 11,
Goes teaches wherein the indoor unit is a heat exchanger comprising indoor coils including a plurality of microchannel tubes (see par. 43), wherein the indoor unit is fluidically connected to an outdoor unit 104 comprising outdoor coils 112 that includes a plurality of round tube plate fin tubes (see pars. 69, 79).
Regarding claim 12,
A claim term is functional when it recites a feature "by what it does rather than by what it is".
While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board' s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971);In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
It appears that the language of claim 12 is a recitation of what the apparatus is configured to do and not what the apparatus is as there are no structural attributes of the interrelated components except for the requirement that the length and inner diameter of the conduit is capable of being selected on some basis. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, see MPEP 2114 [R-1]. Since the length and inner diameter of the conduit of Goel is capable of being selected on some basis, the device of Goel meets the claimed limitations of being configured to do so. There is no structural difference between the device of Goel and the device of Applicant's claim 12.
Regarding claim 13,
Goel teaches wherein the conduit is made of one or more of copper, ferrous metal, non-ferrous metal, non-metals, and alloys (see par. 31).
Regarding claims 15, 16, 20,
The subject matter of claims 15, 16, 20 are directed towards essentially the same subject matter as claims 1, 2, 10-11 and has been addressed in the rejection of claims 1, 2, 10-11.
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.
The factual inquiries 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.
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(s) 3-5, 7, 9, 14, 17, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goel.
Regarding claim 3,
Goel teaches wherein the conduit is positioned above the connection point (e.g. during a heating operation) but does not teach wherein the conduit is positioned below the primary header.
However, it is noted that it has been held that claims which read on the prior art except with regard to the position of a particular element were unpatentable because shifting the position of the particular element would not have modified the operation of the device as in this case (see MPEP 2144.04 VI C).
Regarding claim 4,
Claim 4 is rejected for the same reasons as claim 3.
Regarding claim 5,
Goel does not teach wherein the conduit is removably coupled to the indoor unit.
However, it has been held that when a claimed structure was fully met by the prior art except that in the prior art a cap was “press fitted” and therefore not manually removable, the court held that “if it were considered desirable for any reason to obtain access to the end of [the prior art' s] holder to which the cap is applied, it would be obvious to make the cap removable for that purpose. See MPEP 2144.04 V C. Similarly, here it would be desirable for the conduit to be removably coupled to the indoor unit (e.g. for repairs or replacement) and therefore it would obvious to make the conduit removable for said purpose.
Regarding claim 7,
Goel does not teach wherein the compensator comprises a three-port connector, wherein the first end of the conduit is connected to a first port of the connector, an outlet of the thermal expansion device is connected to a second port of the connector, and a third port of the connector is connected to an inlet of the primary header, but the examiner takes official notice that the use of, and advantages of, three-port connectors would be well known to one of ordinary skill in the art. Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify Goel with the motivation of controlling the flow of refrigerant to and from the compensator.
Regarding claim 9,
Goes does not teach wherein the predefined profile of the conduit is a serpentine configuration comprising a predefined number of turns.
It has been held that the configuration of a claimed element (i.e. the shape) was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed element was significant (see MPEP 2144.04 IV B).
Alternatively, It would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify Goel such that the conduit comprises a serpentine configuration with the motivation of, for example, increasing the volume of the conduit while minimizing the space taken by the conduit.
Regarding claim 14,
Goel does not teach wherein the conduit is made of a flexible material that is adapted to be adjusted to the predefined profile.
However, since it has been held that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination (see MPEP 2144.07), it would have been obvious to one of ordinary skill in the art before the filing date of the invention to modify Goel and arrive at the claimed invention in order to provide a material capable of being utilized in various configurations.
Regarding claims 17, 19,
The subject matter of claims 17, 19 are directed towards essentially the same subject matter as claims 7, 9 and has been addressed in the rejection of claims 7, 9.
Allowable Subject Matter
Claims 8, 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Goel does not teach that the conduit is wrapped around a housing of the indoor unit.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Rahhal, Bachellor, Giles, Jin, Kopko teach a charge compensator.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVE S TANENBAUM whose telephone number is (313)446-6522. The examiner can normally be reached M-F 11 AM - 7 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 at (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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/Steve S TANENBAUM/Examiner, Art Unit 3763
/FRANTZ F JULES/Supervisory Patent Examiner, Art Unit 3763