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 .
Election/Restrictions
Claims 1 and 12-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/6/26. Examiner notes applicants amendment to change claims 2-5 to depend from the elected invention.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/26/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 3-4 and 8-9 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 3 recites the limitation "the cross-section”" and there is insufficient antecedent basis for this limitation in the claim. This claim has been amended from claim 6 which does not claim “a cross-section”. This appears to be error in changing the claim to depend from claim 6 directly instead of from claim 2. The claim will be examined as depending form claim 2, in which case the term is properly written.
The term “substantially” in claims 4 and 8-9 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. One skilled in the art would not know how close or what variance would read on the claim limitation as neither the claim or the specification provide a clear range/variation for the term.
Regarding claim 5, the phrase " optionally " renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by " optionally "), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d). This terminology makes it unclear if the “optionally” elements are required. The claim will be examined as everything covered by “optionally” being unrequired.
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.
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.
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.
Claims 6-8, 10-11, and 2-5 are rejected under 35 U.S.C. 103 as being unpatentable over Wright et al. in view of Rew et al. (U.S. Patent 5,628,362).
Regarding claim 6, Wright teaches a layer (element 100) for a heat exchanger (element 1), the layer comprising: an inlet (element 101); an outlet (element 102);an upper sheet (at element 104); a lower sheet (at element 103); a fluid flowpath defined between the upper sheet and lower sheet and from the inlet to the outlet (”cold channel”); and
at least one pin (stacked elements 120) disposed in the flowpath and connecting the upper sheet to the lower sheet (per fig. 11 and 12), wherein the pin comprises: a first end (edge facing flow direction); a second end (end facing away from flow); and an outer surface between the first and second ends (shown in fig. 10-12).
Wright does not teach a plurality of indentations are provided in the outer surface and a plurality of protrusions are formed to protrude from the outer surface. Rew taches a heat exchange surface having a plurality of indentations are provided in the outer surface and a plurality of protrusions are formed to protrude from the outer surface (per fig. 9 the dimples are both protruding and indenting). It would have been obvious to one skilled in the art at the time of filing to modify Wright pins to include the protrusions and indentations of Rew, the motivation would be to improve the thermal transfer (Col. 4 ln 29-54).
Regarding claim 7, Wright teaches a plurality of said at least one pin (per fig. 10-12).
Regarding claim 8, Wright teaches the layer defining an inflow path from the inlet (per fig. 10), and an outflow path to the outlet (per fig. 10), the inflow path and the outflow path being separated in the layer by a separation bar (divider shown in fig. 10), the inflow path and the outflow path each having a plurality of said pins (per fig. 10), the layer further comprising a plurality of turning vanes to turn the direction of flow from the inflow path by substantially 180 degrees to the outflow path (elements 130).
Regarding claim 10, Wright teaches a heat exchanger (element 1) comprising:
a first layer and a second layer (per fig. 1, made of stacks of elements 101/102); wherein one or both of the first and second layers is a layer according to claim 6 (per rejection above); and wherein the upper sheet of the second layer is also the lower sheet of the first layer (per fig. 1).
11. (Original) The heat exchanger according to claim 10, wherein the number of pins disposed in the flowpath of the first layer (cold layer 100) is different from the number of pins (elements 220) disposed in the flowpath of the second layer (hot layer 200).
Regarding claim 2, Wright teaches the pin has a cross-section that tapers from an inlet side of the pin to an outlet side of the pin (per fig. 10).
Regarding claim 3, Wright teaches the cross- section is a rounded triangular shape (per fig. 10).
Regarding claim 4, Rew teaches the indentations have a substantially circular concave shape or the protrusions have a substantially circular convex shape (per fig. 9). It would have been obvious to one skilled in the art at the time of filing to modify Wright pins to include the protrusions and indentations of Rew, the motivation would be to improve the thermal transfer (Col. 4 ln 29-54).
Regarding claim 5, Rew further teaches the indentations are arranged in one or more rows and the protrusions are arranged in one or more rows (per fig. 9). It would have been obvious to one skilled in the art at the time of filing to modify Wright pins to include the protrusions and indentations of Rew, the motivation would be to improve the thermal transfer (Col. 4 ln 29-54).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Wright et al. in view of Rew et al. (U.S. Patent 5,628,362), and further view of .
Regarding claim 9, Wright teaches a second plurality of turning vanes to turn the direction of flow by a further 90 degrees to the outflow path (elements 130, fig. 10). Wright does not teach the plurality of turning vanes includes a first plurality of vanes to turn the direction of flow from the inflow path by substantially 90 degrees.
Wei teaches the plurality of turning vanes includes a first plurality of vanes to turn the direction of flow from the inflow path by substantially 90 degrees (elements 40 in first part of communication section). It would have been obvious to one skilled in the art at the time of filing to modify Wright to include the turning vanes in the inflow path as claimed, the motivation would be to control pressure (para. 0044).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 2-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-7 of patent 12,504,239. Although the claims at issue are not identical, they are not patentably distinct from each.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Fisk (U.S. Patent 4,300,481) and Usui (JP2004-317060) both teach heat exchanger tube inserts for the outlet side of the pipes.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joel Attey whose telephone number is (571) 272-7936. The examiner can normally be reached 8:00-5:00 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, 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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/JOEL M ATTEY/Primary Examiner, Art Unit 3763
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