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 .
Election/Restrictions
Newly submitted claim 11-20 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claims 11-20 present distinct operating steps of the heat transfer system not examined during the initial examination and require new and distinct lines of search inquiry.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 11-20 withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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: “expansion device” in claims 1 and 11-13.
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.
For the record, “expansion device” has been interpreted according to the corresponding structure described at para. 0057 of the 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.
Further for the record:
the term “about” in the claims has been interpreted as +/- 1% by weight as defined at para. 0018 of the specification. Further, as discussed in the parent application (17/040,467), percentage values not preceded by “about,” are given their ordinary meaning (see for example Applicant’s response dated 23 October 2023).
The term “medium temperature” is interpreted according to the definition provided at para. 0053 of the specification as having an evaporator temperature in the range of -12○C and 0○C.
The term “low temperature” is interpreted according to the definition provided at para. 0053 of the specification as having a condenser temperature from about 35○C to about 45○C. (Note that the evaporator temperatures are listed in terms of being simply “preferably,” and thus do not further clearly define the metes and bounds of the 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 (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) 1-10 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Riva et al. (IS 20100025619 A1) in view of Yana Motta et al. (US 2016/0024361 A1).
As per claim 1, Riva et al. disclose a method of retrofitting a heat transfer system containing HFC-134a as the refrigerant comprising removing at least a portion of said HFC-134a from said system; introducing a refrigerant mixture into system into said system (para. 0123), but does not teach the particular mixture recited. Yana Motta et al. teaches the use of a refrigerant mixture comprising a refrigerant comprising difluoromethane (HFC-32), pentafluoroethane (HFC-125), 1,1,1,2-tetrafluoroethane (HFC-134a), and trans-1 ,3,3,3-tetrafluoropropene (HFO- 1234ze(E)) (Abstract, etc.), although do not teach the specific percentages recited (at least about 97.5 % by weight of the following four components, with each compound being present in the following relative percentages: (a) from 2% to about 7% by weight of difluoromethane (HFC-32); (b) from 2% to about 7 by weight of pentafluoroethane (HFC-125); (c) from about 35% to about 50% by weight of 1,1,1,2-tetrafluoroethane (HFC-134a); and (d) from about 50% to about 55% by weight of trans-1 ,3,3,3-tetrafluoropropene (HFO- 1234ze(E))).
First, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to utilize the mixture in Yana Motta et al. as the replacement mixture of Riva et al. for the purpose of taking advantage of global warming efficiencies provided thereby (paras. 0003-0010, etc.). Second, while Yana Motta et al. does not teach the particular percentages recited, it does teach utilizing the same mixture of compounds. Arriving at particular component percentages is considered a simple matter of result effective variables that could have been easily arrived at through routine experimentation and that would have been obvious to one of ordinary skill in the art at the effective filing date of the invention for the purposes of optimizing refrigerant performance and reducing global warming effects.
(Note for the record: In the response filed 23 October 2023 in the parent application, Applicant argued:
“However, to the extent that Yana Motta teaches a refrigerant blend having all four of the components required by the present claims, it teaches a maximum amount of HFC-134a of 35% by weight and a maximum amount of HFO-1234ze(E) of 50% by weight. Thus, the maximum amount of each of these components permitted by Yana Motta is below the minimum required by the present claims. Thus, one would have to proceed contrary to the teachings of Yana Motta to arrive at the invention as now claimed, and the undersigned respectfully submits that cited items of information actually support the patentability of the present claims and cannot be a proper basis for a finding of prima facie obviousness.”
However, in instant claim 1 the minimum value for HFC-134a is “about 35%,” and the minimum value for of HFO-1234ze(E) is “about 50%.” Based on Applicant’s own definition of “about” meaning +/- 1%, these values overlap the respective maximum values of Yana Motta et al., and thus do not teach away from the reference.)
Applicant has amended the claims to further recite that the heat transfer system comprises a condenser, evaporator, and expansion device and, without replacing at least one of these, introducing the new refrigerant mixture and operating the system. First, Riva et al. discloses the system comprising a condenser and evaporator (para. 0105, etc.). While Riva al. does not specifically teach an expansion device, such is taught by Yana-Motta et al. (para. 0033, etc.). It would have been obvious to one of ordinary skill in the art at the effective filing date of the application to similarly include an expansion device in the system of Riva et al. as a common component for expanding refrigerant in order to complete of the full refrigeration cycle. Further, Riva et al. teach the concept of retrofitting a system with a new refrigerant without changing the system (para. 0123) as already discussed. It is maintained that performing such retrofitting with the refrigerant composition is simply a particular application of this basic concept. While Applicant argues that since Riva et al. use a different refrigerant composition, it teaches away from doing the same with the claimed composition, such an argument is not persuasive. Clearly retrofitting without replacing parts is a generic and generally desirable process, and one which would have been obvious to try involving a finite number of alternatives (either 1. keep existing components, or 2. exchange one or more of the components), that would have further been obvious to try with any new refrigerant composition for the purpose reducing cost by not requiring installing new equipment.
As per claim 2, Riva et al. disclose the system being a mobile air conditioning system (para. 0081 re. refrigerated containers, etc.).
As per claim 3, Riva et al. do not teach wherein said system is a medium temperature refrigeration system. Yana Motta et al. teach the system being a medium temperature refrigeration system (para. 0019, etc.). In replacing the refrigerant with the mixture of Yana Motta et al. as discussed regarding claim 1, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to apply it to a medium temperature system since Yana Motta has established that such a mixture provides both refrigeration efficiency and global warming benefits in such systems.
As per claim 4, Riva et al. do not teach wherein said system is a low temperature refrigeration system. Yana Motta et al. teach the system being a low temperature refrigeration system (paras. 0003, 0005, 0010, 0015, 0018, 0021, 0030, 0033-0035, etc.). In replacing the refrigerant with the mixture of Yana Motta et al. as discussed regarding claim 1, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to apply it to a low temperature system since Yana Motta has established that such a mixture provides both refrigeration efficiency and global warming benefits in such systems.
As per claims 5-10, these claims recite further limitations on the percentages of the mixture components. Similarly as discussed regarding claim 1, while Yana Motta et al. do not teach the particular percentages recited, they do teach utilizing the same mixture of compounds. Arriving at particular component percentages is considered a simple matter result effective variables that could have been easily arrived at through routine experimentation and that would have been obvious to one of ordinary skill in the art at the effective filing date of the invention for the purposes of optimizing refrigerant performance and reducing global warming effects.
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.
Claims 1-10 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 17/040,467 in view of Riva et al. and Yana-Motta et al..
This is a provisional nonstatutory double patenting rejection.
Although the claims at issue are not identical, they are not patentably distinct from each other because lower bounds in instant claim 1 for each of the constituent components have been reduced as compared to the currently pending claim 1 of the copending application, thus constituting a simple broadening of the claim regarding this feature. While copending claim 1 does not recite the newly added features regarding a condenser, evaporator, and expansion device, and the introduction of refrigerant being done without changing at least one of these, such is generally taught by Riva et al. and Yana-Motta et al. as discussed above. Again, Riva et al. discloses the system comprising a condenser and evaporator (para. 0105, etc.). While Riva al. does not specifically teach an expansion device, such is taught by Yana-Motta et al. (para. 0033, etc.). It would have been obvious to one of ordinary skill in the art at the effective filing date of the application to similarly include an expansion device in the system of Riva et al. as a common component for expanding refrigerant in order to complete of the full refrigeration cycle. Further, Riva et al. teach the concept of retrofitting a system with a new refrigerant without changing the system (para. 0123) as already discussed. It is maintained that performing such retrofitting with the refrigerant composition is simply a particular application of this basic concept. While Applicant argues that since Riva et al. use a different refrigerant composition, it teaches away from doing the same with the claimed composition, such an argument is not persuasive. Clearly retrofitting without replacing parts is a generic and generally desirable process, and one which would have been obvious to try involving a finite number of alternatives (either 1. keep existing components, or 2. exchange one or more of the components), that would have further been obvious to try with any new refrigerant composition for the purpose reducing cost by not requiring installing new equipment.
Instant dependent claims 2-6 and 9-10 correspond to dependent claims 2-6 and 9-10 of the copending application, respectively. Instant dependent claims 7-8 recite broader ranges than those of currently pending claims 7-8 of the copending application, thus constituting a simple broadening of the claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 MARC E NORMAN whose telephone number is (571)272-4812. The examiner can normally be reached 8:00-4:30 M-F.
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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/MARC E NORMAN/Primary Examiner, Art Unit 3763
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