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 Objections
Claim 14 is objected to because of the following informalities: The amendment filed on 10/06/2025 is objected to under 37 CFR 1.121(c) because the status of claim 14 is not properly indicated. The amendment lists claims 14–21 as “withdrawn”; however, claim 14 was not previously withdrawn from consideration by a restriction requirement, but was rejected in the prior Office Action. Applicant cannot designate claim 14 as “withdrawn.”
Accordingly, the claim listing fails to properly identify the status of all claims. Applicant is required to submit a corrected claim listing that clearly indicates the status of claim 14 (e.g., canceled, amended, or currently pending). For examination purpose, examiner read the claim as canceled.
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.
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: “a variable volume device” in claim 1 is understood to be a bladder (see ¶ 0037 of the publication).
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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recite “without any liquid phase substance.” The specification does not reasonably convey to one of ordinary skill in the art that the inventor had possession of a system or method that operates entirely in the absence of any liquid phase substance. The specification fails to describe embodiments or operating conditions that exclude liquid phases across the full scope of the claims. Accordingly, the claims lack adequate written description support.
Claims 2-13 are also rejected under 35 U.S.C. 112(a) for being dependent upon a rejected claim.
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 1-13 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 pressure” in line 4 lacks proper antecedent basis.
Claim 1 recites “the pressures” in line 7-8 lacks proper antecedent basis.
Claim 1 recites “the interior of the second enclosure” lacks proper antecedent basis. Examiner read the limitation as –the interior second volume of the second enclosure--.
Claim 1 recite “a substantially fixed collective volume,” line 11 renders the claim indefinite because the entire phrase is a term of degree without providing an objective standard for determining the scope of the limitation. See MPEP § 2173.05(b).
Claim 1 recites “the combination” in line 11 lacks proper antecedent basis.
Claim 1 recites “the stability” in line 13 lacks proper antecedent basis.
Claim 1 recites “the gas pressure” in line 14 lacks proper antecedent basis.
Claim 1 recite “whereby the stability of the gas pressure minimizes movement of gases,” in line 13-14 renders the claim indefinite because the entire phrase is a functional and result-oriented language without reciting the structure or steps required to achieve the result.
Claim 1 recite the limitation “capable of maintaining a fixed collective volume” in line 17-18 renders the claim indefinite because the limitation constitutes intended use or capability rather than a positively recited method limitation. For examination purposes, as long as the enclosure is capable of keeping or upholding a certain volume, then it meets the claimed language. Further, the relationship between the “collective volume,” the “first enclosure,” and the “second enclosure” is unclear because it is unclear where the volume suppose to be maintained.
Claim 1 recite the limitation “a fixed collective volume” in line 17-18 renders the claim indefinite because it is unclear how it relates with the previously cited limitation “a fixed collective volume” in line 11 of the claim.
Claim 1 recites the limitation “said method being capable of maintaining a fixed collective volume without any liquid phase substance” renders the claim indefinite because the limitation is a negative limitation that renders the claim indefinite since the limitation tends to define the invention by excluding elements that the invention does not have; rather than pointing out the invention. Thus, the limitation appears to be an attempt to claim the invention by excluding what the inventors did not invent rather than distinctly and particularly pointing out what they did invent. See MPEP 2173.05(i).
Claim 2 recite the limitation “a second enclosure” in line 2 renders the claim indefinite because it is unclear how it relates with the previously cited limitation “a second enclosure” in line 6 of claim 1.
Claim 2 recite the limitation “the pressure inside and outside the second enclosure” in line 3 lacks proper antecedent basis. For examination purpose, examiner read the limitation as -- the pressure inside the second enclosure--.
Claim 7 recite the limitation “including providing a cooperating evaporator and condenser which are part of apparatus selected from group consisting of heat pipes and thermoelectric coolers to remove heat from the first enclosure, said evaporator being disposed proximate said desiccant” renders the claim indefinite because it is unclear what part of the structure includes evaporator and condenser. Further, it is unclear if these structure part of heat pipes and thermoelectric cooler and are positioned inside the first enclosure or simply positioned nearby. For examination purpose, as long as the first enclosure comprises a device selected from heat pipes and thermoelectric cooler, then it meets the claimed language.
claim 7 recites “proximate,” renders the claim indefinite because the term “proximate” is a relative term without a defined boundary.
and claim 8 recites “the temperature” lacks proper antecedent basis.
Claims 3-6 and 9-13 are also rejected under 35 U.S.C. 112(b) for being dependent upon a rejected claim.
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) 1-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Paoluccio et al. (US 2018/0257014 A1).
In regard to claim 1, Paoluccio teaches a method for preventing gas flow into and out of a first enclosure (30) having an interior and an exterior and a first internal volume (the enclosure has interior, exterior and internal volume) and a first internal pressure by limiting changes of the pressure within the interior of the first enclosure which comprises: providing a second enclosure (30a) including a variable volume device having an interior second volume that varies responsive to the pressures inside the second enclosure (¶ 0088-0089; see fig. 2); providing fluid communication between the interior of the first enclosure (30) and the interior of the second enclosure (30b) (see gas communication via tubing 32a) to maintain a substantially fixed collective volume of the combination the first enclosure (30) and the second enclosure (30b) despite ambient temperature and/or pressure changes whereby the stability of the gas pressure minimizes movement of gases into or out of the collective volume of the fluid communication, the first enclosure and the second enclosure (¶ 0088-0091; see fig. 2; see also the 112 rejections above), said method being capable of maintaining a fixed collective volume without any liquid phase substance (Paoluccio maintaining a fixed volume without any liquid phase substance in enclosure 30; see also the examiner 112 rejection).
Although a reasonable effort has been made to construe the claims, the claim is rejected under 35 U.S.C. § 112(a) and (b) for containing multiple deficiencies. The applicant is advised to address all identified 112 issues in the next response.
In regard to claim 2, Paoluccio teaches the method as described in claim 1 wherein the step of providing a second enclosure (30b) having a second volume that varies responsive to the pressures inside and outside the second enclosure includes providing a bladder (40) (see fig. 2; ¶ 0088-0089).
In regard to claims 3 and 9, Paoluccio teaches the method as described in claim 1 further includes providing a desiccant (51) in fluid communication with the first enclosure (30) (see fig. 1, 2; ¶ 0054, 0058, 0063, 0064).
In regard to claims 4 and 10, Paoluccio teaches the method as described in claim 1 further including providing a pressure relief valve (42) in fluid communication with the first enclosure (30) (see fig. 2; ¶ 0064).
In regard to claims 5 and 11, Paoluccio teaches the method as described in claim 1 further including providing a vacuum relief valve (41) in fluid communication with the first enclosure (30) (see fig. 2; ¶ 0064).
In regard to claims 6 and 12, Paoluccio teaches the method as described in claim 1 further including providing an air conditioning system (a conduction rod 55 and 56 and or heat pipe 58) for removal of heat from the first enclosure (see fig. 1, 2; ¶ 0054, 0056, 0065, 0091, 0126).
In regard to claims 8, Paoluccio teaches the method as described in claim 1 further including providing a thermostat (on and off) to control the temperature within said the first enclosure (¶ 0106).
In regard to claims 7 and 13, Paoluccio teaches the method as described in claim 1 further including providing a cooperating evaporator and condenser which are part of apparatus selected from group consisting of heat pipes and thermoelectric coolers (a conduction rod 55 and 56 and or heat pipe 58) to remove heat from the first enclosure, said evaporator being disposed proximate said desiccant (see ¶ 0035, 0054, 0056, 0065, 0091, 0126, 0145-0147).
Response to Arguments
Applicant’s arguments with respect to the amended claims have been considered but are moot in view of the new ground(s) of rejection.
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 WEBESHET MENGESHA whose telephone number is (571)270-1793. The examiner can normally be reached Mon-Thurs 7-4, alternate Fridays, EST. 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/W.M/Examiner, Art Unit 3763
/FRANTZ F JULES/Supervisory Patent Examiner, Art Unit 3763