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
Applicant’s election without traverse of Group I in the reply filed on 2/4/2026 is acknowledged.
Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 2/4/2026.
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.
The following limitation(s) is/are 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 means or a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the means or generic placeholder is not preceded by a structural modifier.
“energy storage device” includes the generic/nonce term “device” coupled with the function of “energy storage”. A return to the specification provides “internal battery modules connected in series” [0116]. Therefor the limitation is interpreted as the same or equivalents thereof.
Although the phrase “expansion device” combines the nonce term “device” with the function of “expansion” the phrase is not interpreted under 35 USC §112(f) as it is considered to have sufficiently definite meaning in the art corresponding to a structure. MPEP 2181
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 7 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.
Claim 7 recites “a coolant expansion device” however the fluid of the vapor compression refrigeration cycle is referred to as “a heat transfer fluid” at claim 1. The use of the term “coolant” at claim 7 is inconsistent with the disclosure and causes confusion with the “coolant loop” of claim 5, which is not expanded. Because the scope of the phrase is unclear in light of the specification the claim is indefinite.
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, 2, and 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, and 5 of copending Application No. 18762830(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the cited application includes at claim 1 a “flow of air” which is operable to cool the energy storage device. Claims 4 and 5 describe the energy storage device is in direct contact with the at least one heat exchanger (the at least one heat exchanger being of the vapor compression cycle as recited in claim 1). The instant application claims that the “energy storage device is thermally coupled to the vapor compression cycle”. Thus because the cited application couples the vapor compression cycle to the energy storage device via an airflow and heat exchanger they are “thermally coupled”. Regarding instant claim 2, the cited application recites that the energy storage device and heat exchanger are in “direct contact” (claim 5) and thus are arranged “directly”. Regarding instant claim 4, the cited application recites that the energy storage device is downstream from the at least one heat exchanger relative to the flow of air (claim 4) and thus they are coupled “indirectly”.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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, 4-5, and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Day et al (US 2022/0325930).
Regarding claim 1, Day discloses an air conditioning system comprising:
a vapor compression cycle having a plurality of components including a compressor (102), an expansion device (110), and at least one heat exchanger (108, 114, and 322), and a heat transfer fluid is configured to circulate within the vapor compression cycle; and
an energy storage device (328) selectively operable to supply power to one of the plurality of components ([0002] and [0047]), wherein the energy storage device is thermally coupled to the vapor compression cycle (by fluid loop 326).
Regarding claim 4, Day discloses the energy storage device is indirectly thermally coupled to the vapor compression cycle (the vapor compression cycle and energy storage device are indirectly thermally coupled by way of intervening loop 326).
Regarding claim 5, Day discloses the at least one heat exchanger of the vapor compression cycle includes a first heat exchanger (108), a second heat exchanger (114), and an energy storage heat exchanger (322), and the energy storage device is thermally coupled to the energy storage heat exchanger via a coolant loop (326).
Regarding claim 11, Day discloses a sensor for monitoring a temperature of the energy storage device; a pump arranged within the coolant loop; and a controller operably coupled to the sensor and to the pump, wherein the controller is operable to initiate the pump in response to the temperature of the energy storage device ([0008]).
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.
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Day et al (US 2022/0325930) in view of Sakakibara (US 8,405,354).
Regarding claim 2, Day discloses the air conditioning system of claim 1, but lacks that the energy storage device is directly within the fluid flow path. Sakakibara discloses a similar arrangement for thermal treatment of an energy storage device (3) which may be either indirect (like is shown in figure 8) or direct (like is shown in figure 9), where the energy storage device is arranged directly within a flow path of the heat transfer fluid. It would have been obvious to one of ordinary skill in the art to have provided Day with direct heat exchange between the heat transfer fluid and energy storage device in order to reduce the number of system parts, i.e. the intervening heat transfer arrangement.
Regarding claim 3, Day and Sakakibara further disclose the energy storage device includes a housing having at least one flow channel formed therein for receiving the heat transfer fluid (figure 9 of Sakakibara provides a housing 32 with the heater transfer fluid passing therethrough).
Claim(s) 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Day et al (US 2022/0325930) in view of Kolda et al (US 10,596,880)
Regarding claim 6, Day discloses the air conditioning system of claim 5, wherein the coolant loop (326) includes a thermal storage device (432) including a phase change material. Day lacks that the energy storage heat exchanger itself includes a phase change material. Kolda discloses a similar arrangement where two fluid loops are joined together by an energy storage heat exchanger (130) which includes a phase change material (4:21-54). It would have been obvious to one of ordinary skill in the art to have provided Day with the energy storage heat exchanger itself to include the phase change material (rather than as a separate component) in order to reduce the number of system components thereby simplifying the arrangement.
Regarding claim 7, Day further discloses a coolant expansion device (310) disposed downstream from one of the first heat exchanger (108) and the second heat exchanger (114) and upstream from the energy storage heat exchanger (322) relative to a flow of the heat transfer fluid.
Regarding claim 8, Day further discloses a bypass conduit (bypass of expansion valve at 310 includes the check valve conduit) arranged in parallel with the coolant expansion device, the bypass conduit including a valve operable to control the flow of the heat transfer fluid through the bypass conduit.
Claim(s) 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Day et al (US 2022/0325930).
Regarding claims 9 and 10, Day discloses the plurality of components of the vapor compression cycle are arranged within an indoor unit and an outdoor unit (the components are necessarily either indoors or outdoors), Day is silent concerning whether the energy storage heat exchanger is within an indoor or outdoor unit. The examiner takes official notice that indoor and outdoor units are old and well known. It would have been obvious to one of ordinary skill in the art to have provided the energy storage heat exchanger within an indoor or outdoor unit in order to satisfy packaging requirements, reduce conduit length, or ease installation. Moreover, it has been held that the particular position of an element does not render a claim non-obvious when rearranging said element would not have modified the operation of the device. Further the particular location can be regarded as an obvious matter of design choice. MPEP 2144.04 VI. C.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Zhang et al (US 12,472,796) battery conditioning and PCM
Omi et al (US 10,910,684) battery conditioning and coolant loops (thermosiphons)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER R ZERPHEY whose telephone number is (571)272-5965. The examiner can normally be reached M-F 7:00-4:00 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 5712707740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER R ZERPHEY/Primary Examiner, Art Unit 3799