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 .
The claims received 6/17/2026 are entered. Claims 2-4, 13, and 15 are cancelled. Claims 12, 14, and 16-20 remain withdrawn.
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Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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.
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, 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), at least one heat exchanger (108, 114, and 322), a reversing valve (104) transformable between a first state and a second state, and a heat transfer fluid is configured to circulate within the vapor compression cycle, the at least one heat exchanger includes an energy storage heat exchanger (322); 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 indirectly thermally coupled (by a circuit 326) to the vapor compression cycle and an outlet of the energy storage heat exchanger (322) is directly fluidly connected to an inlet of the compressor when the reversing valve is in both the first state and the second state (by way of 320b). The refrigerant is capable of flow from 322 to the compressor by way of 320b, e.g. as shown in figures 3 and 6. Further regarding “directly fluidly connected”, in the art it is understood that mere connections, e.g. ducts, pipes, tubes, control valves etc. are direct connections whereas an element that causes a thermodynamic effect, e.g. compression or expansion would not be regarded as direct. Thus the mere presence of valve 320b does not preclude direct connection and similarly the junction shown in the instant application does not preclude direct connection.
Additionally, regarding limitations drawn to a flow of fluid, the "manner of operating the device does not differentiate apparatus from the prior art" And “apparatus claims cover what a device is, not what a device does” MPEP 2114. Absent distinguishing structure, a mere functional limitation is not sufficient to define over the prior art.
Regarding claim 5, Day discloses the at least one heat exchanger of the vapor compression cycle includes a first heat exchanger (108) and a second heat exchanger (114), 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) 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.
In the previous office action on the merits the Examiner took Official Notice that indoor and outdoor units are old and well known.. In his subsequent reply to this office action, the applicant did not traverse Examiner’s assertion of Official Notice with regard to these elements. Therefore the Official Notice statements by the Examiner regarding these elements are now taken as admitted prior art by Applicant. See MPEP §2144.03(C).
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.
Response to Arguments
Applicant's arguments filed 6/17/2026 have been fully considered but they are not persuasive.
At page 6, applicant asserts that the amendment has overcome the rejection to claim 7. Claim 7 is identified as original. No amendment in a preceding claim alleviates the rejection.
In regard to double patenting, the claims of 18/762,830 have been reviewed (claim set dated 6/10/2026). The double patenting rejection has been overcome due to the instant amendment.
Regarding the flow of refrigeration from 322 to the compressor on condition of reversing valve. The "manner of operating the device does not differentiate apparatus from the prior art" And “apparatus claims cover what a device is, not what a device does” MPEP 2114. Absent distinguishing structure, a mere functional limitation is not sufficient to define over the prior art. The refrigerant is capable of flow from 322 to the compressor by way of 320b, e.g. as shown in figures 3 and 6.
Applicant is reminded the claim 12 is withdrawn.
The arguments at pages 9-10 are directed back to the rejection of claim 1, which for the reasons above are not persuasive.
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)
THIS ACTION IS MADE FINAL. 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 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
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