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 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 14-20 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 14 recites “at least one outdoor heat exchanger” in line 4 of the claim, indicating that the air conditioning system 110 can comprise multiple outdoor heat exchangers. However, the original disclosure only shows air conditioning system 110 having a single outdoor heat exchanger 113. The recitation including the option of more than one outdoor heat exchanger therefore constitutes new matter.
Claim 14 recites “one or more three-way valves” in line 7 of the claim, indicating that the air conditioning system 110 can comprise multiple three-way valves. However, the original disclosure only shows air conditioning system 110 having a single three-way valve 113. The recitation including the option of more than one three-way valve therefore constitutes new matter.
Claim 14 recites “one or more throttling elements” in line 8 of the claim, indicating that the air conditioning system 110 can comprise only a single throttling element. However, the original disclosure comprises multiple throttling elements 117-119. The recitation including the option of only a single throttling device therefore constitutes new matter. It is further unclear how the selective operation recited could be performed using only a single throttling element.
Claims 15-20 are also rejected since they depend from claim 14.
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 14-20 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 14 recites “a second outdoor heat exchanger” at line 13 of the claim. However, the claim earlier recites “at least one outdoor heat exchanger.” Since the recitation of “at least one outdoor heat exchanger” can include multiple heat exchanger, it is unclear how “a second outdoor heat exchanger” clearly distinguishes from that recitation.
Claims 15-20 are also rejected since they depend from claim 14.
Allowable Subject Matter
Claims 1-13 are allowed.
See reasons for the indication of allowable subject matter set forth in the previous office action. Note further that Applicant’s arguments regarding “throttling element” and “battery cooling device” are persuasive. Accordingly, the corresponding rejections under 35 U.S.C. 112(a) & (b) have been withdrawn.
Response to Arguments
As noted, above, Applicant’s arguments regarding “throttling element” and “battery cooling device” are persuasive. Accordingly, the corresponding rejections under 35 U.S.C. 112(a) & (b) have been withdrawn.
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.
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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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