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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/16/2026 has been entered.
Response to Arguments
Applicant's arguments filed 01/16/2025 have been fully considered but they are not persuasive. Regarding applicant’s arguments on pages 9-11 that Bennett does not teach the return structure of the apparatus, specifically the structure of the first return air inlet, the second return air inlet, and return air outlet, examiner notes that the structure of the upper air outlet 22, lower air outlet 20, and outlet of housing 10 formed in communication with floor vent 18 as shown on fig. 2-3 of Bennett form the structure for a configuration to distribute air into a room. While Bennett does not teach a method of operating this structure as a means to return air into the HVAC system, this is later taught by Weiss, which comprises a similar apparatus to that of Bennett but describes “Further, it should be noted that the adaptor can be comparably utilized on a low level cold air or return register to raise the point at which air is taken from the space to be conditioned” [col. 3 lines 61-64]. Therefore, Bennett as modified by Weiss, teaches a method wherein the apparatus can be used to return air to the HVAC system. This is further taught by Newcomer, which describes the use of a similar structure within a wall to both distribute and return air to/from the HVAC system.
On page 11, applicant additionally argues “In its assertion, the Office Action incorrectly states, "the return air outlet is in fluid communication with the existing air vent of the HVAC system" (emphasis added); however, applicant's claim recites "the return air outlet is in fluid communication with the existing return air vent of the HVAC system." (emphasis added). The recited term "return" is an important and differentiating element in applicant's claim, its removal in the Office Action's review critically, and incorrectly, changes the scope of applicant's claims. Applicant's claimed method includes a return air outlet that is in fluid communication with the existing return air vent of the HVAC system. This is an important distinction, as applicant's system is not configured to be in fluid communication with an existing air vent, such as floor air vent 118 disclosed in Bennett, that is not a return air vent, but rather an air outlet for introducing air into a room”. Similar to above and as described in the office action, while Bennett teaches the existing air vent of the HVAC system, Bennett does not teach the existing return air vent of the HVAC system. However, this is further modified by the system of Weiss, which allows for the apparatus to be used with a return air register.
On page 12, applicant additionally argues “The Office Action goes on to state that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Bennett stating, "since many residential walls comprise a baseboard that would prevent central air uptake attachment 10 from sitting flush against a wall, and thus the configuration of Rottinghaus allows for 'spacing the cabinet from the wall, the spacing corresponding to the thickness of baseboard 14". (See Office Action Page 5). It is unclear as to what the presence of, or lack thereof, baseboards have to do with the motivation to modify Bennett. Even along such a line of thinking, it would be more obvious and easier to simply remove a small portion of baseboard rather than to completely redesign the device of Bennett”. However, examiner notes that there is sufficient motivation for each of these scenarios. Providing an apparatus that comprises four-walled construction would therefore accommodate the structure over many different walls and baseboard structures, instead of removing and reinstalling baseboard each time the structure is moved. Applicant additionally argues “Nevertheless, here again, the Rottinghaus device is configured to be placed over an air outlet register and provides a passageway through the upper portion of its cabinet to exhaust treated/conditioned air into a room… Here again, as in Bennett, Rottinghaus operates in the exact opposite manner as applicant's claimed method, and applicant's claimed method would be incompatible with such a system”. However, Rottinghaus is only relied upon to teach the four-walled construction instead of the three-walled construction of Bennett. Weiss is relied upon to teach the use of the apparatus of Bennet with a return air register.
On page 13, applicant additionally argues “Like Bennett and Rottinghaus, Weiss is primarily related to directing conditioned air into a room. Weiss discloses an adaptor for use with low level hot air outlets of existing hot air systems to convert such a system to a high level air conditioning system. (See, Weiss col. 1 lines 8-12). Weiss teaches an adaptor for a low level exhaust register to convert it to a high level exhaust register. (See, Weiss col. 1 lines 70-71 to col. 2 lines 1-2). That is, Weiss discloses an adaptor that mounts to an existing hot air exhaust register that is positioned low on the wall or in the floor of a room and converts it to extend upward to exhaust treated/conditioned air into the room at a higher level, thereby making the hot air system more suitable to being converted to an air conditioning system. Again, this is the exact opposite of applicant's claimed method. The Office Action refers to a single instance in Weiss where it recites "the adaptor can be comparably utilized on a low level cold air or return register." However, such a brief statement that the adaptor can be utilized on a low level cold air or return register, can hardly rise to the level of an enabling teaching and falls far short of disclosing applicant's claimed element. Nor does it present or support a motivation or suggestion to combine Weiss with and/or modify the teachings of Bennett and Rottinghaus to arrive at applicant's claimed method, especially in light of the fact that Bennett and Rottinghaus, both specifically disclose the exact opposite of applicant's claimed method, as does the main disclosure of Weiss. Further, the cited combination is deficient because modifying the prior art as suggested in the Office Action would frustrate the very purposes of the cited references rendering them inoperable.”. As applicant stated, like Bennett and Rottinghaus, Weiss is primarily related to directing conditioned air into a room. However, Weiss discloses that such a device primarily related to directing conditioned air into a room can also be comparably utilized on a low level cold air or return register. Thus, as the apparatuses are similar in structure and operation, Weiss enables teaching and disclosing applicant's claimed element when combined with Bennett, and would not render Bennett inoperable.
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:
Claim 3: “a closure mechanism, wherein the closure mechanism is positionable and configured to selectively block fluid communication between one of the first return air inlet or the second return air inlet and the return air outlet”
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.
With regards to the closure mechanism, the corresponding structure described in the specification as performing the claimed function is that of a hinged baffle [page 13 lines 24-25, page 14 lines 1-4].
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 § 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.
Claim(s) 1-7, 9-11 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bennett (US4850266A) in view of Rottinghaus (US1825423A), Weiss (US3308746A) and Newcomer (US20130281000A1).
Regarding claim 1, Bennett teaches
A method of using an apparatus for managing return air intake in a heating, ventilation, and air conditioning (HVAC) system, the method comprising:
a. providing an apparatus (central air uptake attachment 10, fig. 1) for managing return air intake in the HVAC system (intended use limitation, thus not given patentable weight), comprising:
i. a free-standing self-contained substantially hollow airflow body (uplift channel 24), the airflow body configured to stand outside of an existing wall structure (wall 16, fig. 1);
ii. a first air inlet formed in a first portion of the airflow body (upper air outlet 22) and a second air inlet formed in a second portion of the airflow body (lower air outlet 20); and
iii. a air outlet formed in a third portion of the airflow body (outlet of housing 10 formed in communication with floor vent 18 as shown on fig. 2-3), wherein the first air inlet and the second air inlet are configured to be in selective fluid communication with the air outlet through at least a portion of the airflow body (as shown on fig. 2-3, diverter 34 allows selective communication between lower air outlet 20 and vent and upper outlet 22 and vent through housing 10);
b. positioning the air intake management apparatus in the space to be serviced by the HVAC system such that the air outlet is in fluid communication with the existing air vent of the HVAC system (as shown on fig. 1); and
c. activating the HVAC system (“One of the outlets 20 and 22, preferably the lower outlet 20, is to be used for introducing heated air into room 12. The other of the outlets 20 and 22, preferably the upper outlet 22, is to be used for introducing cooled air--that is, air conditioning--into room 12” [col. 4 lines 36-41]); thus, the HVAC system can be activated after the housing 10 is installed)
Bennett does not teach
a first return air inlet;
a second return air inlet;
a return air outlet;
a free-standing self-contained substantially hollow airflow body formed by a front wall, a rear wall, and two opposing side walls positioned between the front and rear walls
wherein the first return air inlet is configured to intake air from an upper region of a space being serviced by the HVAC system when the HVAC system is in a cooling mode and the second return air inlet is configured to intake air from a lower region of the space being serviced by the HVAC system when the HVAC system is in a heating mode
wherein the return air outlet is configured to align and engage in fluid communication with an existing return air vent within a ceiling or wall structure of the HVAC system in a space in which the apparatus is installed
b. positioning the air intake management apparatus in the space to be serviced by the HVAC system such that the return air outlet is in fluid communication with the existing return air vent of the HVAC system
wherein upon activating the HVAC system air from an upper region of the space being serviced by the HVAC system is pulled in through the first return air inlet when the HVAC system is in the cooling mode and pulled in through the second return air inlet when the HVAC system is in a heating mode
Weiss teaches
wherein the first return air inlet is configured to intake air from an upper region of a space being serviced by the HVAC system when the HVAC system is in a cooling mode (“Further, it should be noted that the adaptor can be comparably utilized on a low level cold air or return register to raise the point at which air is taken from the space to be conditioned” [col. 3 lines 61-64]
wherein the return air outlet is configured to align and engage in fluid communication with an existing return air vent within a ceiling or wall structure of the HVAC system in a space in which the apparatus is installed (return outlet of adaptor body 11 configured to align and engage in fluid communication with existing register 14 within wall 13)
b. positioning the air intake management apparatus in the space to be serviced by the HVAC system such that the return air outlet is in fluid communication with the existing return air vent of the HVAC system (as shown on fig. 2)
The system of Weiss teaches a similar configuration to that of Bennett, wherein an adaptor 10 is configured to align and engage in fluid communication with an existing air vent within a wall structure. However, while both Bennett and Weiss teach the structure as capable of aligning with an existing register to distribute air into a room, Weiss additionally teaches “that the adaptor can be comparably utilized on a low level cold air or return register to raise the point at which air is taken from the space to be conditioned” [col. 3 lines 61-64 of Weiss], thus the adaptor can be aligned with a return vent and return air to an HVAC system from an upper region of a room during a cooling mode. Therefore, the system of Bennett can be modified to be configured to align with a return vent, as taught in Weiss. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make this modification in order to allow the central air uptake attachment 10 of Bennett to operate on return air vents as well, in order to increase the efficiency of return air systems in addition to distribution systems.
The combination teaches
a first return air inlet (upper air outlet 22 of Bennett, as modified by Weiss);
a second return air inlet (lower air outlet 20 of Bennett, as modified by Weiss);
a return air outlet (outlet of housing 10 formed in communication with floor vent 18 as shown on fig. 2-3 of Bennett, as modified by Weiss);
the second return air inlet is configured to intake air from a lower region of the space being serviced by the HVAC system when the HVAC system is in a heating mode (Bennett configured to intake air in position shown on fig. 2 during heating mode, as modified by Weiss to align with return air vent)
Rottinghaus teaches
a free-standing self-contained substantially hollow airflow body formed by a front wall, a rear wall, and two opposing side walls positioned between the front and rear walls (cabinet 1, as shown on fig. 1-3)
The system of Rottinghaus teaches a similar configuration to that of Bennett, however comprises an airflow body formed of four walls, including rear wall 8 facing a wall of a room and an offset portion 13 adjacent to a register 11. The central air uptake attachment 10 of Bennett can be modified to comprise this structure by providing the housing 10 with a rear wall and offset portion as taught in Rottinghaus. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make this modification since many residential walls comprise a baseboard that would prevent central air uptake attachment 10 from sitting flush against a wall, and thus the configuration of Rottinghaus allows for “spacing the cabinet from the wall, the spacing corresponding to the thickness of baseboard 14” [page 1 lines 96-98 of Rottinghaus].
Newcomer teaches
wherein upon activating the HVAC system air from an upper region of the space being serviced by the HVAC system is pulled in through the first return air inlet when the HVAC system is in the cooling mode (“As shown in FIG. 24A, the valve 1110 of the duct 1100 connected to the outlet duct 102 is in a position that shuts off the upper duct opening 1102 . Thus, the cooled air from the air handling unit 100 is delivered into the room through the lower duct opening 1104 . Because the valve 1110 of the other duct 1100 which is connected to the inlet duct 104 is shutting off the lower duct opening 1104 , the air being returned from the room to the air handling unit is pulled into the upper duct opening 1102 at the top of the room. Thus, the system is operating in a cooling mode as described above”) [0140] and pulled in through the second return air inlet when the HVAC system is in a heating mode (“In the configuration illustrated in FIG. 24B, the positions of the valve 1110 within the ducts 1100 have been reversed. Thus, air from the air handling unit 100 is delivered into the upper portion of the room through the upper duct opening 1102 of the duct 1100 connected to the outlet duct 102 . Also, air being returned to the air handling unit 100 via the inlet duct 104 is pulled from the lower portion of the room via the lower duct opening 1104 of the duct 1110 on the right side of the room. This configuration would be appropriate when the air handling unit is delivering heated air in a heating operational mode” [0141])
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide operation of the valve 1110 of Newcomer to the method of Bennett, as modified, in order to optimize the location of air taken out of the room based on heating or cooling modes, thus improving the efficiency of the system.
Regarding claim 2, Bennett, as modified, teaches the method of claim 1,
further comprising one or more adaptors configured to allow the return air outlet to engage in fluid communication with the existing return air vent of the HVAC system (as modified to comprise offset portion 13 of Rottinghaus; “offset portion 13 extending through the opening in the rear cabinet wall adapting the plate to be engaged beneath the face of the frame plate of the register” [page 1 lines 90-94 of Rottinghaus])
Regarding claim 3, Bennett, as modified, teaches the method of claim 1,
further comprising a closure mechanism, wherein the closure mechanism is positionable and configured to selectively block fluid communication between one of the first return air inlet or the second return air inlet and the return air outlet (diverter 34, as shown on figs. 2-3 of Bennett)
Regarding claim 4, Bennett, as modified, teaches the method of claim 3,
wherein the position of the closure mechanism is configured to be set manually to block fluid communication between a selected one of the first return air inlet or the second return air inlet and the return air outlet (“A lever 40 extends generally opposite diverter 34 so that lever 40 may be used as a means of selecting the orientation of diverter 34” [col. 5 lines 25-27 of Bennett])
Regarding claim 5, Bennett, as modified, does not teach the method of claim 3,
wherein the position of the closure mechanism is configured to be set automatically based on a state of operation of the HVAC system, to block fluid communication between a selected one of the first return air inlet or the second return air inlet and the return air outlet
Newcomer teaches
wherein the position of the closure mechanism is configured to be set automatically based on a state of operation of the HVAC system, to block fluid communication between a selected one of the first return air inlet or the second return air inlet and the return air outlet (“A valve 1110 is installed in the duct adjacent the lower duct opening 1104 . The valve can move between a first position as illustrated in FIG. 23A, in which it closes off the upper duct opening 1102 , and a second position as illustrated in FIG. 23B, in which it closes off the lower duct opening 1104 .The valve 1110 could be controlled by an electronically operated drive mechanism such that electrical signals can be used to cause the valve to move between the first and second positions” [0136-0137]; based on a state of operation of the HVAC system as described in [0140-0141])
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the electronically operated drive mechanism of valve 1110 of Newcomer to the system of Bennett, as modified, in order to remove the responsibility of controlling the diverter from the user when operating the system.
Regarding claim 6, Bennett, as modified, teaches the method of claim 5,
wherein a position of the closure mechanism is controlled by a controller, wherein the controller is in communication with the HVAC system to which the apparatus is installed (as described regarding claim 5, one of ordinary skill in the art would recognize that the electrical signals come from a controller apparatus of Newcomer)
Regarding claim 7, Bennett, as modified, teaches the method of claim 3,
wherein the closure mechanism is hingedly connected to an interior portion of the airflow body (as shown on fig. 3 of Bennett)
Regarding claim 9, Bennett, as modified, teaches the method of claim 1,
wherein the airflow body comprises one or more of a rigid (“Housings 10 and 110 are preferably made of lightweight construction material such as plastic” [col. 5 liens 57-58 of Bennett]), semi-rigid, flexible, and collapsible material
Regarding claim 10, Bennett, as modified, teaches the method of claim 1,
wherein the airflow body comprises one of a rectangular, ovular, or circular cross-sectional shape (rectangular cross-sectional shape created by three housing walls 26, 28 and 30 of Bennett modified to comprise rear wall 8 of Rottinghaus)
Regarding claim 11, Bennett, as modified, teaches the method of claim 1,
wherein the airflow body is configured to be portable (“he construction of housing 10 allows for the central air uptake attachment to be boxed conveniently for consumers to purchase the central air uptake attachment. As seen in FIGS. 1, 5, and 7, a fold line 50 in housing 10 allows housing 10 to fit into a convenient-sized kit package 52 which can be placed in the trunk of an automobile and carried to the site of its intended use” [col. 6 liens 9-15 of Bennett])
Regarding claim 21, Bennett, as modified, teaches the method of claim 1,
wherein the first return air inlet is formed in a top end, the front wall, or either or both of the side walls of the first portion of the airflow body (upper air outlet 22 formed in center wall 30, fig. 1 of Bennett) and the second return air inlet is formed in the front wall or either or both of the side walls of the second portion of the airflow body (lower air outlet 20 formed in center wall 30, fig. 1 of Bennett)
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bennett (US4850266A) in view of Rottinghaus (US1825423A), Weiss (US3308746A), and Newcomer (US20130281000A1), in further view of Mosley (US20150241082A1).
Regarding claim 8, Bennett, as modified, does not teach the method of claim 1,
wherein the airflow body comprises a plurality of stackable sections
Mosley teaches
wherein the airflow body comprises a plurality of stackable sections (as shown on fig. 1, the register system comprises a plurality of stacking duct sections, including plenum chamber section 5, plenum chamber section 6, and plenum chamber section 7)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the stackable vent configuration taught in Mosley to Bennett, as modified, in order to allow for the ability to accommodate for different room heights when positioning the upper air outlet 22.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRETT P. MALLON whose telephone number is (571)272-4749. The examiner can normally be reached Monday-Thursday from 8am to 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MICHAEL HOANG can be reached at (571)272-6460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRETT P. MALLON/Examiner, Art Unit 3762 /MICHAEL G HOANG/Supervisory Patent Examiner, Art Unit 3762