Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
The claims received 7/23/2026 are entered. Claims 15-16 are cancelled. Claim 23 is new.
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 1-4 and 17-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 8, 10-17, and 20-22 of U.S. Patent No. 12,078,385. Although the claims at issue are not identical, they are not patentably distinct from each other because:
The features of instant claims 1-4 and 21-23 are found in cited claim 1.
Further the exchange of moisture is driven by the movement towards equilibrium as a natural effect.
The features of instant claim 5 are found in cited claim 2.
The features of instant claim 6 are found in cited claim 3.
The features of instant claim 7are found in cited claim 4.
The features of instant claim 8 are found in cited claim 5.
The features of instant claim 9 are found in cited claim 8.
The features of instant claim 10 are found in cited claim 10.
The features of instant claim 11 are found in cited claim 11.
The features of instant claim 12 are found in cited claim 12.
The features of instant claim 13 are found in cited claim 13.
The features of instant claim 14 are found in cited claim 14.
The features of instant claim 17 are found in cited claim 17.
The features of instant claim 18 are found in cited claim 20.
The features of instant claim 19 are found in cited claim 21.
The features of instant claim 20 are found in cited claim 22.
The examiner further notes that there is no prohibition to the Nonstatutory Double Patenting Rejection in this instance as the application was not filed in response to an office requirement for restriction. MPEP 804.01. Rather in this instance the instant application and the cited patent above are to the same species.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 1-11 and 17-23 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Pierson (US 7,343,746), in view of Hsieh (US 6,394,174), and in further view of Robison (US 4,287,721).
Regarding claims 1, 19, and 20, Pierson discloses a method for heat dissipation using a hygroscopic working fluid, the method comprising:
transferring thermal energy from a heated process fluid (fluid in circuit 16) to the hygroscopic working fluid (circuit including the cooling tower contains hygroscopic working fluid; 15:24-25 notes that recitation of water throughout the disclosure includes both water and aqueous solution; potassium formate and sodium nitrate are examples) in a process heat exchanger/chiller (13), to form a cooled process fluid;
condensing liquid from a feed gas on a heat transfer surface of a feed gas heat exchanger (14; condensate capture shown in figure 1) in contact with the cooled process fluid, to form a cooled feed gas, the heated process fluid, and a condensate;
dissipating thermal energy from the hygroscopic working fluid to a cooling gas composition with a fluid-air contactor (“cooling tower” of figure 1), wherein the fluid-air contactor collects the hygroscopic working fluid in a fluid-air contactor hygroscopic working fluid-collection basin after it has contacted the cooling gas composition in the fluid-air contactor;
transferring moisture between the hygroscopic working fluid and the cooling gas composition with the fluid-air contactor, wherein transferring moisture between the hygroscopic working fluid and the cooling gas composition comprises evaporating moisture from the hygroscopic working fluid into the cooling gas composition (the nature of operation of a cooling tower includes moisture transfer); and
transferring the hygroscopic working fluid from the fluid-air contactor hygroscopic working fluid-collection basin to the process heat exchanger (fluid is circulated by “cooling water circulating pumps” to process heat exchanger 13).
Pierson lacks adding at least part of the condensate to the hygroscopic working fluid. Rather the condensate is utilized for optional inlet fogging.
Hsieh discloses a system for reclaiming process water (condensate) where captured condensate (96) is added back to a working fluid (within cooling tower 72).
It would have been obvious to one of ordinary skill in the art to have provided the captured condensate of Pierson to the hygroscopic working fluid of the cooling tower circuit as taught by Hsieh in order to provide make-up water.
Further regarding exchanging moisture between the hygroscopic working fluid and the cooling gas composition, Robison is provided. Which is to say that Pierson provides the hygroscopic solution for the purpose of preventing freezing rather than explicitly for its hygroscopic property (which is an intrinsic property of potassium formate solution). Robison discloses using a hygroscopic solution to attract water vapor which forms a cooled solution (1:63-2:6). It would have been obvious to one of ordinary skill in the art to have provided Pierson with the step of evaporating moisture from the air as taught by Robison in order to provide a cooling effect at the solution and make up water from the atmospheric air.
Moreover Applicant is setting forth the result of a claimed method, i.e. the direction of moisture transfer between the hygroscopic working fluid and cooling gas. If the steps of a method claim are provided in the prior art, it follows naturally that the result of the prior art method would be the same as those claimed by Applicant. Without any additional information such as some asserted distinguishing step not claimed, the instant claims do not patentably distinguish over the prior art.
MPEP 2111.04(I) - the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)).
Further regarding the fluid-collection basin of the fluid air contactor. Pierson discloses a “cooling tower” at figure 1. It is well understood in the art that a cooling tower is inclusive of a basin. Nonetheless Hsieh evidences a cooling tower (72) having a basin (76). It would have been obvious to one of ordinary skill in the art to have provided Pierson with a basin in order to provide fluid for sustained operation.
Regarding claim 2, Pierson discloses collecting the condensate in a feed gas heat exchanger condensate-collection basin (basin shown in figure 1 of Pierson at the “optional inlet fogging”), and transferring the condensate from the feed gas heat exchanger condensate-collection basin to a condensate storage tank (90 of Hsieh), to form a stored condensate in the condensate storage tank.
Regarding claim 3, Pierson discloses operating the process heat exchanger at night or other off-peak hours when power demand is low (15:33-53 discusses off-peak operation) comprising storing the cooled process fluid in a process fluid storage tank (18) for subsequent conveyance to the feed gas exchanger (14) and providing the stored condensate from the condensate storage tank to the hygroscopic working fluid (provided by modification at claim 1), wherein providing the stored condensate from the condensate storage tank to the hygroscopic working fluid comprises providing the stored condensate from the condensate storage tank to the fluid-air contactor hygroscopic working fluid-collection basin.
Regarding claim 4, Pierson discloses decoupling the process heat exchanger at daytime or other peak hours when power demand is high (16:3-5) comprising performing the transferring of the condensate from the feed gas heat exchanger condensate-collection basin to the condensate storage tank (as provided in modification at claim 1) and providing the cooled process fluid from the process fluid storage tank to the feed gas heat exchanger (16:3-30).
Regarding claim 5, Pierson discloses the condensing of the liquid from the feed gas comprises transferring thermal energy from the feed gas to the cooled process fluid (process heat exchanger 14 cools the feed gas).
Regarding claim 6, Pierson discloses feeding the cooled feed gas to a rotary mechanical device (32 and 36).
Regarding claim 7, Pierson the feed gas comprises the ambient atmosphere, a gas having more water vapor than the ambient atmosphere, a gas having less water vapor than the ambient atmosphere, or a combination thereof (15a is ambient atmosphere).
Regarding claim 8, Pierson the process heat exchanger (13) is a chiller that moves thermal energy from the heated process fluid to the hygroscopic working fluid via a chiller working fluid.
Regarding claim 9, Pierson as modified discloses the feed gas has sufficient humidity such that the condensing of the liquid from the feed gas (condensate collected under 14 as shown in figure 1) provides condensate to make up for water lost from the hygroscopic working fluid during the method (providing the collected condensate to the hygroscopic working fluid provided at the modification at claim 1). It is noted the condensate collected is some quantity of water and the water lost from the hygroscopic working fluid is some quantity of water. Pierson does not state if the quantity of water condensed is equal to or larger than the quantity of water lost. Further the quantity of water condensed is dependent upon the humidity of the atmospheric air. It has been held that the optimization of a result-effective variable is obvious. In this instance the amount of condensate provided to the hygroscopic working fluid reduces or eliminates the quantity of make-up water needed. Therefor because the quantity of condensate is recognized as effecting the result of reducing or eliminating make-up water from an external source; the relation of quantity condensed > water lost from the hygroscopic working fluid is not a product of innovation but of ordinary skill and is obvious.
Regarding claim 10, Pierson discloses maintaining the hygroscopic working fluid to prevent crystallization of the desiccant from the desiccant-based hygroscopic working fluid (the addition of condensate from the modification at claim 1 maintains the hygroscopic working fluid).
Regarding claim 11, Pierson discloses the cooling gas composition comprises the ambient atmosphere (the cooling tower utilizes the ambient atmosphere as is well understood).
Regarding claim 17, Pierson discloses the feed gas comprises humidity from at least one of a spray, mist, or fog of water directly into the feed gas composition (27:54-66).
Regarding claim 18, Pierson as modified discloses the method of claim 1, but lacks further details of the fluid-air contactor. The examiner takes official notice that falling-film heat exchangers comprising falling film wicks with a basin there below is old and well known. It would have been obvious to one of ordinary skill in the art to have provided Pierson with a falling-film wick type heat exchanger in order to enhance heat exchange.
Regarding claim 21, Pierson discloses transferring moisture between the hygroscopic working fluid (such as Potassium Formate 15:18) and the cooling gas with the fluid air contactor (within the “cooling tower”) comprises exchanging moisture between the hygroscopic working fluid and the cooling gas composition to approach equilibrium of water vapor pressure between the hygroscopic working fluid and the cooling gas composition (the nature of water evaporating in the cooling tower drives the system toward equilibrium). Further regarding exchanging moisture between the hygroscopic working fluid and the cooling gas composition, Robison is provided. Which is to say that Pierson provides the hygroscopic solution for the purpose of preventing freezing rather than explicitly for its hygroscopic property (which is an intrinsic property of potassium formate solution). Robison discloses using a hygroscopic solution to attract water vapor which forms a cooled solution (1:63-2:6). It would have been obvious to one of ordinary skill in the art to have provided Pierson with the step of evaporating moisture from the air as taught by Robison in order to provide a cooling effect at the solution.
Regarding claim 22, Pierson discloses the hygroscopic working fluid comprises a solution of a hygroscopic substance and water, wherein the hygroscopic substance attracts moisture vapor and forms a liquid solution with water having a reduced water vapor pressure relative to pure water (at column 15 the potassium formate additive is described as a “mixture” however at claims 5-7 is described as a solution. It is well known that potassium formate is highly soluble in water and thus is understood to be a solution). To the extent that applicant argues that the system of Pierson does not attract water vapor, Robison is provided. Which is to say that Pierson provides the hygroscopic solution for the purpose of preventing freezing rather than explicitly for its hygroscopic property (which is an intrinsic property of potassium formate solution). Robison discloses using a hygroscopic solution to attract water vapor which forms a cooled solution (1:63-2:6). It would have been obvious to one of ordinary skill in the art to have provided Pierson with the step of evaporating moisture from the air as taught by Robison in order to provide a cooling effect at the solution.
Regarding claim 23, Pierson discloses a single body of the hygroscopic working fluid both receives the thermal energy from the heated process fluid in the process heat exchanger (13) and contacts the cooling gas composition in the fluid-air contactor, and wherein the single body of the hygroscopic fluid both evaporates the moisture in the cooling gas composition and absorbs the moisture from the cooling gas composition (bi-directional moisture movement discussed at claim 1)
Claims 12-14 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Pierson (US 7,343,746), in view of Hsieh (US 6,394,174), in view of Robison (US 4,287,721), and in view of Bowman (US 5,407,606).
Regarding claims 12-14, Pierson discloses the cooling tower uses a cooling gas composition that is ambient atmosphere, and lacks the gas having more water vapor than the ambient atmosphere. Bowman discloses a cooling tower which includes a cooling gas composition having more water vapor than the ambient air (spray trees arranged about the cooling tower increase water vapor in the ambient air). It would have been obvious to one of ordinary skill in the art to have provided Pierson with the additional water vapor as taught by Bowman in order to increase air flow velocity and provide net cooling temperature (discussed at column 6 of Bowman).
Response to Arguments
Applicant's arguments filed 7/23/2026 have been fully considered but they are not persuasive.
At pages 8-9 applicant discusses new claim 23 and purports that the “two loop” structure of Pierson is “fundamentally incompatible” with the single-body feature of claim 23. However the relevant structure of Pierson is a single body in the same manner as claimed. Moreover it is shown here that the disclosed circuit of Pierson and the elected embodiment of the instant application are substantially similar:
PNG
media_image1.png
751
2038
media_image1.png
Greyscale
Applicant further purports at page 8 that the hygroscopic substant of Pierson never contacts air; however the nature of a cooling tower provides that the fluid contacts air.
Regarding argument 1(A) at pages 10-11. Pierson states that the term water includes both pure water and aqueous mixtures including any additives. Thus the statement of the cooling tower utilizing water is also inclusive of the hygroscopic working fluid as has been discussed.
Regarding argument 1(B) at page 11. The transfer of moisture to/from the air and hygroscopic working fluid is driven by the fluids tendency towards equilibrium. Insofar as the condensation of moisture provides a heating effect, the fluid later achieves a cooling effect when said moisture is evaporated. The thermal capacity of the hygroscopic fluid itself may contain heat and thus may simultaneously take in heat from the process heat exchanger and from the heat of condensation. This does not render the system unsatisfactory for its intended purpose as it merely operates the system within variable conditions, e.g. changing weather, ambient temperature, diurnal conditions. Moreover Robison explicitly acknowledges using the changing conditions, e.g. night operation, in an effort to store capacity.
Applicant is setting forth the result of a claimed method, i.e. the direction of moisture transfer between the hygroscopic working fluid and cooling gas. If the steps of a method claim are provided in the prior art, it follows naturally that the result of the prior art method would be the same as those claimed by Applicant. Without any additional information such as some asserted distinguishing step not claimed, the instant claims do not patentably distinguish over the prior art.
MPEP 2111.04(I) - the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)).
Regarding argument 1(C) at page 12. Applicant continues to erroneously purport that the hygroscopic working fluid of Pierson is “ordinary condenser water”. Applicant disregards portions of the references teaching in order to support their argument and thus is not persuasive. Moreover Robinson is now provided at claim 1 to explicitly disclose bidirectional moisture transfer of the same circuit.
Regarding argument III at pages 13-14, Applicant discusses the Robison reference as applied to claims 21 and 22. Again Robison explicitly acknowledges using the changing conditions, e.g. night operation, in an effort to store capacity. Further the claim language at issue is a result of the method step which is expected in light of performing the step.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Guimaraes (US 6,044,640) process air cooling
Desai (US 2013/0186117) process air cooling
Smith et al (US 5,193,352) condensate storage tank for process air cooling
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.
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.
/CHRISTOPHER R ZERPHEY/Primary Examiner, Art Unit 3799
Prosecution Insights