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 .
Information Disclosure Statement
The submitted information disclosure statement(s) (IDS) is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is/are being considered by the examiner.
Claim Objections
The following claims are objected to because of informalities, wherein appropriate correction is required:
In claim 1:
The recitation of “the outside” (in line 6) should be amended to –an outside—, for antecedent basis and to avoid ambiguities.
In claim 15:
The recitation of “comprises” (in line 1) should be amended to –comprising—, for grammatical purposes.
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 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:
“a dehumidification member configured to separate moisture […]” (claims 1 and 15).
“a first part configured to generate an air flow […]” (claim 1)
The aforementioned limitation(s) meet the three prong test, as follows:
The claims use generic placeholders (i.e., “member” and “part”) with no specific structural meaning.
The generic placeholders are modified by functional language (i.e., “configured to”).
The claimed functions do not include sufficient structures or materials for performing the functions.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
A review of the specification shows that the following appear to be the corresponding structures for the aforementioned 112(f) limitation(s):
The “dehumidification member” appears to at least be described as including polymer membrane fibers (321) having a hollow fiber structure (¶ 254). The membrane fibers may be configured to have a diameter of about 400 to 420 μm and may be provided in multiple strands (¶ 255-256). The dehumidification member may further comprise a packing member (323) surrounding the membrane fibers to fix and maintain the shape of the fibers (¶ 257).
The “first part” appears to be associated with the fan that generates air flow (¶¶ 85 and 301).
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 § 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.
Claims 10-14 and 19-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 10 contains the following issues:
The claim recites “a third partition wall” without a corresponding “second partition wall”. It should be noted that claim 1 (from which claim 10 depends) only recites a “partition wall”. Rather, claim 9 recites a “second partition wall”. As currently recited, it is unclear what number of partition walls are required for anticipation or infringement of claim 10. For examination purposes, the recitation(s) of “third partition wall” will be construed as –additional partition wall—.
Claim 13 contains the following issues:
The claim recites “a fourth partition wall” without a corresponding “second partition wall” or “third partition wall”. It should be noted that claim 1 (from which claim 13 depends) only recites a “partition wall”. Rather, claim 9 recites a “second partition wall” and claim 10 recites a “third partition wall”. As currently recited, it is unclear what number of partition walls are required for anticipation or infringement of claim 13. For examination purposes, the recitation(s) of “fourth partition wall” will be construed as –additional partition wall—.
Claim 19 contains the following issues:
The claim recites “a third partition wall” without a corresponding “second partition wall”. It should be noted that claim 15 (from which claim 19 depends) only recites a “partition wall”. As currently recited, it is unclear what number of partition walls are required for anticipation or infringement of claim 19. For examination purposes, the recitation(s) of “third partition wall” will be construed as –additional partition wall—.
Claim 20 contains the following issues:
The claim recites “a fourth partition wall” without a corresponding “second partition wall” or “third partition wall”. It should be noted that claim 15 (from which claim 20 depends) only recites a “partition wall”. As currently recited, it is unclear what number of partition walls are required for anticipation or infringement of claim 20. For examination purposes, the recitation(s) of “fourth partition wall” will be construed as –additional partition wall—.
Any remaining claims are rejected at least by virtue of their dependency.
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 1-5 and 7-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims (see Table 1 below) of three copending Applications, namely App. No. 18/824,119, App. No. 18/828,742, and App. No. 18/826,325 (reference applications). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application claims anticipate the subject matter of the instant claims (i.e., the reference claims are deemed to cover the subject matter of the instant claims). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The following table compares the claims of the instant application to the copending claims:
Instant Case:18/825,427
Copending App.:18/824,119(US 20250249398)
Copending App.:18/828,742(US 20250251156)
Copending App.:18/826,325(US 20250251146)
1
15, 18
16
1
2
16
1, 16
1
3
-
5
19
4
-
6
-
5
-
6
-
6
-
-
-
7
-
5
-
8
-
17
-
9
-
1
6
10
-
-
7
11
-
17
-
12
-
17
-
13
-
12
9, 10
14
-
12
12
15
15
18
-
16
-
18
-
17
-
18
-
18
-
-
-
19
-
-
-
20
-
-
-
Table 1: Instant Application Claims and Copending Application Claims
Allowable Subject Matter
Claims 1-9 and 15-18 appear allowable over the prior art. Claims 10-14 and 19-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action. As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The prior art, when taken as a whole, neither anticipates nor renders prima facie obvious the claimed invention as recited in at least claim 1. The closest prior art references of record appear to be Yoon (US 20190390862 A1), herein Yoon ‘862 and Yoon et al. (KR 20180065571 A), herein Yoon’571.
At best, Yoon ‘862 appears to suggest a dehumidifier (10) with a main body (100), a fan (300), a heat exchanger (200), and a drain tank (700). However, Yoon ‘862 fails to disclose a dehumidification module that includes a dehumidification member, as interpreted under § 112(f), or a vacuum pump. On the other hand, Yoon ‘571 appears to suggest a dehumidification module (100) that has similar hollow polymer membranes (120), but does not disclose any of the other claimed features. Absent impermissible hindsight, it is deemed one of ordinary skill in the art would have not modified the prior art to arrive at the claimed invention based on the current preponderance of the evidence.
It should also be noted that the intended purpose and operating principles of Yoon ‘862 and Yoon ‘571 require the specific arrangement of dehumidification components as disclosed and described therein. One of ordinary skill in the art would recognize that any modifications to the prior art to arrive at the claimed invention would be based on improper hindsight, and would render it inoperable for its intended purpose. Assuming arguendo, rearranging and/or replacing the heat exchangers, or adding additional membranes, would change the principles of operation thereof, since it would require completely redesigning the structure of the dehumidifier, most likely resulting in unexpected and/or unintended results, which is evidence against a prima facie case of obviousness. Thus, a preponderance of evidence supports the allowability of the claims over the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MIGUEL A DIAZ whose telephone number is (313)446-6587. The examiner can normally be reached Monday - Friday: 9:00 AM - 5:00 PM Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jianying C. Atkisson can be reached at (571) 270-7740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MIGUEL A DIAZ/Primary Examiner, Art Unit 3763
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