NON-FINAL OFFICE 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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11 October, 2024 and 18 April, 2025 are being considered by the examiner.
Specification
The amendment filed 11 October, 2024, with regards the amendments to page 1 of the amended specification to incorporates Cross-Reference to Related Application section, is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
MPEP 608.01(p) – I(B) states,
“ As a safeguard against the omission of a portion of a prior application for which priority is claimed under 35 U.S.C. 119(a)-(d) or (f), or for which benefit is claimed under 35 U.S.C. 119(e) or 120, applicant may include a statement at the time of filing of the later application incorporating by reference the prior application. See MPEP § 201.06(c) and 211 et seq. where domestic benefit is claimed. See MPEP §§ 213 - 216 where foreign priority is claimed. See MPEP § 217 regarding 37 CFR 1.57(b). The inclusion of such an incorporation by reference statement in the later-filed application will permit applicant to include subject matter from the prior application into the later-filed application without the subject matter being considered as new matter. For the incorporation by reference to be effective as a proper safeguard, the incorporation by reference statement must be filed at the time of filing of the later-filed application. An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a) ). Although, as discussed above, an incorporation by reference statement can be used as a safeguard against an omission of a portion of a prior application for which priority is claimed under 35 U.S.C. 119(a)-(d) or (f), or for which benefit is claimed under 35 U.S.C. 119(e) or 120, it should be noted that an incorporation by reference statement will not satisfy the specific reference requirement of 35 U.S.C. 119(e) or 120 or 37 CFR 1.78. See Droplets, Inc. v. E*TRADE Bank, 887 F.3d 1309, 126 USPQ2d 317 (Fed. Cir. 2018).”
, and wherein MPEP 1893.03(b) states,
“An international application designating the U.S. has two stages (international and national) with the filing date being the same in both stages. Often the date of entry into the national stage is confused with the filing date. It should be borne in mind that the filing date of the international stage application is also the filing date for the national stage application. Specifically, 35 U.S.C. 363 provides that
An international application designating the United States shall have the effect, from its international filing date under Article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office.
Similarly, PCT Article 11(3) provides that
...an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.”
As such, the inclusion of the recitation,
PNG
media_image1.png
390
826
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Greyscale
,is new matter, as the recitation to include the incorporation by reference of the applications was made after (i.e., 11 October, 2024) the effective filing date of the instant application (i.e., 15 March, 2023).
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-3 are rejected under 35 U.S.C. 101 because:
The claimed inventions are directed to abstract ideas.
Following the flow chart within MPEP § 2106, at eligibility step 1, claims 1-2 are directed to an apparatus.
Looking at step 2A prong one, under BRI, and when considered as a whole, the claims are directed to an abstract idea. They are directed to mathematical concepts(MPEP § 2106.04(a)(2)-I) and mental process(MPEP § 2106.04(a)(2)-III) groupings of abstract ideas, as the limitations, for example, of “A temperature control apparatus that controls, through heat exchange between a medium subject to temperature control and a heat medium in a heat exchanger, a temperature
T
H
-
o
u
t
of the medium subject to temperature control discharged from the heat exchanger, wherein a temperature SV is adjusted based on expression (1):
T
H
-
i
n
-
R
=
E
×
(
T
H
-
i
n
-
S
V
)
[in expression (1),
T
H
-
i
n
denotes a temperature of the medium subject to temperature control supplied to the heat exchanger, R denotes a target temperature of the medium subject to temperature control discharged from the heat exchanger, E denotes a heat exchange rate of the heat exchanger, and SV denotes a temperature of the heat medium supplied to the heat exchanger]. ”, as drafted, under its BRI, covers mathematical relationships, mathematical formulas or equations, and mathematical calculations (stated formula provided by expression (1); MPEP § 2106.04(a)(2)-I) and performance of the limitation in the mind (“temperature control apparatus that controls based on the stated expression (1)”; MPEP § 2106.04(a)(2) – III). Such that nothing in the claim elements precludes the apparatus from practically being performed in the mind by performing the calculations, in addition to precluding the claim elements from being anything more than a mathematical concept expressed by the expression (1).
Looking at step 2A prong two, the claims do not provide additional elements to determine whether they integrate the exception into a practical application of the exception. Looking at page 2 of the substitute specification (filed 11 October, 2024), it is provided that “The present disclosure addresses the issue described above, and a purpose thereof is to provide a technology of improving the accuracy of temperature control”, but the claims fail to provide any level of details for any of the steps or application beyond adjusting a temperature, SV, based on an expression set forth in expression (1) that would enable the apparatus performing the mathematical calculation to be more accurate. It will also be noted, as explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. Including the transfer of heat amongst medium subject to temperature control and a heat medium in a heat exchanger merely confines the abstract idea to no more than the application of a heat exchanger, as initially claimed, and thereby, fails to add an inventive concept to the claims. See MPEP § 2106.05(h).
More so, another consideration when determining whether a claim integrates a judicial exception into a practical application in Step 2A Prong Two or recites significantly more than a judicial exception in Step 2B is whether the additional elements amount to more than a recitation of the words "apply it" (or an equivalent) or are more than mere instructions to implement an abstract idea or other exception on a computer. As explained by the Supreme Court, in order to make a claim directed to a judicial exception patent-eligible, the additional element or combination of elements must do "‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’". Alice Corp. v. CLS Bank, 573 U.S. 208, 221, 110 USPQ2d 1976, 1982-83 (2014) (quoting Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984. For claim limitations that do not amount to more than a recitation of the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, examiners should explain why they do not meaningfully limit the claim in an eligibility rejection. A claim having broad applicability across many fields of endeavor may not provide meaningful limitations that integrate a judicial exception into a practical application or amount to significantly more. For instance, a claim that generically recites an effect of the judicial exception or claims every mode of accomplishing that effect, amounts to a claim that is merely adding the words "apply it" to the judicial exception. See Internet Patents Corporation v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1418 (Fed. Cir. 2015). The addition of the limitations directed to a heat exchanger, as presented within independent claim 1, and the dependents thereof, is merely “apply[ing] it” which does not provide integration into a practical application or significantly more than the abstract idea. See MPEP § 2106.05(f).
Looking at step 2B, the claims do not appear to provide additional elements, such that when determined whether they amount to an inventive concept, amounts to significantly more than the judicial exception itself. Particularly, “A temperature control apparatus that controls, through heat exchange between a medium subject to temperature control and a heat medium in a heat exchanger, a temperature
T
H
-
o
u
t
of the medium subject to temperature control discharged from the heat exchanger, wherein a temperature SV is adjusted based on expression (1):
T
H
-
i
n
-
R
=
E
×
(
T
H
-
i
n
-
S
V
)
[in expression (1),
T
H
-
i
n
denotes a temperature of the medium subject to temperature control supplied to the heat exchanger, R denotes a target temperature of the medium subject to temperature control discharged from the heat exchanger, E denotes a heat exchange rate of the heat exchanger, and SV denotes a temperature of the heat medium supplied to the heat exchanger].”, is merely insignificant extra-solution activity. It provides mere data gathering (i.e., inputs to be applied within the expression(1)). MPEP § 2106.05(g). More so, providing “, through heat exchange between a medium subject to temperature control and a heat medium in a heat exchanger” is well known extra-solution activity, wherein heat exchangers are well-known to operate based on transfer of heat between working mediums to affects thermal changes. MPEP § 2106.05(g) and MPEP § 2106.05(h).
Furthermore, dependent claim 2 are merely further defining the abstract idea by reliance on abstract mathematical calculations (i.e., mathematical relationships, mathematical formulas or equations, and mathematical calculations and mental processes carrying out said mathematical relationships, mathematical formulas or equations, and mathematical calculations with extra-solution activity) of claim 1, such that the dependent claim does not amount to significantly more than the judicial exception and does not integrate the abstract idea and extra-solution activities into a practical application.
Following the flow chart within MPEP § 2106, at eligibility step 1, claim 3 is directed to a method.
Looking at step 2A prong one, under BRI, and when considered as a whole, the claims are directed to an abstract idea. They are directed to mathematical concepts(MPEP § 2106.04(a)(2)-I) and mental process(MPEP § 2106.04(a)(2)-III) groupings of abstract ideas, as the limitations, for example, of “A temperature control method that controls, through heat exchange between a medium subject to temperature control and a heat medium in a heat exchanger, a temperature
T
H
-
o
u
t
of the medium subject to temperature control discharged from the heat exchanger, the method includes adjusting a temperature SV based on expression (1):
T
H
-
i
n
-
R
=
E
×
(
T
H
-
i
n
-
S
V
)
[in expression (1),
T
H
-
i
n
denotes a temperature of the medium subject to temperature control supplied to the heat exchanger, R denotes a target temperature of the medium subject to temperature control discharged from the heat exchanger, E denotes a heat exchange rate of the heat exchanger, and SV denotes a temperature of the heat medium supplied to the heat exchanger]. ”, as drafted, under its BRI, covers mathematical relationships, mathematical formulas or equations, and mathematical calculations (stated formula provided by expression (1); MPEP § 2106.04(a)(2)-I) and performance of the limitation in the mind (“temperature control apparatus that controls based on the stated expression (1)”; MPEP § 2106.04(a)(2) – III). Such that nothing in the claim elements precludes the method from practically being performed in the mind by performing the calculations, in addition to precluding the claim elements from being anything more than a mathematical concept expressed by the expression (1).
Looking at step 2A prong two, the claims do not provide additional elements to determine whether they integrate the exception into a practical application of the exception. Looking at page 2 of the substitute specification (filed 11 October, 2024), it is provided that “The present disclosure addresses the issue described above, and a purpose thereof is to provide a technology of improving the accuracy of temperature control”, but the claims fail to provide any level of details for any of the steps or application beyond adjusting a temperature, SV, based on an expression set forth in expression (1) that would enable the method performing the mathematical calculation to be more accurate. It will also be noted, as explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. Including the transfer of heat amongst medium subject to temperature control and a heat medium in a heat exchanger merely confines the abstract idea to no more than the application of a heat exchanger, as initially claimed, and thereby, fails to add an inventive concept to the claims. See MPEP §2106.05(h).
More so, another consideration when determining whether a claim integrates a judicial exception into a practical application in Step 2A Prong Two or recites significantly more than a judicial exception in Step 2B is whether the additional elements amount to more than a recitation of the words "apply it" (or an equivalent) or are more than mere instructions to implement an abstract idea or other exception on a computer. As explained by the Supreme Court, in order to make a claim directed to a judicial exception patent-eligible, the additional element or combination of elements must do "‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’". Alice Corp. v. CLS Bank, 573 U.S. 208, 221, 110 USPQ2d 1976, 1982-83 (2014) (quoting Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984. For claim limitations that do not amount to more than a recitation of the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, examiners should explain why they do not meaningfully limit the claim in an eligibility rejection. A claim having broad applicability across many fields of endeavor may not provide meaningful limitations that integrate a judicial exception into a practical application or amount to significantly more. For instance, a claim that generically recites an effect of the judicial exception or claims every mode of accomplishing that effect, amounts to a claim that is merely adding the words "apply it" to the judicial exception. See Internet Patents Corporation v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1418 (Fed. Cir. 2015). The addition of the limitations directed to a heat exchanger, as presented within independent claim 3, is merely “apply[ing] it” which does not provide integration into a practical application or significantly more than the abstract idea. See MPEP § 2106.05(f).
Looking at step 2B, the claims do not appear to provide additional elements, such that when determined whether they amount to an inventive concept, amounts to significantly more than the judicial exception itself. Particularly, “A temperature control method that controls, through heat exchange between a medium subject to temperature control and a heat medium in a heat exchanger, a temperature
T
H
-
o
u
t
of the medium subject to temperature control discharged from the heat exchanger, the method includes adjusting a temperature SV based on expression (1):
T
H
-
i
n
-
R
=
E
×
(
T
H
-
i
n
-
S
V
)
[in expression (1),
T
H
-
i
n
denotes a temperature of the medium subject to temperature control supplied to the heat exchanger, R denotes a target temperature of the medium subject to temperature control discharged from the heat exchanger, E denotes a heat exchange rate of the heat exchanger, and SV denotes a temperature of the heat medium supplied to the heat exchanger].”, is merely insignificant extra-solution activity. It provides mere data gathering (i.e., inputs to be applied within the expression(1)). MPEP § 2106.05(g). More so, providing “, through heat exchange between a medium subject to temperature control and a heat medium in a heat exchanger” is well known extra-solution activity, wherein heat exchangers are well-known to operate based on transfer of heat between working mediums to affects thermal changes. MPEP § 2106.05(g) and MPEP § 2106.05(h).
For these reasons, presented above with analysis, claims 1-3 are not directed to patent-eligible subject matter.
Claim Rejections - 35 USC § 102
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) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by ANONYMOUS (NPL Reference 1 cited on IDS filed 18 April, 2025; see NPL Reference 1 provided by Applicant on 18 April, 2025).
As to claim 1, ANONYMOUS discloses a temperature control apparatus that controls, through heat exchange between a medium subject to temperature control and a heat medium in a heat exchanger (pg. 1 – applicable to heat exchangers with hot and cold fluids), a temperature
T
H
-
o
u
t
of the medium subject to temperature control discharged from the heat exchanger( pg. 2 of ANONYMOUS, element
T
h
,
o
designating the outlet temperature of the hot fluid from the heat exchanger within expression
q
=
C
h
T
h
,
i
-
T
h
,
o
=
C
c
(
T
c
,
o
-
T
c
,
i
)
, wherein a temperature SV is adjusted based on
expression (1):
T
H
-
i
n
-
R
=
E
×
(
T
H
-
i
n
-
S
V
)
(based on the input of
q
m
a
x
=
ϵ
C
m
i
n
T
h
,
i
-
T
c
,
i
, at pg. 2 of ANONYMOUS, into equation
q
=
C
h
T
h
,
i
-
T
h
,
o
=
C
c
(
T
c
,
o
-
T
c
,
i
)
, to obtain
C
h
T
h
,
i
-
T
h
,
o
=
ϵ
C
m
i
n
T
h
,
i
-
T
c
,
i
o
r
T
h
,
i
-
T
h
,
o
=
ϵ
C
m
i
n
C
h
T
h
,
i
-
T
c
,
i
)
[in expression (1),
T
H
-
i
n
denotes a temperature of the medium subject to temperature control supplied to the heat exchanger(element
T
h
,
i
from the above equation) , R denotes a target temperature of the medium subject to temperature control discharged from the heat exchanger(element
T
h
,
o
from the above equation), E denotes a heat exchange rate of the heat exchanger (element
ϵ
C
m
i
n
C
h
o
r
ϵ
C
m
i
n
from the above equation) , and SV denotes a temperature of the heat medium supplied to the heat exchanger (element
T
c
,
i
from the above equation)].
As to claim 2, ANONYMOUS discloses wherein the apparatus is capable of providing the temperature
T
H
-
o
u
t
is controlled to be in a range higher than the target temperature R-0.1°C and lower than the target temperature R+0.1°C by adjusting the temperature SV, as the limitation is based on the manner of operation of the apparatus performing the calculation. See MPEP § 2114 – II ("[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) ).
As to claim 3, ANONYMOUS discloses a temperature control method that controls, through heat exchange between a medium subject to temperature control and a heat medium in a heat exchanger (pg. 1 – applicable to heat exchangers with hot and cold fluids), a temperature
T
H
-
o
u
t
of the medium subject to temperature control discharged from the heat exchanger( pg. 2 of ANONYMOUS, element
T
h
,
o
designating the outlet temperature of the hot fluid from the heat exchanger within expression
q
=
C
h
T
h
,
i
-
T
h
,
o
=
C
c
(
T
c
,
o
-
T
c
,
i
)
,
the method including adjusting a temperature SV based on
expression (1):
T
H
-
i
n
-
R
=
E
×
(
T
H
-
i
n
-
S
V
)
(based on the input of
q
m
a
x
=
ϵ
C
m
i
n
T
h
,
i
-
T
c
,
i
, at pg. 2 of ANONYMOUS, into equation
q
=
C
h
T
h
,
i
-
T
h
,
o
=
C
c
(
T
c
,
o
-
T
c
,
i
)
, to obtain
C
h
T
h
,
i
-
T
h
,
o
=
ϵ
C
m
i
n
T
h
,
i
-
T
c
,
i
o
r
T
h
,
i
-
T
h
,
o
=
ϵ
C
m
i
n
C
h
T
h
,
i
-
T
c
,
i
)
[in expression (1),
T
H
-
i
n
denotes a temperature of the medium subject to temperature control supplied to the heat exchanger(element
T
h
,
i
from the above equation) , R denotes a target temperature of the medium subject to temperature control discharged from the heat exchanger(element
T
h
,
o
from the above equation), E denotes a heat exchange rate of the heat exchanger (element
ϵ
C
m
i
n
C
h
o
r
ϵ
C
m
i
n
from the above equation) , and SV denotes a temperature of the heat medium supplied to the heat exchanger (element
T
c
,
i
from the above equation)].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNA M MARONEY whose telephone number is (571)272-8588. The examiner can normally be reached Monday - Friday 7AM to 4PM, EST.
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, Len Tran can be reached at (571) 272-1184. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNA M MARONEY/Primary Examiner, Art Unit 3763 9/1/2026
JENNA M. MARONEY
Primary Examiner
Art Unit 3763
Prosecution Insights