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 .
The claims received 7/29/2026 are entered.
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.
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Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8-9 of U.S. Patent No. 12,130,027 (hereinafter ‘027) in view of Stack (US 1,90,357). Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims 1, 8, and 9 include all features of instant claim 1 except for an alignment tab. However Stack provides for an alignment tab (13) of a water inlet tube (4). As the water inlet tube of ‘027 is claimed as within the condenser coil the alignment tab, when provided, is also within the internal volume of the first portion of the condenser coil. It would have been obvious to one of ordinary skill in the art to have provided ‘027 with the alignment tab of Stack in order to support to the water tube. Moreover as the alignment of the water tube is maintained the alignment is maintained relative to other structures therein, such as the condenser.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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(s) 1-7, 13, and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wessa (US 4,370,864), in view of Amthor, Jr. (US 4,173,872), and in view of Stack (US 1,790,357).
Regarding claim 1, Wessa discloses a condenser assembly comprising:
a water heater (10),
a condenser coil (16) within the water heater and having:
a first portion configured to fluidly communicate with a first refrigerant line of a heat pump (from 22), the first portion having a plurality of windings defining an internal volume; and
a second portion (24) configured to fluidly communicate with a second refrigerant line of the heat pump; and
a water inlet tube (32) disposed within the internal volume of the first portion of the condenser coil.
Wessa lacks a base with a threaded connection as described. Amthor discloses a heat pump water heater having a base with threaded connections (8:31; alternatively figures 3 and 5 show bases having threaded fasteners, i.e. bolts; further figure 10 provides for a base having threads) configured to detachably attach to a receiving port of a water heater, wherein the base comprises threads configured to mate with threads of the receiving port. It would have been obvious to one of ordinary skill in the art to have provided Wessa with the base and threads of Amthor in order to provide a secure connection of the heat exchanger to water heater.
Wessa lacks an alignment tab. Stack discloses a water heater having a water inlet tube (4) and an alignment tab (13) configured to hold the water inlet ube in a predetermined position. It would have been obvious to one of ordinary skill in the art to have provided Wessa with an alignment tab as taught by Stack, whereby as the water inlet tube is within the first portion of the condenser coil the alignment tab connected to the water inlet tube is also within the first portion of the condenser coil, in order to provide support to the water inlet tube.
Regarding claim 2, Wessa further discloses the plurality of windings of the first portion form a helix (helix shape shown in figure 1).
Regarding claim 3, Wessa further discloses the condenser coil is configured to sequentially pass refrigerant through the first portion and the second portion (the refrigeration cycle is a closed loop, all components are in sequence).
Regarding claim 4, Wessa further discloses the condenser coil is configured to sequentially pass refrigerant through the second portion and the first portion (the refrigeration cycle is a closed loop, all components are in sequence).
Regarding claim 5, Wessa discloses the second portion (24) comprises a substantially straight section.
Regarding claim 6, Wessa further discloses the second portion (24) extends through the internal volume of the first portion (where the first portion is the helical coil portion).
Regarding claim 7, Wessa discloses the second portion (24) extends outside the internal volume of the first portion (24 continues to extend vertically above and outside of the helical first portion).
Regarding claim 13, Wessa and Stack further discloses the alignment tab (provided by Stack) is disposed between the water inlet tube and the condenser coil (the alignment tab as provided by Stack extends from the tank wall to the water inlet tube in order to support the water inlet tube, as the water inlet tube is within the condenser coil the alignment tab passes through the helix shape of the condenser coil and is thus between the condenser coil and water inlet tube).
Regarding claim 17, Wessa discloses a water heater comprising:
a tank (12); and
a heat pump comprising an evaporator (3:9), a condenser assembly (16), and a plurality of refrigerant lines, the condenser assembly including a condenser coil comprising:
a first portion configured to fluidly communicate with a first refrigerant line of the plurality of refrigerant lines, the first portion (i) having a plurality of windings defining an internal volume and (ii) being configured to at least partially extend into an internal volume of the tank (first portion of coil 16 includes helical coil as shown in claim 1); and
a second portion (24) configured to fluidly communicate with a second refrigerant line of the plurality of refrigerant lines and to at least partially extend into an internal volume of the tank; and
a water inlet tube (32) disposed within the internal volume of the first portion of the condenser coil.
Wessa lacks an alignment tab. Stack discloses a water heater having a water inlet tube (4) and an alignment tab (13) configured to hold the water inlet ube in a predetermined position. It would have been obvious to one of ordinary skill in the art to have provided Wessa with an alignment tab as taught by Stack, whereby as the water inlet tube is within the first portion of the condenser coil the alignment tab connected to the water inlet tube is also within the first portion of the condenser coil, in order to provide support to the water inlet tube.
Wessa is silent concerning other components of the heat pump circuit. Wessa lacks a base as claimed. Amthor discloses a heat pump water heater including a compressor, evaporator, expansion device (3:26-35), and a condenser having a base with threaded connections (8:31; alternatively figures 3 and 5 show bases having threaded fasteners, i.e. bolts; further figure 10 provides for a base having threads) configured to detachably attach to a receiving port of a water heater, wherein the base comprises threads configured to mate with threads of the receiving port. It would have been obvious to one of ordinary skill in the art to have provided Wessa with the base and threads of Amthor in order to provide a secure connection of the heat exchanger to water heater.
Further regarding an expansion valve. Amthor uses the term “expansion device” rather than valve. In the previous office action on the merits the Examiner took Official Notice that an expansion valve is one well known type of expansion device. In his subsequent reply to this office action, the applicant did not traverse Examiner’s assertion of Official Notice with regard to these elements. Therefore the Official Notice statements by the Examiner regarding these elements are now taken as admitted prior art by Applicant. See MPEP §2144.03(C). It would have been obvious to one of ordinary skill in the art to have provided Wessa with an expansion valve in order to allow adjustment of the system.
Regarding claim 18, Wessa and Amthor further disclose receiving port (37 of Amthor), wherein the condenser assembly is configured to detachably attach to the receiving port.
Regarding claim 19, Wessa and Amthor further disclose the receiving port is located in a sidewall of the water heater (shown in figure 1 of Amthor; notably Amthor illustrates that a top mount and side mount are known alternatives in comparison of figures 1 and 2).
Regarding claim 20, Wessa further discloses the water inlet tube (32) is configured to discharge incoming water into the internal volume of the first portion.
Claim(s) 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wessa (US 4,370,864), in view of Amthor, Jr. (US 4,173,872), in view of Stack (US 1,790,357), and in further view of Herlt et al (DE3422806; copy provided by applicant in parent application 17530945).
Regarding claim 8, Wessa as modified discloses the condenser assembly of 1laim 1, wherein the water inlet tube (32) enters the water heater at the same location as the condenser but is silent concerning the base having a water inlet tube aperture. Herlt discloses a water heater having a base connection for a heat exchanger (5 and 13) wherein the base comprises an aperture (8) for a water connection. It would have been obvious to one of ordinary skill in the art to have provided Wessa with a water connection within the base in order to provide plural connections in a single assembly thereby simplifying overall construction.
Regarding claim 9, Wessa discloses wherein the water inlet tube (32) extends through the internal volume of the first portion (shown in figure 1 the water inlet tube is within the helical first portion).
Regarding claim 10, Wessa discloses the water inlet tube has a length that is less than or equal to a length of the condenser coil (as viewed in figure 1 of Wessa the overall length of the condenser and water inlet tube are the same; alternatively as the condenser is coiled the length of the line itself is substantially longer than the straight extension of the water inlet tube).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wessa (US 4,370,864), in view of Amthor, Jr. (US 4,173,872), in view of Stack (US 1,790,357), in view of Herlt et al (DE3422806; copy provided by applicant in parent application 17530945), and in further view of Henkle (US 743,719).
Regarding claim 11, Wessa, as modified, discloses the condenser assembly of claim 8, but lacks apertures along the length of the water inlet tube. Henkle discloses a water heater wherein the water inlet tube (e) has a plurality of apertures (e4) disposed along at least a portion of a length of the water inlet tube. It would have been obvious to one of ordinary skill in the art to have provided Wessa with apertures as taught by Henkle in order to agitate the water within the tank thereby enhancing heat exchange.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wessa (US 4,370,864), in view of Amthor, Jr. (US 4,173,872), in view of Stack (US 1,790,357), in view of Herlt et al (DE3422806; copy provided by applicant in parent application 17530945),in view of Henkle (US 743,719), and in further view of York et al (US 7,203,418)
Regarding claim 12, Wessa and Henkle disclose the water inlet tube but are silent concerning a capped end. Henkle discloses that water is discharged through the apertures (e4; 2:20-23) thus it is presumed that flow does not egress through the end of tube (e). To this end, York is provided. York discloses that it is known to cap a perforated tube (cap 58shown in at least figure 4). It would have been obvious to one of ordinary skill in the art to have provided a cap to the water inlet tube in order to enhance the performance of the perforations/apertures.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wessa (US 4,370,864), in view of Amthor, Jr. (US 4,173,872), in view of Stack (US 1,790,357), and in view of Pussell (US 2009/0266509).
Regarding claim 14, Wessa, as modified, discloses the condenser assembly of claim 1, but lacks inner and outer condenser walls. Pussell discloses a water heater wherein the condenser coil comprises an inner wall (136) and an outer wall (134), the inner and outer walls forming an air gap therebetween ([0043]). It would have been obvious to one of ordinary skill in the art to have provided Wessa with the double wall construction as taught by Pussell in order to provide a pathway for leaked refrigerant and meet safety regulations ([0043]).
Claim(s) 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wessa (US 4,370,864), in view of Stack (US 1,790,357), in view of Compton (US 2014/0363146), and further evidenced by Amthor, Jr. (US 4,173,872).
Regarding claim 15, Wessa discloses a water heater comprising:
a tank (12);
a first condenser assembly, the first condenser assembly comprising a condenser coil (16) and a water inlet tube (32).
Wessa lacks an alignment tab. Stack discloses a water heater having a water inlet tube (4) and an alignment tab (13) configured to hold the water inlet ube in a predetermined position. It would have been obvious to one of ordinary skill in the art to have provided Wessa with an alignment tab as taught by Stack, whereby as the water inlet tube is within the first portion of the condenser coil the alignment tab connected to the water inlet tube is also within the first portion of the condenser coil, in order to provide support to the water inlet tube.
Wessa lacks a second condenser at a second height.
Compton discloses a water heater comprising:
a tank (21);
a first heat exchanger assembly disposed at a first height in the tank; and
a second heat exchanger assembly disposed at a second height in the tank that is different than the first height (figure 3 shows two heat exchangers at different heights).
It would have been obvious to one of ordinary skill in the art to have provided Wessa with a second heat exchanger at a second height in order to provide a second source of heat ([0029] of Compton discusses a second source of heat). Moreover it follows to similarly provide the second heat exchanger as a condenser as is the first heat exchanger of Wessa in order to achieve a high COP.
Further as Wessa shows the condenser extends from a top wall while Compton extends the heat exchangers from two heights as a sidewall. Amthor evidences that a top mount and side mount are known alternatives in comparison of figures 1 and 2.
Regarding claim 16, Wessa and Compton disclose each of the first condenser assembly and the second condenser assembly comprise a base configured to detachably attach to a receiving port of the water heater, wherein the base comprises threads configured to mate with threads of the receiving port (screw in arrangement of the heat exchanger shown in figures 1-3 of Compton).
Response to Arguments
Applicant's arguments filed 7/29/2026 have been fully considered but they are not persuasive.
The feature of an alignment tab has been added to claims 1, 15, and 17. Stack is relied upon to teach an alignment tab for supporting a water inlet tube. As the tab extends from a sidewall and connects to and supports the water inlet tube that is within the condenser coil (as shown in Wessa) that the tab is also within the condenser coil.
The examiner also notes that although applicant appears to rely on the same argument for claim 1 as for claim 15; claim 15 does not recite that the alignment tab is within the internal volume of the condenser coil.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Discussion of additional relevant prior art is found in the file wrapper of parent application 17/530,945.
Lindstrand et al (US 9,179,526) alignment features at 14a
Currey et al (US 10,288,316) alignment features 180
Eising (US 3,726,475) alignment features at 9
Brandel (US 5,671,771) alignment features at 100 and 104
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to 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.
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/CHRISTOPHER R ZERPHEY/Primary Examiner, Art Unit 3799
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