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 .
Response to Arguments
Applicant’s arguments, filed with respect to the drawing objection(s) have been fully considered and are persuasive in view of the amendment. The drawing objection(s) have been withdrawn, and the replacement sheets are entered.
Applicant’s arguments, filed with respect to the claim objection(s) have been fully considered and are persuasive in view of the amendment. The claim objection(s) have been withdrawn.
Applicant’s arguments, filed with respect to the rejection(s) under 35 U.S.C. 112(b) have been fully considered and are persuasive in view of the amendment. The rejection(s) under 35 U.S.C. 112(b) have been withdrawn.
Applicant's arguments filed with respect to the prior art rejections have been fully considered but they are not persuasive. In response to applicant's argument that Kim fails to meet added limitation “the liquid is to be supplied from the gas-liquid separator to the compressor in a compression process for cooling the gas from a superheated state to a saturated state”, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The compressor is capable of “to be supplied” “for […]”. Contrary to Applicant’s assertion, “to be supplied from” and “for […]” is not intended use, Examiner notes the recitation does not structurally define over the prior art. Instead of structurally limiting the apparatus, the added limitation recites the source, destination, timing, function, and thermodynamic result in the context of an intended use without positively reciting structure that overcomes the reference. Regarding Applicant’s argument comparing and contrasting the operation of Kim and Applicant’s invention, Examiner reminds Applicant “The absence of a disclosure relating to the function does not defeat the finding of anticipation since it is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schneller, 44 USPQ 2d 1429 (Fed Cir. 1997); In re Spada, 15 USPQ 2d 1655 (Fed. Cir. 1990); and In re Benner, 82 USPQ 49 (CCPA 1949).”: Examiner notes that Kim meets the structural recitations positively recited by the claim.
However, should Applicant, for example, recite a second inlet of the compressor fed from second gas-liquid separator #3 through pipe #18 that Applicant argues is present in Applicant’s specification, to provide structural context to “to be supplied from” and “for […]”, Examiner would likely find at least a portion of Applicant’s arguments concerning Kim persuasive. However, Applicant is encouraged to also review previously cited prior art to Hugh and newly cited reference to Kozasa prior to filing a response, as these references may be considered pertinent to such amendment pending further search and consideration, as teaching compressor receiving both liquid and gas.
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: heat recovery unit (i.e unit [generic placeholder] for heat recovery [functional language]) in claims 1 and 4-8.
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. In the case of heat recovery unit, heat exchanger is found to be the corresponding structure.
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 § 102
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 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) 1-4, and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. (KR 101895383: cited with English Translation).
Regarding claim 1, Kim et al. shows a gas compression device comprising:
a gas-liquid separator that evaporates liquid to generate gas and separates the gas from the liquid (see at least Figures 1 and 2, flash tank #20)
a heat recovery unit that supplies the liquid heated by a heat medium to the gas-liquid separator (see at least Figures 1 and 2, loop with condenser #16/evaporator #12/compressor #14; see also “A flash tank hot water supply passage 21 to which the hot water is supplied is connected to the upper portion of the flash tank 20 from the condenser 16.”);
a compressor that compresses the gas supplied from the gas-liquid separator (see at least Figures 1 and 2, steam compressor #40); and
a superheater that heats the gas by heat exchange between the heat medium supplied to the heat recovery unit and the gas supplied from the gas-liquid separator to the compressor (see at least Figures 1 and 2, superheater #30),
wherein the heat medium flows through the superheater and the heat recovery unit in this order (see at least Figures 1 and 2, flow is from line #15 through superheater #30 and down into condenser #16/evaporator #12/compressor #14);
and the liquid is to be supplied from the gas-liquid separator to the compressor in a compression process for cooling the gas from a superheated state to a saturated state (Examiner reminds Applicant of MPEP 2114: "[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) (The preamble of claim 1 recited that the apparatus was "for mixing flowing developer material" and the body of the claim recited "means for mixing ..., said mixing means being stationary and completely submerged in the developer material." The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.).: In this case “to be supplied […] for […]” does not recite further structure, i.e. additional inlet of the compressor, etc., and thus the reference is considered to meet the claim).
.
Regarding claim 2, Kim et al. further shows wherein the heat recovery unit is a heat exchanger that performs heat exchange between the heat medium supplied from the superheater (see at least Figures 1 and 2, via left side of condenser #16) and a liquid supplied from the gas-liquid separator to heat the liquid (see at least Figures 1 and 2, via right side of condenser #16, lines #23/#21).
Regarding claim 3, Kim et al. further shows wherein the superheater has a heat transfer area of heat exchange that is smaller than a heat transfer area of heat exchange in the heat recovery unit (see at least Figures 1 and 2, in view that the heat recovery unit encompasses #16/#12/#14 and that these components receive heat medium from superheater #30, superheater #30 may be considered to have a smaller area than the heat recovery unit).
Regarding claim 4, Kim et al. further shows further comprising:
a first pipe for supplying the heat medium to the superheater (see at least Figure 2, line #15);
a second pipe for supplying the heat medium from the superheater to the heat recovery unit (see at least Figure 2, line below superheater #30); and
a third pipe connecting the first pipe and the second pipe (see at least Figure 2, line #102).
Regarding claim 6, Kim et al. further shows wherein the superheater is disposed above the gas-liquid separator in a vertical direction (see at least “The flash tank hot water supply passage 21 through which the hot water heated by the condenser 16 flows is connected to the upper side of the flash tank 20.”; “In addition, a superheater steam supply valve 120 is installed in the superheater steam supply passage 31 connected to the upper portion of the flash tank 20.”: the steam is understood to flow upward into the superheater #30 and the water downward into the tank #20, thus the superheater #30 is above the flash tank #20).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al., as applied to claim 4, above, and further in view of Fu et al. (CN 110173796: cited with partial English Translation).
Regarding claim 5, Kim et al. further discloses further comprising:
a first temperature detector that detects a first temperature of the gas being supplied from the gas-liquid separator to the compressor through the superheater, the gas being close to an inlet of the superheater (see at least temperature sensor #210)
a second temperature detector that detects a second temperature of the gas close to an outlet of the superheater (see at least temperature sensor #220);
a heat medium flow regulating valve that regulates a flow rate of the heat medium flowing through the superheater (see at least valve #110); and
a controller that controls an opening degree of the heat medium flow regulating valve to cause a difference between a first temperature detected by the first temperature detector and a second temperature detected by the second temperature detector to be a predetermined temperature difference (see at least “At this time, the control unit 300 calculates the amount of heat to be supplied to the steam from the superheater 30 according to the temperature and pressure of the steam generated in the flash tank 20, and calculates the amount of refrigerant to be supplied to the superheater The opening ratio of the superheater refrigerant supply valve 110 can be controlled. The opening ratio of the superheater refrigerant supply valve 110 according to the temperature and pressure of the steam generated in the flash tank 20 may be set in advance.”). Examiner also reminds Applicant: "[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) (The preamble of claim 1 recited that the apparatus was "for mixing flowing developer material" and the body of the claim recited "means for mixing ..., said mixing means being stationary and completely submerged in the developer material." The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.).”: In this case, the sensors and controller(s) correspond to the structures claimed.).
Kim et al. does not explicitly disclose that the temperature sensors are at the inlet and outlet of the superheater.
However, it was old and well-known in the art to provide the temperature sensors at the inlet and outlet of the superheater, as evidenced by Kawagoe et al. (see paragraph [0040]).
It would, therefore, have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide the system of Kim et al. with the temperature sensors are at the inlet and outlet of the superheater, since as taught by Kawagoe et al. such provision was old and well-known in the art and would provide the predictable benefit of more accurately measuring the temperature of the fluid(s) associated with the superheater.
Claim(s) 7 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (KR 101895383: cited with English Translation).
Kim et al. discloses all the elements of claim 6, upon which claims 7 and 8 depend (see rejection(s) above).
Regarding claim 7, Kim et al. is silent regarding wherein a pipe through which the gas flows from the gas-liquid separator to the superheater is shorter than a pipe through which the gas flows from the superheater to the compressor.
There is no evidence of record that establishes that wherein a pipe through which the gas flows from the gas-liquid separator to the superheater is shorter than a pipe through which the gas flows from the superheater to the compressor would result in a difference in function of the Kim et al. system. Further, a person having ordinary skill in the art, being faced with modifying the system of Kim et al., would have reasonable expectation of success in making such a modification and it appears that the system would function as intended being given the claimed lengths. Lastly, Applicant has not disclosed that the claimed lengths solve any stated problem, indicating that merely that the pipe is shorter (see paragraphs [0019] and [0033]), and therefore there appears to be no criticality placed on the lengths as claimed such that they produce an unexpected result.
It would, therefore, have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide the system of Kim et al. with wherein a pipe through which the gas flows from the gas-liquid separator to the superheater is shorter than a pipe through which the gas flows from the superheater to the compressor as an obvious matter of design choice within the skill of the art.
Regarding claim 8, Kim et al. further discloses wherein the superheater is disposed adjacent to the gas-liquid separator (see at least “In addition, a superheater steam supply valve 120 is installed in the superheater steam supply passage 31 connected to the upper portion of the flash tank 20.: superheater #30 and flash tank #20 are adjacent and connected via passage #31).
Conclusion
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 TAVIA SULLENS whose telephone number is (571)272-3749. The examiner can normally be reached M-R 6:30-4:30 Eastern.
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/TAVIA SULLENS/Primary Examiner, Art Unit 3763
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