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.
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. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-8, 10-11, 13-18 and 20 of U.S. Patent No. 12,163,709.
Claims 1-6 and 9-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-8 and 10-14 of copending Application No. 18/908,382 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the Patent and Copending claims anticipate the instant application claims:
Instant App. Claims
Patent Claims
Copending Claims
1
1
1
2
3
3
3
4
4
4
5
5
5
6
6
6
7
7
7
8
-
8
10
-
9
11
8
10
13
10
11
14
11
12
15
12
13
16
13
14
17
14
15
18
-
16
20
-
Table 1: Instant Claims Compared to Patent and Copending Claims
Claim Objections
The following claims are objected to because of informalities, wherein appropriate correction is required:
In claim 16: the recitation of “the a evaporator unit”, in the last line, should be amended to –an evaporator unit—, for grammatical purposes.
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.
Claims 1-3, 5-6, 9-11 and 13-14 are rejected under 35 U.S.C. 102(a) (1) as being anticipated by Newel et al. (US 20190368786 A1), herein Newel.
As per claim 1, Newel discloses a refrigeration system (100), comprising a gas cooler (2), a flash tank (6), a work recovery device (30) located downstream (via 31) from the gas cooler (2), and a controller (see at least ¶ 11) communicatively coupled to the work recovery device, wherein:
the flash tank (6) is configured to store refrigerant (15, 16);
the gas cooler (2) is configured to receive the refrigerant (via 1; see at least fig. 1) and facilitate heat transfer from the received refrigerant (¶ 34), thereby cooling the refrigerant;
the controller is configured to:
turn on (e.g., see at least ¶ 49) the work recovery device (30);
cause the work recovery device (30), while turned on, to:
receive (from 3), at a first inlet (top right inlet), a flow of refrigerant cooled by the gas cooler (2);
reduce a pressure (e.g., through at least friction) of the first flow of refrigerant (see arrows in fig. 1);
provide (to 4, 5), from a first outlet (bottom right outlet), the first flow of refrigerant to the flash tank (see arrows in fig. 1);
wherein the work recovery device (30) comprises one of a rotating device (33), or an expander (38).
As per claim 2, Newel discloses a refrigerant conduit (3) configured to allow the flow of refrigerant from the gas cooler (2) to the work recovery device (at 31), wherein the flow of refrigerant from the gas cooler (2) comprises vapor refrigerant (i.e., cooled gas).
As per claim 3, Newel discloses wherein the refrigerant provided to the gas cooler (2) is supplied (indirectly) from at least one of a first evaporator unit (12) or a second evaporator unit (22) operating in the refrigeration mode (see arrows in fig. 1).
As per claim 5, Newel discloses wherein the controller (see at least fig. 6) is further configured to at least partially open a first valve (4) to allow the flow of refrigerant from the gas cooler (2) to the work recovery device (at 31).
As per claim 6, Newel discloses wherein the controller is further configured to at least partially close (¶ 35) the first valve (4) to prevent the flow of refrigerant from the gas cooler (2) to the work recovery device (at 31).
As per claim 9, Newel discloses a method of operating a refrigeration system (100), the method comprising:
turning on a work recovery device (30);
causing the work recovery device (30), while turned on (see at least figs. 1-2), to:
receive (from 3), at a first inlet (top right inlet of 31), a flow of refrigerant (see arrows) cooled by a gas cooler (2);
reduce a pressure (e.g., via at least friction) of the first flow of refrigerant (from 3); and
provide (to 4, 5), from a first outlet (bottom right outlet of 31), the first flow of refrigerant to a flash tank (6);
wherein the work recovery device (30) comprises one of a rotating device (33), or an expander (38).
As per claim 10, Newel discloses causing the flow of the refrigerant (via 3) from the gas cooler (2) to the work recovery device (at 31), wherein the refrigerant from the gas cooler (2) comprises vapor refrigerant (i.e., cooled gas).
As per claim 11, Newel discloses wherein the refrigerant provided to the gas cooler (2) is supplied (indirectly) from at least one of a first evaporator unit (12) or a second evaporator unit (22) operating in the refrigeration mode (see arrows in at least figs. 1-2).
As per claim 13, Newel discloses at least partially opening a first valve (4) to allow the flow of refrigerant from the gas cooler (2) to the work recovery device (at 31).
As per claim 14, Newel discloses at least partially closing (e.g., ¶ 35) the first valve (4) to prevent the flow of refrigerant from the gas cooler (2) to the work recovery device (at 31).
Allowable Subject Matter
Claims 4, 7-8, 12 and 15-16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. 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 the aforementioned claims. There are no prior art teachings that would otherwise supplement or substitute the teachings of Newel to arrive at the claimed invention. The prior art fails to teach the specific controller configurations claimed therein.
It should also be noted that the intended purpose and operating principles of Newel require the specific arrangement of components as disclosed and described therein. One of ordinary skill in the art would recognize that any modifications to Newel to arrive at the claimed invention would be based on improper hindsight, and would render it inoperable for its intended purpose. Assuming arguendo, rearranging the fluid lines and reconfiguring the operating parameters of the system would change the principles of operation thereof, since it would require completely redesigning the structure of cooling circuit as a whole, 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.
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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