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.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 9-17 of U.S. Patent No. 12,163,709. Although the claims at issue are not identical, they are not patentably distinct from each other because the Patent claims anticipate the instant application claims (i.e., the Patent claims are narrower than the instant claims).
The following table shows which Patent claims correspond to the instant application claims:
Instant Application Claims
Patent Claims
1
1
2
2
3
3
4
4
5
5
6
9
7
10
8
11
9
12
10
13
11
14
12
15
13
16
14
17
Table 1: Comparison of Instant Claims with Patent Claims
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 1-14 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 1 contains the following issues:
The claim recites “an evaporator unit that is operated in a refrigeration mode” (in lines 17-18), despite already reciting “a first evaporator unit” and “an evaporator of the first evaporator unit” (in lines 2 and 10-11, respectively). The additional recitation of “an evaporator unit” appears to render the scope of the claim unclear, since one of ordinary skill in the art may not be able to readily ascertain how many “evaporator units” are required for anticipation or infringement. As currently recited, the claim can be ambiguously interpreted as: A) requiring two separate evaporator “units” (i.e., the evaporator unit and the first evaporator unit being distinct), or B) only requiring a single evaporator unit (i.e., the first evaporator unit and the evaporator unit being the same). For examination purposes, the recitation of “an evaporator unit” will be construed as –a different evaporator unit—.
Claim 2 contains the following issues:
The claim recites “a second evaporator unit” (in line 25), despite claim 1 already reciting “a first evaporator unit” and “an evaporator unit” (in lines 2 and 17, respectively). The additional recitation of “a second evaporator unit” in claim 2 appears to render the scope of the claim unclear, since one of ordinary skill in the art may not be able to readily ascertain how many “evaporator units” are required for anticipation or infringement. As currently recited, the claim can be ambiguously interpreted as: A) requiring three separate evaporator “units” (i.e., the evaporator unit, the first evaporator unit, and the second evaporator unit being distinct), or B) only requiring a two evaporator units (i.e., the first evaporator unit and the evaporator unit being the same, while the second evaporator unit is different). For examination purposes, the recitation of “a second evaporator unit is located downstream” will be construed as –the different evaporator unit is a second evaporator unit that is located downstream—.
Claim 4 contains the following issues:
The claim recites “a second evaporator unit” (in lines 11-12), despite claim 1 already reciting “a first evaporator unit” and “an evaporator unit” (in lines 2 and 17, respectively). The additional recitation of “a second evaporator unit” in claim 4 appears to render the scope of the claim unclear, since one of ordinary skill in the art may not be able to readily ascertain how many “evaporator units” are required for anticipation or infringement. As currently recited, the claim can be ambiguously interpreted as: A) requiring three separate evaporator “units” (i.e., the evaporator unit, the first evaporator unit, and the second evaporator unit being distinct), or B) only requiring a two evaporator units (i.e., the first evaporator unit and the evaporator unit being the same, while the second evaporator unit is different). For examination purposes, the recitation of “a second evaporator unit” will be construed as –the different evaporator unit—.
Claim 9 contains the following issues:
The claim recites “the second evaporator unit” (in line 2) without proper antecedent basis. It is unclear whether the second evaporator unit corresponds to the “evaporator unit that is operated in a refrigeration mode” recited in claim 8. For examination purposes, the recitation of “an evaporator unit” in line 8 of claim 8 will instead be construed as –a second evaporator unit—.
Any remaining claims are rejected at least by virtue of their dependency.
Allowable Subject Matter
Claims 1-14 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 closest prior art references of record include:
Newel et al. (US 20190368786 A1).
Ferretti et al. (US 20220205696 A1).
However, none of the above references appear to fully disclose, teach, or suggest the claimed invention as currently recited in at least claims 1 and 9. At best, Newel et al. suggests a refrigeration system (see at least fig. 1), comprising a gas cooler (2), a flash tank (6), a work recovery device (30) located downstream (via 31) from the gas cooler (2), a first evaporator unit (one of 12 or 22) located downstream from an outlet (bottom outlet) of the work recovery device (at 31), and a controller (see at least ¶¶ 11, 13, 14, 22-23, etc.) communicatively coupled to the work recovery device (30), wherein the flash tank (6) is configured to store refrigerant (15, 16); the gas cooler (2) is configured to receive the refrigerant (from 1; see arrows) and facilitate heat transfer from the received refrigerant, thereby cooling the refrigerant (¶ 34). However, Newel et al. does not appear to explicitly disclose the specific control algorithms claimed regarding the defrosting operation using the work recovery device. Likewise, Ferretti et al. appears to suggest a similar system (fig. 13) including a work recovery device (1324) used during defrosting (e.g., ¶ 31), but does not disclose all the claimed features recited in at least claims 1 and 9.
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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