CTNF 18/912,831 CTNF 89375 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. 07-30-03-h AIA Claim Interpretation 07-30-03 AIA 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. 07-30-05 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. 07-30-06 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: liming portion (i.e. portion [generic placeholder] for limiting [functional language]) in claims 4 and 7-9. 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 limiting portion, the corresponding structure(s) are found on pages 2 and 8-9. 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 § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim (s) 1-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Song (KR 20000020855: cited by Applicant, English Translation provided by Examiner) in view of Wang (CN 216843275: cited by Applicant, English Translation provided by Examiner) . Regarding claim 1, Song discloses a chiller (see at least Figure 2) comprising: a compressor (see at least compressor #10); a condenser (see at least condenser #6); a discharge pipe configured to allow an outlet of the compressor to communicate with an inlet of the condenser (see at least pipe between compressor #10 and condenser #6 with valve #30); a rotating shaft fixed to an inner wall of the discharge pipe (see at least shaft #50); and a valve plate configured to rotate about the rotating shaft (see at least vanes/plates #42), Song does not disclose the valve plate having a counterweight, a rotatable stroke of the valve plate including swinging down to a first position to close the discharge pipe, and swinging up to a second position toward a side away from the outlet of the compressor to open the discharge pipe. Wang teaches another valve at the outlet of a compressor (see at least “the one-way valve is set on the exhaust port [of the compressor]”), the valve having a counterweight (see at least “the one-way valve 10 comprises a counterweight (not shown), set on the first rotating part 121”) and configured to rotate about a rotating shaft (see at least shaft #13), a rotatable stroke of the valve plate including swinging down to a first position to close the discharge pipe (see at least Figure 3, the first part #121 is rotated down to a closed position for the first and second parts #121/#122), and swinging up to a second position toward a side away from the outlet of the compressor to open the discharge pipe (see at least Figure 5, the first part #121 is rotated up such that the valve cover is away from blocking the outlet of the compressor to open the discharge pipe). 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 chiller of Song with the valve plate having a counterweight, a rotatable stroke of the valve plate including swinging down to a first position to close the discharge pipe, and swinging up to a second position toward a side away from the outlet of the compressor to open the discharge pipe since the simple substitution of one valve type (spring loaded, disclosed by Song) for another (counterweight, as taught by Wang) would have been obvious to one having ordinary skill in the art before the effective filing date of the invention, since the substitution of the valve type taught in Wang would have yielded predictable results, namely, making use of a known valve type that reduces issues with valve eccentricity (see KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)). Regarding claim 2, Song further discloses wherein the compressor is disposed above the condenser (see at least Figure 2, compressor #10 above condenser #6), the discharge pipe has a main body section extending in a vertical direction (see at least Figure 2, the pipe between compressor #10 and condenser #6 extends vertically) and a bent section formed by bending the main body section laterally (see at least Figures 3 and 4, the pipe has a round cross-section, and thus is bent laterally), the bent section communicates with the outlet located on a side surface of the compressor (see at least Figure 2, since the pipe extends between the compressor #10 and the condenser #6 and includes a round cross-section per Figures 3 and 4, the bent section communicates with the compressor outlet), and the rotating shaft and the valve plate are both disposed in the bent section (see at least Figures 3 and 4, shaft #50 and the vanes/plates #42 are also disposed in the bent section with the round cross-section). Regarding claim 3, Song further discloses wherein the bent section further includes a horizontal section extending horizontally, and the rotating shaft and the valve plate are disposed in the horizontal section (see at least Figure 3, hinge portions #34 are horizontally disposed: both shaft(s) #50 and vanes/plates #42 are disposed in the hinge portions). Regarding claim 4, Song further discloses further comprising: a limiting portion formed by the inner wall of the discharge pipe extending radially inward and disposed on a side of the valve plate closer to the outlet of the compressor, wherein an outer edge of the valve plate at the first position abuts against an inner edge of the limiting portion (see at least “The check valve 30 has a ring-shaped flange 36 having a stepped stopper 32 inside the circumferential surface and a hinge portion 34 provided radially on the wall surface of the stopper 32”: see also Figure 4a, the vanes/plates abut the stopper #32 in the closed position, and the stopper #32 is disposed on the side toward the compressor). Regarding claim 5, Song further discloses wherein the limiting portion is an integrally formed limiting plate having a complete outer edge and connected to the inner wall of the discharge pipe over entire circumferential range (see at least “The check valve 30 has a ring-shaped flange 36 having a stepped stopper 32 inside the circumferential surface”; see also Figure 3, #32). Regarding claim 6, Song in view of Wang does not disclose wherein the limiting portion includes a side plate formed by a side portion of the inner wall of the discharge pipe extending radially inward, and a bottom plate formed by a bottom portion of the inner wall of the discharge pipe extending radially inward, a top portion of the valve plate at the first position abuts against the inner wall of the discharge pipe, a side edge of the valve plate abuts against the side plate, and a lower edge of the valve plate abuts against the bottom plate. There is no evidence of record that establishes that wherein the limiting portion includes a side plate formed by a side portion of the inner wall of the discharge pipe extending radially inward, and a bottom plate formed by a bottom portion of the inner wall of the discharge pipe extending radially inward, a top portion of the valve plate at the first position abuts against the inner wall of the discharge pipe, a side edge of the valve plate abuts against the side plate, and a lower edge of the valve plate abuts against the bottom plate would result in a difference in function of the Song in view of Wang device. Further, a person having ordinary skill in the art, being faced with modifying the device of Song in view of Wang, would have a reasonable expectation of success in making such a modification. Lastly, applicant has not disclosed that the claimed arrangement solves any stated problem, stating that embodiments with continuous and discontinuous limiting portions are appropriate (see at least page 8, line 31 through page 9, line 14), and therefore there appears to be no criticality placed on the arrangement of the limiting portion, such that it produces an unexpected result. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the chiller of Song in view of Wang to have wherein the limiting portion includes a side plate formed by a side portion of the inner wall of the discharge pipe extending radially inward, and a bottom plate formed by a bottom portion of the inner wall of the discharge pipe extending radially inward, a top portion of the valve plate at the first position abuts against the inner wall of the discharge pipe, a side edge of the valve plate abuts against the side plate, and a lower edge of the valve plate abuts against the bottom plate as an obvious matter of design choice within the skill of the art. Regarding claim 7, Song is silent regarding wherein the limiting portion is elastic. Wang teaches wherein a limiting portion for a valve is elastic (see at least “In some embodiments, the first sealing table 115 and/or the second sealing table 116 is provided with a sealing pad (not shown), the valve plate 12 in the closed state of air tightness, preventing air leakage, so as to prevent airflow backflow.”). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide the valve of Song with wherein the limiting portion is elastic, as taught by Wang, to improve the valve of Song by preventing leakage of refrigerant gas through provision of a resilient seal. Regarding claim 8, Song in view of Wang is silent regarding wherein the limiting portion is fixed to the inner wall of the discharge pipe by welding. Examiner notes that “wherein the limiting portion is fixed to the inner wall of the discharge pipe by welding” is considered to be a product-by-process limitation, and since Song in view of Wang discloses all the structural limitations claimed, it would have been obvious to one having ordinary skill in the art to connect the limiting portion of Song in view of Wang “by welding”, since it has been held that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). > Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). Regarding claim 9, Song further discloses wherein the limiting portion is inclined at an angle of 0° to 3° with respect to the vertical direction (see at least “The check valve 30 has a ring-shaped flange 36 having a stepped stopper 32 inside the circumferential surface”; see also Figure 3, #32: stepped stopper #32 is horizontally disposed relative to the vertical direction and thus is inclined at zero degrees relative to the vertical direction). Regarding claim 10, Song further discloses wherein the compressor is a centrifugal compressor (see at least “the refrigerant from the turbo freezer 2 passed through the evaporator (8) by the centrifugal force generated by the rotation of the impeller 12 After being compressed to high temperature and high pressure”: the compressor #10 is a centrifugal compressor). Regarding claim 11, Song in view of Wang further discloses wherein the valve plate swings down to the first position only by self weight that provides a driving force (see at least rejection of claim 1, in view that the structure meets that claimed, the combination is considered to meet the claimed function (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) (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.).”). Regarding claim 12, Song in view of Wang wherein the counterweight has a weight of 1 kg to 15 kg. There is no evidence of record that establishes that wherein the counterweight has a weight of 1 kg to 15 kg would result in a difference in function of the Song in view of Wang device. Further, a person having ordinary skill in the art, being faced with modifying the device of Song in view of Wang, would have a reasonable expectation of success in making such a modification. Lastly, applicant has not disclosed that the claimed weight range solves any stated problem, stating that the weight range is optional (see at least page 3, line 4), and therefore there appears to be no criticality placed on the weight range, such that it produces an unexpected result. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the chiller of Song in view of Wang to have wherein the counterweight has a weight of 1 kg to 15 kg as an obvious matter of design choice within the skill of the art. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAVIA SULLENS whose telephone number is (571)272-3749. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /TAVIA SULLENS/Primary Examiner, Art Unit 3763 Application/Control Number: 18/912,831 Page 2 Art Unit: 3763 Application/Control Number: 18/912,831 Page 3 Art Unit: 3763 Application/Control Number: 18/912,831 Page 4 Art Unit: 3763 Application/Control Number: 18/912,831 Page 5 Art Unit: 3763 Application/Control Number: 18/912,831 Page 6 Art Unit: 3763 Application/Control Number: 18/912,831 Page 7 Art Unit: 3763 Application/Control Number: 18/912,831 Page 9 Art Unit: 3763 Application/Control Number: 18/912,831 Page 10 Art Unit: 3763 Application/Control Number: 18/912,831 Page 11 Art Unit: 3763 Application/Control Number: 18/912,831 Page 12 Art Unit: 3763
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