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 .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 21-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claims 21-28 recite “a method of selecting a metal of a discharge pipe of the compressor” that uses a specific refrigerant. Claims merely includes a step that further recites the same step of selecting the metal (and thus does not make the abstract idea any less abstract) or amount to no more than generally lining the use of the abstract idea to a particular technological environment or field of use because they are merely incidental or token additions to the claims that do not alter or affect how the process step is performed.
This judicial exception is not integrated into a practical application because the additional elements (discharge pipe, compressor and refrigerant) either alone or in combination, generally link the use of the above-identified abstract idea to a particular technological environment or field of use . More specifically, the additional elements of discharge pipe, compressor and refrigerant are generically recited notoriously known energy system elements which do not improve the functioning of the device, or any other technology or technical field. Nor do these above-identified additional elements serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above- identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Furthermore, the above-identified additional elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea. For at least these reasons, the abstract idea identified above in independent Claim 1 is not integrated into a practical application.
Moreover, the above-identified abstract idea is not integrated into a practical application under 2019 PEG because the claimed of a system merely implements the above-identified abstract idea (e.g., mental process and certain method of organizing human activity) using rules (instructions) executed by a computer/ mentally. In other words, these claims are merely directed to an abstract idea with additional generic elements which do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a well-known device. Additionally, Applicant's specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. That is, like Affinity Labs of Tex. v. DirecTV, LLC, the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution. Thus, for these additional reasons, the abstract idea identified above in independent Claim 1 (and their respective dependent claims) is not integrated into a practical application under the 2019 PEG.
Accordingly, the claims (and their respective dependent claims) are each directed to an abstract idea under 2019 PEG.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because use of metals in a compressors is notoriously known in the art. In fact, F04C29/12 is an area devoted to those structures. As most in the mechanical arts know, the use of metal in a compressors is a well-known way of producing discharge pipes.
The above-identified additional elements are generically claimed engine components which enable the above-identified abstract idea(s) to be conducted by performing the basic functions of automating mental tasks. The courts have recognized such computer functions as well understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, Versata Dev. Group, Inc. v. SAP Am. , Inc. , 793 F.3d 1306, 1334, 115 USPQ2d 1681 , 1701 (Fed. Cir.2015); and 0/P Techs. , 788 F.3d at 1363 , 115 USPQ2d at I 092-93.
The recitation of the above-identified additional limitations in Claims amounts to mere instructions to implement the abstract idea on a computer. Simply using a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an
abstract idea (e.g., a fundamental economic practice or mathematical equation) does not provide
significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201,
1207 (Fed. Cir. 2016) (cellular telephone); and TL/ Communications LLC v. AV Auto, LLC,
823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir.2016) (computer server and telephone
unit). Moreover, implementing an abstract idea on a generic computer, does not add significantly
more, similar to how the recitation of the computer in the claim in Alice amounted to mere
instructions to apply the abstract idea of intermediated settlement on a generic computer.
A claim that purports to improve computer capabilities or to improve an existing
technology may provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 83 7
F.3d 1299, l 314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir.2016); and Enflslt, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). However, a
technical explanation as to how to implement the invention should be present in the specification
for any assertion that the invention improves upon conventional functioning of a computer, or
upon conventional technology or technological processes. That is, the disclosure must provide
sufficient details such that one of ordinary skill in the art would recognize the claimed invention
as providing an improvement. Here, Applicant's specification does not include any discussion of
how the claimed invention provides a technical improvement realized by these claims over the
prior art or any explanation of a technical problem having an unconventional technical solution
that is expressed in these claims. Instead, as in Affinity Labs of Tex. v. DirecTV, LLC 83 8 F.3d
1253 , 1263-64, 120 USPQ2d 1201 , 1207-08 (Fed . Cir. 2016), the specification fails to provide
sufficient details regarding the manner in which the claimed invention accomplishes any
technical improvement or solution.
For at least the above reasons, the method is directed to applying an abstract idea (e.g.,
mental process or certain method of organizing human activity) on a general-purpose engine
without (i) improving the performance of the engine itself (as in McRO, Bascom and Enfish), or
(ii) providing a technical solution to a problem in a technical field (as in DOR). In other words,
claim does not provide meaningful limitations to transform the abstract idea into a patent eligible
application of the abstract idea such that these claims amount to significantly more than the
abstract idea itself.
Taking the additional elements individually and in combination, the additional elements
do not provide significantly more. Specifically, when viewed individually, the above-identified
additional elements in the claim do not add significantly more because they are simply an
attempt to limit the abstract idea to a particular technological environment. That is, neither the
general computer elements nor any other additional element adds meaningful limitations to the
abstract idea because these additional elements represent insignificant extra-solution activity.
When viewed as a combination, these above-identified additional elements simply instruct the
practitioner to implement the claimed functions with well-understood, routine and conventional
activity specified at a high level of generality in a particular technological environment As such,
there is no inventive concept sufficient to transform the claimed subject matter into a patent-
eligible application. As such, the above-identified additional elements, when viewed as whole,
do not provide meaningful limitations to transform the abstract idea into a patent eligible
application of the abstract idea such that the claims amount to significantly more than the
abstract idea itself. Thus, claims merely apply an abstract idea to a computer and do not (i)
improve the performance of the computer itself (as in Bascom and En fish), or (ii) provide a
technical solution to a problem in a technical field (as in DOR).
Therefore, none of the claims amounts to significantly more than the abstract idea itself.
Accordingly, Claims 21-28 are not patent eligible and rejected under 35 U.S.C. 101 as being directed to abstract ideas implemented on a generic computer in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. and 2019 PEG.
Similarly, claims 29-40 only comprises a composition of the refrigerant that is used in the compressor are also an idea inside of a mind or a computer and does not include any recitations that would make the abstract ideas of claims 21-28 respectively, amount to significantly more. Furthermore, there are no additional elements (method steps or structures) recited in the claims that would amount to significantly more than an abstract idea. As such, claims 29-40 are also not patent eligible and rejected under 35 U.S.C. 101 as being directed to abstract ideas implemented on a generic computer in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. and 2019 PEG.
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) 21-40 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2022-025202 to Yotsumoto et al . (US 2023/0167346 to Yotsumoto et al (Yotsumoto) has been used for translational purposes).
Regarding claim 21, Yotsumoto discloses a method of selecting a metal of a discharge pipe of a compressor using, as refrigerant, a composition that contains one or more of ethylene-based fluoroolefins, 2,3,3,3- tetrafluoropropene (HFO-1234yf), and 1,3,3,3-tetrafluoropropene (HFO-1234ze), the method including:
selecting the metal of the compressor using the composition as refrigerant such that the discharge pipe made of metal having a higher compressive strength than a discharge pipe of a compressor using R32 as refrigerant (one of ordinary skill in the art would recognize that the heat release of the claimed refrigerant would be higher than conventional refrigerants they are compared to in the claim. As such, a compressor using refrigerant as claimed will be equipped with discharge tube that can handle stresses and heat release of such compressor. Therefore, a compressive strength of such compressor will also be higher than a conventional compressor using conventional refrigerants. Yotsumoto discloses in [10]-[17] that the device using the refrigerant has a heat capacity or specific heat capacity that can accommodate heat release of the refrigerants used. Therefore, it is examiners positions that Yotsumoto’s compressor has a discharge pipe that has the compressive strength that is higher than conventional compressors.)
Regarding claim 22, Yotsumoto discloses a method of selecting a metal of a discharge pipe of a compressor using, as refrigerant, a composition that contains one or more of ethylene-based fluoroolefins, 2,3,3,3- tetrafluoropropene (HFO-1234yf), and 1,3,3,3-tetrafluoropropene (HFO-1234ze),the method including:
selecting the metal of the compressor using the composition as refrigerant such that the discharge pipe made of metal having a higher compressive strength than a discharge pipe of a compressor using R410A as refrigerant (one of ordinary skill in the art would recognize that the heat release of the claimed refrigerant would be higher than conventional refrigerants they are compared to in the claim. As such, a compressor using refrigerant as claimed will be equipped with discharge tube that can handle stresses and heat release of such compressor. Therefore, a compressive strength of such compressor will also be higher than a conventional compressor using conventional refrigerants. Yotsumoto discloses in [10]-[17] that the device using the refrigerant has a heat capacity or specific heat capacity that can accommodate heat release of the refrigerants used. Therefore, it is examiners positions that Yotsumoto’s compressor has a discharge pipe that has the compressive strength that is higher than conventional compressors.)
Regarding claim 23, Yotsumoto discloses a method of selecting a metal of a discharge pipe of a compressor using, as refrigerant, a composition that contains one or more of ethylene-based fluoroolefins, 2,3,3,3- tetrafluoropropene (HFO-1234yf), and 1,3,3,3-tetrafluoropropene (HFO-1234ze),the method including:
selecting the metal of the compressor using the composition as refrigerant such that the discharge pipe made of metal having a higher compressive strength than a discharge pipe of a compressor using R134a as refrigerant (one of ordinary skill in the art would recognize that the heat release of the claimed refrigerant would be higher than conventional refrigerants they are compared to in the claim. As such, a compressor using refrigerant as claimed will be equipped with discharge tube that can handle stresses and heat release of such compressor. Therefore, a compressive strength of such compressor will also be higher than a conventional compressor using conventional refrigerants. Yotsumoto discloses in [10]-[17] that the device using the refrigerant has a heat capacity or specific heat capacity that can accommodate heat release of the refrigerants used. Therefore, it is examiners positions that Yotsumoto’s compressor has a discharge pipe that has the compressive strength that is higher than conventional compressors.)
Regarding claim 24, Yotsumoto discloses a method of selecting a metal of a discharge pipe of a compressor using, as refrigerant, a composition that contains one or more of ethylene-based fluoroolefins, 2,3,3,3- tetrafluoropropene (HFO-1234yf), and 1,3,3,3-tetrafluoropropene (HFO-1234ze),the method including:
selecting the metal of the compressor using the composition as refrigerant such that the discharge pipe made of metal having a higher compressive strength than a discharge pipe of a compressor using R404A as refrigerant (one of ordinary skill in the art would recognize that the heat release of the claimed refrigerant would be higher than conventional refrigerants they are compared to in the claim. As such, a compressor using refrigerant as claimed will be equipped with discharge tube that can handle stresses and heat release of such compressor. Therefore, a compressive strength of such compressor will also be higher than a conventional compressor using conventional refrigerants. Yotsumoto discloses in [10]-[17] that the device using the refrigerant has a heat capacity or specific heat capacity that can accommodate heat release of the refrigerants used. Therefore, it is examiners positions that Yotsumoto’s compressor has a discharge pipe that has the compressive strength that is higher than conventional compressors.)
Regarding claim 25, Yotsumoto discloses a method of selecting a metal of a discharge pipe of a compressor using, as refrigerant, a composition that contains one or more of ethylene-based fluoroolefins, 2,3,3,3- tetrafluoropropene (HFO-1234yf), and 1,3,3,3-tetrafluoropropene (HFO-1234ze),the method including:
selecting the metal of the intake pipe connection section of the casing of the compressor using the composition as refrigerant such that the intake pipe connection section made of metal having a higher compressive strength than an intake pipe connection section of a casing of a compressor using R32 as refrigerant (one of ordinary skill in the art would recognize that the heat release of the claimed refrigerant would be higher than conventional refrigerants they are compared to in the claim. As such, a compressor using refrigerant as claimed will be equipped with discharge tube that can handle stresses and heat release of such compressor. Therefore, a compressive strength of such compressor will also be higher than a conventional compressor using conventional refrigerants. Yotsumoto discloses in [10]-[17] that the device using the refrigerant has a heat capacity or specific heat capacity that can accommodate heat release of the refrigerants used. Therefore, it is examiners positions that Yotsumoto’s compressor has a discharge pipe that has the compressive strength that is higher than conventional compressors.)
Regarding claim 26, Yotsumoto discloses a method of selecting a metal of a discharge pipe of a compressor using, as refrigerant, a composition that contains one or more of ethylene-based fluoroolefins, 2,3,3,3- tetrafluoropropene (HFO-1234yf), and 1,3,3,3-tetrafluoropropene (HFO-1234ze),the method including:
selecting the metal of the intake pipe connection section of the casing of the compressor using the composition as refrigerant such that the intake pipe connection section made of metal having a higher compressive strength than an intake pipe connection section of a casing of a compressor using R410A as refrigerant (one of ordinary skill in the art would recognize that the heat release of the claimed refrigerant would be higher than conventional refrigerants they are compared to in the claim. As such, a compressor using refrigerant as claimed will be equipped with discharge tube that can handle stresses and heat release of such compressor. Therefore, a compressive strength of such compressor will also be higher than a conventional compressor using conventional refrigerants. Yotsumoto discloses in [10]-[17] that the device using the refrigerant has a heat capacity or specific heat capacity that can accommodate heat release of the refrigerants used. Therefore, it is examiners positions that Yotsumoto’s compressor has a discharge pipe that has the compressive strength that is higher than conventional compressors.)
Regarding claim 27, Yotsumoto discloses a method of selecting a metal of a discharge pipe of a compressor using, as refrigerant, a composition that contains one or more of ethylene-based fluoroolefins, 2,3,3,3- tetrafluoropropene (HFO-1234yf), and 1,3,3,3-tetrafluoropropene (HFO-1234ze),the method including:
selecting the metal of the intake pipe connection section of the casing of the compressor using the composition as refrigerant such that the intake pipe connection section made of metal having a higher compressive strength than an intake pipe connection section of a casing of a compressor using R134a as refrigerant.
Regarding claim 28, Yotsumoto discloses a method of selecting a metal of a discharge pipe of a compressor using, as refrigerant, a composition that contains one or more of ethylene-based fluoroolefins, 2,3,3,3- tetrafluoropropene (HFO-1234yf), and 1,3,3,3-tetrafluoropropene (HFO-1234ze),the method including:
selecting the metal of the intake pipe connection section of the casing of the compressor using the composition as refrigerant such that the intake pipe connection section made of metal having a higher compressive strength than an intake pipe connection section of a casing of a compressor using R404A as refrigerant (one of ordinary skill in the art would recognize that the heat release of the claimed refrigerant would be higher than conventional refrigerants they are compared to in the claim. As such, a compressor using refrigerant as claimed will be equipped with discharge tube that can handle stresses and heat release of such compressor. Therefore, a compressive strength of such compressor will also be higher than a conventional compressor using conventional refrigerants. Yotsumoto discloses in [10]-[17] that the device using the refrigerant has a heat capacity or specific heat capacity that can accommodate heat release of the refrigerants used. Therefore, it is examiners positions that Yotsumoto’s compressor has a discharge pipe that has the compressive strength that is higher than conventional compressors.)
Regarding claim 29, Yotsumoto discloses the method according to The method according to wherein the composition contains one or more of trans-1,2-difluoroethylene (HFO- 1132(E)), cis-1,2-difluoroethylene (HFO-1132(Z)), 1,1-difluoroethylene (HFO-1132a), 1,1,2- trifluoroethylene (HFO-1123), monofluoroethylene (HFO-1141), chlorotrifluoroethylene (CFO- 1113), and perfluoro-olefin ([15]-[16]).
Regarding claim 30, Yotsumoto discloses the method according to The method according to wherein the composition contains one or more of trans-1,2-difluoroethylene (HFO- 1132(E)), cis-1,2-difluoroethylene (HFO-1132(Z)), 1,1-difluoroethylene (HFO-1132a), 1,1,2- trifluoroethylene (HFO-1123), monofluoroethylene (HFO-1141), chlorotrifluoroethylene (CFO- 1113), and perfluoro-olefin ([15]-[16]).
Regarding claim 31, Yotsumoto discloses the method according to The method according to wherein the composition contains one or more of trans-1,2-difluoroethylene (HFO- 1132(E)), cis-1,2-difluoroethylene (HFO-1132(Z)), 1,1-difluoroethylene (HFO-1132a), 1,1,2- BIRCH, STEWART, KOLASCH & BIRCH, LLP DRA/JN/slgtrifluoroethylene (HFO-1123), monofluoroethylene (HFO-1141), chlorotrifluoroethylene (CFO- 1113), and perfluoro-olefin ([15]-[16]).
Regarding claim 32, Yotsumoto discloses the method according to The method according to wherein the composition contains one or more of trans-1,2-difluoroethylene (HFO- 1132(E)), cis-1,2-difluoroethylene (HFO-1132(Z)), 1,1-difluoroethylene (HFO-1132a), 1,1,2- trifluoroethylene (HFO-1123), monofluoroethylene (HFO-1141), chlorotrifluoroethylene (CFO- 1113), and perfluoro-olefin ([15]-[16]).
Regarding claim 33, Yotsumoto discloses the method according to The method according to wherein the composition contains one or more of trans-1,2-difluoroethylene (HFO- 1132(E)), cis-1,2-difluoroethylene (HFO-1132(Z)), 1,1-difluoroethylene (HFO-1132a), 1,1,2- trifluoroethylene (HFO-1123), monofluoroethylene (HFO-1141), chlorotrifluoroethylene (CFO- 1113), and perfluoro-olefin ([15]-[16]).
Regarding claim 34, Yotsumoto discloses the method according to The method according to wherein the composition contains one or more of trans-1,2-difluoroethylene (HFO- 1132(E)), cis-1,2-difluoroethylene (HFO-1132(Z)), 1,1-difluoroethylene (HFO-1132a), 1,1,2- trifluoroethylene (HFO-1123), monofluoroethylene (HFO-1141), chlorotrifluoroethylene (CFO- 1113), and perfluoro-olefin ([15]-[16]).
Regarding claim 35, Yotsumoto discloses the method according to The method according to wherein the composition contains one or more of trans-1,2-difluoroethylene (HFO- 1132(E)), cis-1,2-difluoroethylene (HFO-1132(Z)), 1,1-difluoroethylene (HFO-1132a), 1,1,2- trifluoroethylene (HFO-1123), monofluoroethylene (HFO-1141), chlorotrifluoroethylene (CFO- 1113), and perfluoro-olefin ([15]-[16]).
Regarding claim 36, Yotsumoto discloses the method according to The method according to wherein the composition contains one or more of trans-1,2-difluoroethylene (HFO- 1132(E)), cis-1,2-difluoroethylene (HFO-1132(Z)), 1,1-difluoroethylene (HFO-1132a), 1,1,2- BIRCH, STEWART, KOLASCH & BIRCH, LLP DRA/JN/slgtrifluoroethylene (HFO-1123), monofluoroethylene (HFO-1141), chlorotrifluoroethylene (CFO- 1113), and perfluoro-olefin ([15]-[16]).
Regarding claim 37, Yotsumoto discloses the method according to The method according to wherein the composition contains one or more of trans-1,2-difluoroethylene (HFO- 1132(E)), cis-1,2-difluoroethylene (HFO-1132(Z)), and 1,1,2-trifluoroethylene (HFO-1123) ([15]-[16]).
Regarding claim 38, Yotsumoto discloses the method according to The method according to wherein the composition contains one or more of trans-1,2-difluoroethylene (HFO- 1132(E)), cis-1,2-difluoroethylene (HFO-1132(Z)), and 1,1,2-trifluoroethylene (HFO-1123) ([15]-[16]).
Regarding claim 39, Yotsumoto discloses the method according to The method according to wherein the composition contains one or more of trans-1,2-difluoroethylene (HFO- 1132(E)), cis-1,2-difluoroethylene (HFO-1132(Z)), and 1,1,2-trifluoroethylene (HFO-1123) ([15]-[16]).
Regarding claim 40, Yotsumoto discloses the method according to The method according to wherein the composition contains one or more of trans-1,2-difluoroethylene (HFO- 1132(E)), cis-1,2-difluoroethylene (HFO-1132(Z)), and 1,1,2-trifluoroethylene (HFO-1123) ([15]-[16]).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 DAPINDER SINGH whose telephone number is (571)270-1774. The examiner can normally be reached Monday to Friday from 8:00 AM to 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Laurenzi can be reached at (571) 270-7878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAPINDER SINGH/Primary Examiner, Art Unit 3746
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