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 .
Reissue Applications
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 10,633,197 (hereinafter the ‘197 patent) or Reissued Patent No. RE50414 (hereinafter the ‘414 reissue patent) is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Reissue Oath/Declaration
The reissue oath/declaration filed with this application is defective because the error which is relied upon to support the reissue application is not an error upon which a reissue can be based. See 37 CFR 1.175and MPEP § 1414.
The reissue declaration states that claim 1 of the ‘197 patent erroneously recites a method including steps of installing a duct adapter and features of a drain basin, asserting that “[a]mended claim 1 in the present reissue application is broadened in at least these aspects,” refers to amended claims 2-5, and indicates that “new claims 6 to 8 are added, in view of the amendment to claim 1.” However, there are no amended claims 1-5 in the present reissue application. In the preliminary amendment presented with this reissue application, claims 1-5 are canceled, and new claims 6-11 are presented.
The reissue declaration additionally states that new claims 9 and 10 recite “a fresh air module” and new claims 11-16 are directed to “a refrigerant package” as overlooked aspects of the invention. However, new claims 9 and 10 do not recite “a fresh air module.” New independent claim 6 recites a refrigerant package including a fresh air module. Claims 7-11 depend from claim 6.
Moreover, claims to a refrigerant package or a fresh air module are not claims to an overlooked aspect that can be recovered by reissue of the ‘197 patent. The ‘197 patent matured from U.S. Application No. 15/835,784 (hereinafter the ‘784 child application) which was filed as a divisional application of U.S. Application No. 14/975,166 (hereinafter the ‘166 parent application). The original ‘166 parent application included claims drawn to four distinct inventions: a method of installing a refrigerant package, a base for a refrigerant package, and two distinct embodiments of a refrigerant package, one of which included a fresh air module. See claims filed December 18, 2015, in the ‘166 parent application. The examiner required restriction between these four inventions.
In the ‘166 parent application, Applicant elected the invention of a refrigerant package including the fresh air module. The ‘166 parent application matured to U.S. Patent No. 10,488,083 (hereinafter the ‘083 parent patent) with claims directed to a refrigerant package including a fresh air module. The ‘784 child application matured to the ‘197 patent, on which this reissue application is based, with claims directed to a method of installing a refrigerant package. Thus, it is clear from the record that a refrigerant package with a fresh air module was not an overlooked aspect, but was in fact the invention elected in the ‘166 parent application in response to a restriction requirement and obtained in the resulting ‘083 parent patent.
Because claims to the refrigerant package with fresh air module were obtained in the ‘083 parent patent, and the method claims of the ‘197 patent at issue were filed in response to a restriction requirement, the failure to again present claims to the refrigerant package with fresh air module in the ‘784 child application is not an error upon which reissue can be based. See MPEP § 1412.01, subsections I and II.
Claim Rejections - 35 USC § 251 - Reissue Declaration
35 U.S.C. 251 states:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
(b) MULTIPLE REISSUED PATENTS.— The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
(c) APPLICABILITY OF THIS TITLE.— The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS.—No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
Claims 6-11 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defects in the reissue declaration is set forth in the discussion above in this Office action.
Claim Rejections - 35 USC § 251 - Lack of Error
MPEP § 1412.01, subsection II, states:
Where a restriction (or an election of species) requirement was made in an application and applicant permitted the elected invention to issue as a patent without filing a continuing application on the non-elected invention(s) or on non-claimed subject matter distinct from the elected invention, the non-elected invention(s) and non-claimed, distinct subject matter cannot be recovered by filing a reissue application. A reissue applicant’s failure to timely file a continuing application is not considered to be error causing a patent granted on the elected claims to be partially inoperative by reason of claiming less than the applicant had a right to claim. Accordingly, this is not correctable by reissue of the original patent under 35 U.S.C. 251. See In re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990); In re Weiler, 790 F.2d 1576, 229 USPQ 673 (Fed. Cir. 1986); In re Orita, 550 F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA 1977); see also In re Mead, 581 F.2d 251, 198 USPQ 412 (CCPA 1978). In this situation, the reissue claims should be rejected under 35 U.S.C. 251 for lack of any defect in the original patent and lack of any error in obtaining the original patent.
Claims 6-11 are rejected under 35 U.S.C. 251 for lack of defect in the original patent and lack of error in obtaining the original patent.
As discussed above, the ‘197 patent matured from the ‘784 child application, filed in response to a restriction requirement in the ‘166 parent application, with claims directed to a method of installing a refrigerant package. Claims to the refrigerant package with a fresh air module were obtained in the ‘083 parent patent. Thus, failure to claim the refrigerant package with a fresh air module in the ‘197 patent was not an error in obtaining the original patent and is not an error correctable by reissue of the ‘197 patent, for the reasons discussed above.
Claim Rejections - 35 USC § 251 - Improper Broadening
Claims 6-11 are rejected under 35 U.S.C. 251 as being broadened in a reissue application filed outside the two year statutory period. As noted above, 35 U.S.C. 251(d) prohibits reissued patents enlarging the scope of the original patent claims unless applied for within two years from the grant of the original patent. A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadened if it is broader in any one respect even though it may be narrower in other respects.
New claim 6 presented in this reissue application, filed November 25, 2024, is directed to the same invention elected in the ‘083 parent patent, which issued on November 26, 2019. New claim 6 is broader than issued claim 1 in the ‘083 parent patent in that new claim 6 recites the same refrigerant package comprising a fresh air module but omits an electric heater, an evaporator drain pan, a reversing valve assembly, a power supply, a plurality of processors, and a reheater coil. The instant reissue application was filed more than two years after issuance of the ‘083 parent patent to the same invention. Thus, new claim 6 improperly broadens the invention outside of the two year statutory period.1
Claim Rejections - 35 USC § 251 - Recapture
Claims 6-11 are rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based.2 The reissue application contains claims that are broader than the ‘197 patent claims which are directed to a different statutory category of invention, and are also broader than the ‘083 parent patent claims which are directed to the same invention. The record of the application for the patent family shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
MPEP § 1412.02 establishes a three-step test for recapture. The three-step process is as follows:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
Recapture with respect to the ‘197 child patent
Recapture Analysis: Step 1
Reissue claims 6-11 are directed to a different statutory category of invention and are broader in scope than ‘197 patent claims 1-5. See MPEP § 1412.03. In addition, reissue claims 6-11 omit many features of ‘197 patent claim 1, including, for example, a building drain, heating/cooling ducts, a duct adapter, a base, a wall controller, a plenum gasket, supply duct flanges, a power plug, a thermostat plug, installation rails, a reheater coil providing active dehumidification, a raised rim seat, and an evaporator drain. Therefore, step 1 of the three-step test is met for reissue claims 6-11.
Recapture Analysis: Step 2, first sub-step
The step of determining whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution includes two sub-steps. The first sub-step is to determine whether the applicant surrendered any subject matter in the prosecution of the original application. MPEP § 1412.02 defines surrendered subject matter as a claim limitation that was originally relied upon by the applicant in the original prosecution to make the claims allowable over the art.
Applicant filed the ‘784 divisional application in response to the restriction requirement in the ‘166 application, as discussed above. See Remarks filed December 8, 2017, pg. 1. In a preliminary amendment, Applicant canceled claims 14-18 which were directed to the refrigerant package comprising a fresh air module obtained in the ‘083 parent patent, and pursued claims 1-8 directed to a method of installing a refrigerant package.
The examiner rejected claim 1 under 35 U.S.C. 103 as unpatentable over U.S. Patent No. 6,065,296 to Feger (hereinafter Feger) in view of U.S. Patent Pub. 2008/0022615 to Fox (hereinafter Fox), claim 2 in further view of U.S. Patent No. 7,540,123 to Semmes (hereinafter Semmes), claims 3-7 in further view of U.S. Patent Pub. 2005/0109055 to Goetzinger et al. (hereinafter Goetzinger), and claim 8 in further view of U.S. Patent Pub. 2007/0169501 to Rios (hereinafter Rios). See non-final Office action mailed March 29, 2019.
In response, Applicant amended claim 1 to recite the base not being attached to the refrigerant package and the third installing step having installation rails received in channels in the top of the base. Claim 2 was canceled. See Response filed June 28, 2019.
The examiner then rejected claim 1 under 35 U.S.C. 103 as unpatentable over Feger in view of Fox and U.S. Patent No. 6,345,513 to Kim (hereinafter Kim), claims 3-7 in further view of Goetzinger, and claim 8 in further view of Rios. See final Office action mailed September 25, 2019.
In the next response, Applicant amended claim 1 to recite, inter alia, the base gasket being located on top of a raised rim seat, the variable refrigerant package comprising a fresh air module with a reheater coil and a fan in communication with a chamber, and the steps of selecting a base and providing a notch in the raised rim seat, wherein installation may be completed by non-certified personnel. Claims 7 and 8 were canceled. See Response filed March 25, 2020. Applicant argued that the prior art does not teach each of these added features. Id., Remarks, pg. 7-10.
Claims 1 and 3-6 were allowed as ‘197 patent claims 1-5. See Notice of Allowance mailed April 20, 2020.
The limitations that were added to independent claim 1 and argued by Applicant to distinguish the claimed invention from the prior art, as discussed above, are surrender-generating limitations (SGL).
Recapture Analysis: Step 2, second sub-step
The second sub-step is to determine whether any of the broadening of the reissue claims is in the area of the surrendered subject matter. The examiner must analyze all of the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitations are directed to limitations relied upon by Applicant in the original application to make the claims allowable over the art.
Reissue claim 6 is broadened with respect to ‘197 patent claim 1 to omit all of the method steps as well as a reheater coil of the fresh air module of the refrigerant package for providing active dehumidification. Reissue claim 6 and its dependent claims include some of the details of the surrendered subject matter and eliminate some of the details of the surrendered subject matter. Therefore, step 2 of the three-part test is met for reissue claims 6-11.
Recapture Analysis: Step 3
The third step in the recapture analysis considers the significance of claim limitations that were added and deleted during prosecution of the patent to be reissued in order to determine whether the reissue claims are materially narrowed in other respects so as to avoid the recapture rule.
In this case, reissue claim 6 entirely eliminates all of the method steps that were relied on for patentability, as well as the reheater coil of the refrigerant package. While reissue claim 6 includes additional limitations related to other aspects of the refrigerant package, these additional limitations are unrelated to the installation steps that were relied upon to obtain the ‘197 patent. Therefore, reissue claims 6-11 improperly recapture surrendered subject matter.
Overlooked Aspects Analysis
As discussed above in response to Applicant’s Reissue Declaration, claims to a refrigerant package with a fresh air module are not claims to an overlooked aspect because claims to the refrigerant package with a fresh air module were presented, elected, and obtained in the ‘083 parent patent. Thus, it is clear from the record that a refrigerant package with a fresh air module was not an overlooked aspect, but was in fact the invention elected in the ‘166 parent application and obtained in the resulting ‘083 parent patent.
Recapture with respect to the ‘083 parent patent
Because reissue claims 6-11 are directed to the same invention for which the ‘083 parent patent was obtained, the recapture analysis is also made relative to the claims of the ‘083 parent patent.
Recapture Analysis: Step 1
Reissue claims 6-11 are broader in scope than ‘083 patent claim 1. Independent reissue claim 6 does not require the following limitations which were present in all of the patent claims: an electric heater, an evaporator drain pan, a reversing valve assembly, a power supply, a plurality of processors, and a reheater coil. Therefore, step 1 of the three-step test is met for reissue claims 6-11.
Recapture Analysis: Step 2, first sub-step
As discussed above, the first sub-step of step 2 in the recapture analysis is to determine whether the applicant surrendered any subject matter in the prosecution of the original application.
During prosecution of the ‘083 patent to the same invention, the examiner rejected independent claim 14 under 35 U.S.C. 103 as unpatentable over Feger in view of U.S. Patent No. 4,474,021 to Haband (hereinafter Harband), dependent claim 15 in further view of U.S. Patent No. 4,003,729 to McGrath (hereinafter McGrath), dependent claims 16-17 in further view of U.S. Patent No. 6,070,110 to Shah et al. (hereinafter Shah), and dependent claim 18 in further view of U.S. Patent Pub. 2010/0242508 to Lifson et al. (hereinafter Lifson). See non-final Office action mailed January 24, 2018.
In response, Applicant amended claim 14 to include limitations directed to a motor control system to provide variable speed by pulse width modulation. Claim 15 was canceled. See Response filed April 6, 2018.
The examiner then rejected claim 14 under 35 U.S.C. 103 as unpatentable over Feger in view of Harband and McGrath, claims 16-17 in further view of Shah, and claim 18 in further view of Lifson. See final Office action mailed August 8, 2018.
In the next response, Applicant amended claim 14 to recite a main controller, a reheating step, and an electronic expansion valve. Dependent claims 16-18 were canceled. See Response filed November 2, 2018.
The examiner then rejected claim 14 under 35 U.S.C. 103 as unpatentable over Feger in view of AU Patent No. 2011/100169 to Yu et al. (hereinafter Yu) and Lifson. See non-final Office action mailed March 15, 2019.
In the next response, Applicant amended claim 14 to further define the fresh air module as having a fan in communication with a chamber, to further define the motor control system as comprising a power supply, a plurality of processors, and a plurality of drivers, and to include a reheater coil in communication with the evaporator and providing active dehumidification. Applicant argued, inter alia, that “the prior art does not teach or disclose a reheater coil for active dehumidification” (see Response filed July 3, 2019, pg. 11-12) and “the prior art does not teach or disclose a plurality of processors in electronic communication with a power supply” (id., pg. 12-16).
Independent claim 14 was allowed as ‘083 patent claim 1. See Notice of Allowance mailed October 15, 2019.
The limitations that were added to independent claim 14 and argued by Applicant to distinguish the claimed invention from the prior art, as discussed above, are surrender-generating limitations (SGL).
Recapture Analysis: Step 2, second sub-step
As discussed above, the second sub-step of step 2 in the recapture analysis is to determine whether any of the broadening of the reissue claims is in the area of the surrendered subject matter.
Reissue claim 6 is broadened with respect to ‘083 patent claim 1 to omit a power supply and a plurality of processors as components of the motor control system, and a reheater coil in communication with the evaporator, the reheater coil providing active dehumidification of some of the mixed air. Reissue claim 6 and its dependent claims include some of the details of the surrendered subject matter and eliminate some of the details of the surrendered subject matter. Therefore, step 2 of the three-part test is met for reissue claims 6-11.
Recapture Analysis: Step 3
As discussed above, third step in the recapture analysis considers the significance of claim limitations that were added and deleted during prosecution of the patent to be reissued in order to determine whether the reissue claims are materially narrowed in other respects so as to avoid the recapture rule.
In this case, reissue claim 6 retains an electronic expansion valve and a motor control system which includes a plurality of drivers and provides variable speed by pulse width modulation, and mentions a power supply in the context of a functional limitation of the motor control system (“configured to be in electronic communication with a power supply,” claim 6, lines 24-25), but entirely eliminates a plurality of processors in electronic communication with the power supply and the plurality of drivers, and a reheater coil in communication with the evaporator to provide active dehumidification. Because these surrender-generating limitations are entirely omitted, reissue claims 6-11 improperly recapture surrendered subject matter.
Claim Rejections - 35 USC § 103
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.
Claims 6, 10, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Feger (U.S. Patent No. 6,065,296, hereinafter Feger) in view of Siegel et al. (U.S. Patent No. 9,383,115, hereinafter Siegel), Yu (AU 2011/100169, hereinafter Yu), and Lifson (U.S. Patent Pub. 2010/0242508, hereinafter Lifson).
Regarding claim 6, Feger discloses a refrigerant package (Fig. 1) for cooling a room, the refrigerant package being configured to be located in a closet (col. 1:20-25) adjacent an outside wall (11), wherein the closet is wired for power and connection to a thermostat (92, Fig. 1; col. 8:53-56) to set temperature in the room, wherein the refrigerant package is configured to abut a plenum (15, 16, Fig. 3) through the outside wall (11) and rest on a base (25, Fig. 1). The refrigerant package comprises:
an outdoor air inlet (opening 22, Fig. 3) for receiving outdoor air through the plenum (col. 5:50-60);
a condenser (55, Fig. 8; col. 7:35-37);
a condenser fan assembly (fan 46) for drawing outside air through the outdoor air inlet and through the condenser and out the plenum to outside the room (col. 7:35-40);
a path for indoor entering air (return 29, Fig. 1; col. 6:8-11);
an evaporator (61, Fig. 8) in said path (col. 6:8-11, 7:49-52);
a blower assembly (60, Fig. 8) for drawing the indoor entering air from the room through the evaporator (61) prior to discharge back into the room (col. 7:49-8:16);
a compressor (62, Fig. 8) connected to refrigerant lines connecting the condenser (55) to the evaporator (61) to compress a refrigerant flowing therethrough (col. 7:50-57);
a motor control system (controlled by multi-speed fan switch 83, Fig. 7) in electronic communication with a power supply (via power cord 78) and to control speed and power consumption of the blower assembly, the condenser fan, and the compressor (“multi speed fan switch 83 for control of the motor 77,” col. 8:17-31, the motor 77 operating the fan and blower); and
a main controller (control panel 64) configured to be connected between the thermostat (92) and the motor control system (83).
Feger does not teach the following features:
a fresh air module comprising a fan comprised of a fan blade and a motor within a housing which enables mixing of outdoor and indoor air;
the motor control system comprising a plurality of drivers and providing a pulse width modulation from the power supply for varying speed of the condenser fan, blower assembly and/or compressor, and the main controller causing the refrigerant package to approach the set temperature by slowing the condenser fan, the blower assembly and/or the compressor to facilitate dehumidification of the mixed air by the evaporator; and
an electronic expansion valve in the refrigerant lines.
However, Siegel teaches a fresh air module (fresh air ventilation device 300, Figs. 1-5; col. 4:4-67) comprising a fan (304, Figs. 4-5) comprised of a fan blade and a motor (col. 4:48-50, a blade and motor being conventional and well-understood components of an electric fan) within a housing (see Fig. 4), the fan (304) being in communication with a chamber with the fresh air module (see Fig. 4), and wherein the fresh air module (300) is located between outside air and a path for indoor air entering a refrigerant package (“fan 304 pulls fresh air through the duct 306 from the outside of the unit 10 … The fan 304 propels the fresh air across the input side of the blower 26,” col. 4:30-36), configured to draw some of the outside air through the fresh air module (col. 4:30-36), and enable mixing some of the outside air with the indoor entering air in front of an evaporator so that the evaporator will remove moisture from the outside air flowing therethrough (“blower 26 effectively mixes the fresh air it receives from the fan 304 with the room air it pulls in from the room, and forces that mixture across the evaporator 28 and into the room,” col. 4:37-42). Siegel teaches that the fresh air module is advantageous for improving the fresh air ventilation capacity of an AC and/or heating unit (col. 1:54-55). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Feger by adding a fresh air module as taught by Siegel, in order to improve fresh air ventilation capacity (e.g., for meeting building codes and standards; see Siegel, col. 1:13-25).
With respect to the drivers and pulse width modulation associated with the motor control system, as well as the function of the main controller to slow the condenser fan, the blower assembly and/or the compressor to facilitate dehumidification, Yu teaches a variable capacity air conditioning system comprising a motor control system (Figs. 1 and 5) which controls speed and power consumption of a blower assembly (variable speed indoor fan 140, ¶¶ 10, 37), a condenser fan (outdoor fan 160, ¶ 39), and a compressor (variable capacity compressor 170, ¶¶ 10-11, 38). Yu teaches that these devices are controlled by processors (502, Fig. 5) using software (¶ 50), which is understood to imply a plurality of drivers.3 The motor control system provides pulse width modulation (compressor PWM, ¶ 38; and indoor fan PWM, ¶ 42), such that the blower assembly (indoor fan 140) and the compressor (170) are variable in speed by pulse width modulation (¶¶ 10-11, 38, 42). In conjunction with the variable speed of the blower assembly (140) and the compressor (170), a main controller (controller 130 as a master controller, ¶ 37; compare to Applicant’s disclosure at col. 6:24-38) is connected between a thermostat (110) and the motor control system which causes the air conditioning system to approach a set temperature by slowing at least the blower assembly (140) to facilitate dehumidification (Abstract; ¶¶ 37-42). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the motor control system of Feger to include a plurality of drivers and to provide a pulse width modulation from the power supply for varying speed of the blower assembly and compressor, and to configure the main controller to cause the refrigerant package to approach the set temperature by slowing at least the blower assembly to facilitate dehumidification of the mixed air by the evaporator, as suggested by Yu, in order to improve humidity control.
With respect to the electronic expansion valve, Lifson teaches a refrigerant system comprising an electronic expansion valve (26, Fig. 1) in refrigerant lines (¶ 9), with a main controller (28) configured to cause the electronic expansion valve (26) to open or close to cause approach of a set temperature for dehumidification of air entering the refrigerant system (¶¶ 12, 15). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the invention of Feger by adding an electronic expansion valve as taught by Lifson in the refrigerant lines and configuring the main controller to cause the electronic expansion valve to open or close to further cause the approach of the set temperature for dehumidification of the mixed air, in order to improve humidity control.
Regarding claims 10 and 11, the modified Feger teaches the claimed invention substantially as claimed, as set forth above for claim 6. Feger further teaches an evaporator drain pan (40, Figs. 4A-D) below the evaporator (col. 6:52-54) (claim 10) and a drain tube (102) connected to the evaporator drain pan (40), the drain tube (102) being configured to discharge any condensate collected in the drain pan (40) from the refrigerant package (col. 7:15-34) (claim 11).
Claims 7 and 9 are rejected as being unpatentable over Feger in view of Siegel, Yu, and Lifson, in further view of Smith (U.S. Patent No. 2,264,221, hereinafter Smith).
Regarding claim 7, the modified Feger teaches the claimed invention substantially as claimed, as set forth above for claim 6. The modified Feger does not teach a reheater coil in communication with the evaporator. However, Smith teaches an air conditioning apparatus (Fig. 1) comprising a reheater coil (48, Fig. 1) in communication with an evaporator (16), the reheater coil (48) providing active dehumidification (heating coil 48 being used “as a means for reheating the air which has been circulated over the evaporator … for reheating the air so as to maintain the proper temperature conditions as well as humidity conditions,” pg. 3, col. 2:39-50). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the invention of Feger to include a reheater coil as taught by Smith in communication with the evaporator to provide active dehumidification of the mixed air, in order to improve both temperature and humidity control.
Regarding claim 9, the modified Feger teaches the claimed invention substantially as claimed, as set forth above for claim 6. Siegel further teaches an electric heater (52, Fig. 6; col. 5:13-18) but does not teach that the electric heater is located in the path for indoor entering air. However, Smith teaches an air conditioning apparatus (Fig. 1) comprising a heater (48, Fig. 1) in the path of indoor entering air (between screened opening 44 through which room air enters and screened opening 46 through which conditioned air is discharged; pg. 1, col. 2:16-22). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the invention of Feger to include an electric heater in the path of indoor entering air, as suggested by Smith, in order to improve temperature and humidity control. The examiner recognizes that Smith, which published in 1941, teaches a steam heater for this purpose rather than an electric heater as claimed; however, the examiner finds that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ an electric heater as taught by Siegel for the same purpose.
Claim 8 is rejected as being unpatentable over Feger in view of Siegel, Yu, and Lifson, in further view of Harband (U.S. Patent No. 4,474,021, hereinafter Harband).
Regarding claim 8, the modified Feger teaches the claimed invention substantially as claimed, as set forth above for claim 6. Feger further teaches that the refrigerant package is reversible to function in a heating mode as a heat pump (col. 4:10-20). Noting that “it is not necessary to go into the operating cycle of an air conditioning unit” (col. 4:9-10), Feger does not describe specific features of a reversing valve assembly. However, in the art of heat pumps which are reversible for cooling and heating, Harband teaches a reversing valve assembly (2, Fig. 1) connected to refrigerant lines for reversing direction of flow of refrigerant to switch between cooling and heating modes (col. 1:10-20, 3:63-4:3). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the invention of Feger to include a reversing valve assembly as taught by Harband connected to the refrigerant lines, in order to facilitate switching between cooling and heating modes.
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 6-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,488,083. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims 6-11 are all broader than ‘083 patent claim 1. All of the limitation of instant claims 6-11 are recited in ‘083 patent claim 1.
The examiner notes that the prohibition of nonstatutory double patenting rejections under 35 U.S.C. 121 does not apply in this situation because the claims presented in this reissue application are drawn to the same invention as the ‘083 patent and are not consonant with the restriction requirement made by the examiner. As explained in MPEP § 804.01, “[i]n order for consonance to exist, the line of demarcation between the independent and distinct inventions identified by the examiner in the requirement for restriction must be maintained.” The invention now claimed in this reissue application is the same invention that was elected in the ‘166 parent application leading to the ‘083 patent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Patent Pubs. 2011/0125328 and 2012/0053738 to Lingrey et al. each describe an air conditioner comprising an electric heater and a motor control system providing pulse width modulation to vary the speed of a fan and blower, cited here as representative of the state of the art.
U.S. Patent Pub. 2012/0318005 to Lingrey et al. discloses an air conditioning system comprising an expansion valve and a reversing valve, cited here as representative of the state of the art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Laura L. Davison whose telephone number is (571)270-0189. The examiner can normally be reached Monday - Friday, 8:00 a.m. - 4:00 p.m. ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eileen Lillis can be reached at (571)272-6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Laura Davison/Reexamination Specialist, Art Unit 3993
Conferees:
/PETER C ENGLISH/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
1 The examiner recognizes that the instant reissue application was filed as a reissue of the ‘197 child patent, which issued on May 26, 2020, and a divisional of the ‘673 reissue application which was filed on May 25, 2022, which indicated an intent to broaden the invention of the ‘197 child patent within two years of issuance of the ‘197 child patent. However, the claims presented in this reissue application are not directed to the same invention as the ‘197 child patent, but are instead directed to the invention covered by the ‘083 parent patent.
2 In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984).
3 The term “driver” is understood in this context to refer to “a piece of software that enables a computer to communicate with a specific hardware device.” American Heritage® Dictionary of the English Language, Fifth Edition, definition 4.
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