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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,169,085. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the issued patent anticipate each of the limitations of the claims of the instant application.
Examiner Note
Claims 1-20 are considered to read over the prior art of record because the prior art of record does not teach or suggest the claimed combination of features. The closest prior art of record is US 2011/0259025 to Noh, US 2013/0160985 to Chen. However the
art of record does not teach, the various elements arranged as claimed, namely, a first source heat exchanger bypass circuit comprising a first bi-directional valve; a second source heat exchanger bypass circuit comprising a second bi- directional valve positioned downstream of the compressor, an auxiliary heat exchanger bypass circuit comprising a third bi-directional valve positioned downstream of the compressor, a 3-way valve disposed along the refrigerant circuit and positioned downstream of the third bi- directional valve and between the auxiliary heat exchanger and the source heat exchanger, the 3-way valve including a first port configured to receive the refrigerant from the auxiliary heat exchanger, a second port configured to receive the refrigerant from the third bi-directional valve or to direct the refrigerant to the first bi-directional valve, and a third port configured to direct the refrigerant to the source heat exchanger, wherein the 3-way valve is configured to selectively receive the refrigerant from either the auxiliary heat exchanger or from the third bi-directional valve and to selectively direct the refrigerant to either the source heat exchanger or to the first bi- directional valve; an expansion valve positioned between the source heat exchanger and the load heat exchanger; wherein the first bi-directional valve is configured to direct the refrigerant from the 3-way valve to the expansion valve to bypass the source heat exchanger: wherein the second bi-directional valve modulates exchange of heat in the load heat exchanger and controls flashing of the refrigerant entering the source heat exchanger.
However, these claims cannot be considered to be "allowable” at this time due to the double patenting rejections set forth in this Office Action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN BRADFORD whose telephone number is (571)270-5199. The examiner can normally be reached Monday-Friday 8:00 - 4:00 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jerry-Daryl Fletcher can be reached at (571)270-5054. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHAN BRADFORD/ Primary Examiner, Art Unit 3763
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