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 Interpretation
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.
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.
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:
“pressure control element” in claim 1.
“heat exchange element” in claim 1.
“heat absorption element” in claim 2.
“control unit” in claim 5.
“system” in claim 15.
“plurality of heat expelling elements” in claim 15.
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.
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
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 3, 5, 10-11, 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lorenzo (US 20210285690), hereinafter referred to as Lorenzo, in view of Takahashi (JP S5810491), hereinafter referred to as Takahashi.
Re claim 1 and 17-18, Lorenzo a heat exchange element, comprising
an outer flow element (1),
an inner flow element (2) arranged within the outer flow element,
an element flow path (path inside 1 and 2) comprising forward flow path (see e.g. Fig 1, arrow going down) and a return flow path (see e.g. Fig 1, arrow going up), wherein.
the forward flow path is arranged between the outer flow element and the inner flow element (see e.g. Fig 1),
the return flow path is arranged within the inner flow element (see e.g. Fig 1),
the element flow path is configured to guide a working fluid from the forward flow path to the return flow path (see e.g. Fig 1), and
Lorenzo does not teach the limitation of a pressure control element, arranged fluidically between the forward flow path and the return flow path.
However, Takahashi teaches a heat exchanger comprising a pressure control element (e.g. 20), arranged fluidically between a forward flow path and a return flow path (see Fig 2).
Therefore, at the time the invention was filed it would have been obvious for a person or ordinary skill in the art to have modified Lorenzo and integrated a pressure control element, arranged fluidically between the forward flow path and the return flow path, as taught by Takahashi, in order to improve efficiency (see Takahashi abstract).
Moreover, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by and/or obvious over the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will perform the claimed process. Thus, the method, as claimed, would necessarily result from the normal operation of the apparatus. See MPEP 2112.02.
Re claim 3, Lorenzo, as modified, teaches the heat exchange element according to claim 1. Takahashi further teaches wherein the pressure control element has at least a first position having a first fluid return opening and second position having a second fluid return opening, wherein the second fluid return opening is greater than the first fluid return opening (inherent that a valve has at least two positions one where the open position is 100% and another where the open position is 0%).
Re claim 5, Lorenzo, as modified, teaches the heat exchange element according to claim 1. Takahashi further teaches further comprising a control unit configured to control the pressure control element (e.g. description, “the pressure of the spring 16 can be controlled by adjusting the natsuto 19”).
Re claim 10, Lorenzo, as modified, teaches the heat exchange element according to claim 1. Lorenzo further teaches the forward flow path has an annular cross section and the return flow path as a circular cross section (see Fig 2).
Re claim 11, Lorenzo, as modified, teaches the heat exchange element according to claim 1. Takahashi further teaches wherein the pressure control element is arranged at a distal outer end of the inner flow element (e.g. see Fig 1-2).
Allowable Subject Matter
Claims 2, 4-9, 12-16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. (see PTO-892)14.
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/NELSON J NIEVES/Primary Examiner, Art Unit 3763 06/19/2026
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