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 .
The claims received 6/24/2026 are entered. Claims 1-52 are cancelled and claims 53-67 are new.
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.
The following limitation(s) is/are 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 means or a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the means or generic placeholder is not preceded by a structural modifier.
“element configured to move the transportation system” (claim 60) includes the generic/nonce term “element” coupled with the function of “move the transportation system”. A return to the specification provides “at least one element (e.g., first and second axles 207,209) each coupled to the frame 203 as well as to one of the pair of wheels 204, and an electrical apparatus in the form of the electric motor 280.” Therefor the limitation is interpreted as the same or equivalents thereof.
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 53-54 and 60-62 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, and 13-15 of U.S. Patent No. US 12,405,035. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited patent claim includes all features of the instant claim 52 where the compressor wheel of the cited claim reads on the turbine wheel of the instant claim. Further in regard to instant claim 60, cited claim 13 does not include a blower. However Payne discloses an air conditioning system having a blower (62; shown in figure 2) fluidly coupled to an expander wheel (22) and configured to receive the air from the expander wheel and deliver the air to an environment for air conditioning purposes. It would have been obvious to one of ordinary skill in the art to have provided the cited patent with the blower of Payne in order to provide “full flow in the duct” (5:2 of Payne). In other words the addition of a blower enhances distribution of the air.
Claims 53-67 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 13-16 of U.S. Patent No. 12,215,908. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited patent claim includes all features of the instant claim 52. But do not explicitly state “coolant-free” however the claims do not include coolant and thus are coolant free and thus the limitation in the instant claims does not distinguish.
Claims 53-67 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 10, and 14 of U.S. Patent No. 12,103,354. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited patent claim includes all features of the instant claims
Claims 53-54, 56, and 58-60 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 5 of copending Application No. 19/269141 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the cited application claim includes all features of the instant claim 52 where the compressor of the cited claim reads on the turbine wheel of the instant claim. Cited claims do not include a blower. However Payne discloses an air conditioning system having a blower (62; shown in figure 2) fluidly coupled to an expander wheel (22) and configured to receive the air from the expander wheel and deliver the air to an environment for air conditioning purposes. It would have been obvious to one of ordinary skill in the art to have provided the cited patent with the blower of Payne in order to provide “full flow in the duct” (5:2 of Payne). In other words the addition of a blower enhances distribution of the air.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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) 53-60 is/are rejected under 35 U.S.C. 103 as being unpatentable over Williams (US 5,709,103) in view of Payne (US 4,334,411).
Regarding claim 53, Williams discloses an air conditioning system, comprising:
a turboexpander (shown in figure 2), comprising:
a drive shaft (34),
a compressor wheel (5) coupled to the drive shaft and configured to rotate together with the drive shaft to compress air, and
an expander wheel (9) coupled to the drive shaft and configured to rotate together with the compressor wheel (5), the expander wheel being configured to expand the air.
Williams lacks a blower.
Payne discloses an air conditioning system having a blower (62; shown in figure 2) fluidly coupled to an expander wheel (22) and configured to receive the air from the expander wheel and deliver the air to an environment for air conditioning purposes. It would have been obvious to one of ordinary skill in the art to have provided Williams with the blower of Payne in order to provide “full flow in the duct” (5:2 of Payne). In other words the addition of a blower enhances distribution of the air.
Regarding claim 54, Williams further discloses an air compressor motor (31/33) coupled to the turboexpander and configured to provide a source of kinetic energy to cause the compressor wheel to compress the air.
Regarding claims 55 and 57, Williams, as modified, discloses the air conditioning system according to claim 54, including a generator (7), wherein the drive shaft (34) is coupled to the generator (7), and wherein the expander wheel (9) and the generator (7) are configured to convert the source of kinetic energy and energy in the air flowing into the expander wheel, into mechanical energy of the driveshaft, and then convert the mechanical energy of the drive shaft into electrical energy in the generator (7) and power the compressor (5).
Williams lacks a battery. The examiner takes official notice that batteries for storing electrical energy from a generator are old and well known. It would have been obvious to one of ordinary skill in the art to have provided Williams with a battery in order to store excess power for later use in the compressor motor.
Regarding claim 56, Williams further discloses the air conditioning system is a coolant-free air conditioning system (there is no liquid coolant in the system of Williams). Coolant is understood in the context of the claim to be a liquid coolant, e.g. water or glycol
Regarding claim 58, Williams discloses a generator (7) coupled to the drive shaft (34) and configured to harness energy from the air.
Regarding claim 59, Williams further discloses the air conditioning system is a coolant-free air conditioning system (there is no liquid coolant in the system of Williams). Coolant is understood in the context of the claim to be a liquid coolant, e.g. water or glycol
Regarding claim 60, Williams discloses a transportation system, comprising:
at least one element (aircraft engine) configured to move the transportation system between an IDLING state corresponding to the transportation system being turned on and not moving, and an OPERATING state corresponding to the transportation system being turned on and moving; and
an air conditioning system coupled to the at least one element, comprising:
a turboexpander (shown in figure 2), comprising:
a drive shaft (34),
a compressor wheel (5) coupled to the drive shaft and configured to rotate together with the drive shaft to compress air, and
an expander wheel (9) coupled to the drive shaft and configured to rotate together with the compressor wheel (5), the expander wheel being configured to expand the air.
Williams lacks a blower.
Payne discloses an air conditioning system having a blower (62; shown in figure 2) fluidly coupled to an expander wheel (22) and configured to receive the air from the expander wheel and deliver the air to an environment for air conditioning purposes. It would have been obvious to one of ordinary skill in the art to have provided Williams with the blower of Payne in order to provide “full flow in the duct” (5:2 of Payne). In other words the addition of a blower enhances distribution of the air.
Claim(s) 61-67 is/are rejected under 35 U.S.C. 103 as being unpatentable over Williams (US 5,709,103), in view of Payne (US 4,334,411), and in view of Lior (US 2011/0239659).
Regarding claims 61-62, Williams, as modified, discloses the transportation system according to claim 60, but lacks an electric motor, plural axles, and wheels as claimed.
Lior discloses a transportation system (vehicle) comprising:
an electric motor (20); at least one element (4 wheels and 2 axels) coupled to and configured to be driven by the electric motor (20) in order to move the transportation system between an idling state corresponding to the transportation system being turned on and not moving and an operating state corresponding to the transportation system being turned on and moving; and
an air conditioning system (figure 1D; [0136]), comprising:
a battery (18) electrically connected to the electric motor (20) and an air compressor (40 by way of generator/motor 16).
It would have been obvious to one of ordinary skill in the art to have provided the system of Williams in a transportation type application in order to increase system utility. It has been held that where there exists an art recognized suitability for an intended purpose that it is obvious to apply the known means to the known purpose. MPEP 2144.07. In this instance Williams provides for an ACM arrangement that provides electricity. Lior evidences that ACM type arrangements are known for use in vehicles. Merely applying the known device of Williams to the known purpose of a transportation system is prima facie obvious yielding predictable results.
Regarding claim 63, Williams further discloses the air conditioning system is a coolant-free air conditioning system (there is no liquid coolant in the system of Williams). Coolant is understood in the context of the claim to be a liquid coolant, e.g. water or glycol
Regarding claim 64, Williams further discloses an air compressor motor (31/33) coupled to the turboexpander and configured to provide a source of kinetic energy to cause the compressor wheel to compress the air.
Regarding claims 65, Williams, as modified, discloses the air conditioning system according to claim 54, including a generator (7), wherein the drive shaft (34) is coupled to the generator (7), and wherein the expander wheel (9) and the generator (7) are configured to convert the source of kinetic energy and energy in the air flowing into the expander wheel, into mechanical energy of the driveshaft, and then convert the mechanical energy of the drive shaft into electrical energy in the generator (7) and power the compressor (5).
Williams lacks a battery. Lior as noted above provides a battery 18. It would have been obvious to one of ordinary skill in the art to have provided Williams with a battery in order to store excess power for later use in the compressor motor.
Regarding claim 66, Williams further discloses the air conditioning system is a coolant-free air conditioning system (there is no liquid coolant in the system of Williams). Coolant is understood in the context of the claim to be a liquid coolant, e.g. water or glycol
Regarding claim 67, Williams discloses a generator (7) coupled to the drive shaft (34) and configured to harness energy from the air.
Response to Arguments
Applicant's arguments filed 6/24/2026 have been fully considered. It is agreed that as claim 52 has been cancelled that rejections thereof are moot.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Michalakos et al (US 11,780,590) blower for air distribution; Brutscher (US 7,467,524) air distribution blower.
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 CHRISTOPHER R ZERPHEY whose telephone number is (571)272-5965. The examiner can normally be reached M-F 7:00-4:00 PM.
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, Jianying Atkisson can be reached at 5712707740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER R ZERPHEY/Primary Examiner, Art Unit 3799
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