CTNF 19/016,223 CTNF 93174 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Priority 02-26 AIA Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Information Disclosure Statement The information disclosure statement (IDS) submitted on 01/10/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner. Claim Rejections - 35 USC § 112 07-30-02 AIA The following is a quotation of 35 U.S.C. 112(b): (b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 07-34-01 AIA Claim (s) 2-4 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Claim 2 calls for the limitation “a first cooling medium” and “a second cooling medium” respectively in lines 2 and 4; which limitation is indefinite as it is unclear as to how these colling media relates to the recited cooling media of claim 1. It appears as if there are four separate and distinct cooling media required. Appropriate correction is required. Claim 4 calls for the limitation “the same cooling medium flows through the first cooling channel and the second cooling channel”; which limitation is indefinite for the following reasons: I. it is unclear if the limitation how “the same cooling medium” relates to the recited cooling media of claim 1. II. it is unclear if the limitation references a flow in series through the first cooling channel and the second cooling channel; or III. if the limitation references that the cooling medium that cools the inverter and the cooling medium that cools the transaxle are identical. Appropriate correction is required. Claim(s) 3 is/are indefinite for their dependency on an indefinite base claim. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15-aia AIA Claim(s) 1-3 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Sakamoto (US 20220390323 A1) . Regarding claim 1: Sakamoto discloses a heat utilization circuit (Fig. 1) comprising: a first cooling channel #16 through which a cooling medium configured to cool an inverter #58 flows (Fig. 1; [0041] & [0037]. Note that PCU #58 includes an inverter); and a second cooling channel #50 through which a cooling medium configured to cool a transaxle #48 flows ([0037]), wherein the heat utilization circuit is configured to when a temperature of the cooling medium that has cooled the transaxle is equal to or higher than a temperature of the cooling medium that has cooled the inverter, perform heat exchange between the cooling medium that has cooled the inverter and the transaxle, and when the temperature of the cooling medium that has cooled the transaxle is lower than the temperature of the cooling medium that has cooled the inverter, reduce the heat exchange between the cooling medium that has cooled the inverter and the transaxle (this is achieved at least via #54 and #40; Fig. 1; [0037]). Note: the limitation “ when a temperature of the cooling medium that has cooled the transaxle is equal to or higher than a temperature of the cooling medium that has cooled the inverter, perform heat exchange between the cooling medium that has cooled the inverter and the transaxle, and when the temperature of the cooling medium that has cooled the transaxle is lower than the temperature of the cooling medium that has cooled the inverter, reduce the heat exchange between the cooling medium that has cooled the inverter and the transaxle ” is a contingent limitation. The broadest reasonable interpretation of a system (or apparatus or product) claim having structure that performs a function, which only needs to occur if a condition precedent is met, requires structure for performing the function should the condition occur. See MPEP 2111.04, II. Contingent limitations, See Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016)). By virtue of all the structural limitations required by the claim being present in the prior art, the prior art can achieve this function. Furthermore, the limitation “ when a temperature of the cooling medium that has cooled the transaxle is equal to or higher than a temperature of the cooling medium that has cooled the inverter, perform heat exchange between the cooling medium that has cooled the inverter and the transaxle, and when the temperature of the cooling medium that has cooled the transaxle is lower than the temperature of the cooling medium that has cooled the inverter, reduce the heat exchange between the cooling medium that has cooled the inverter and the transaxle ” constitutes an intended use limitation that does not further limit the structure of the claimed invention. It has been held that “apparatus claims cover what a device is, not what a device does. Hewett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987); MPEP 2114/Il. Regarding claim 2: Sakamoto further discloses wherein a first cooling medium configured to cool the inverter flows through the first cooling channel ([0041] & [0037]); a second cooling medium configured to cool the transaxle flows through the second cooling channel ([0041] & [0037]); the heat utilization circuit further includes a heat exchanger #54 configured to perform heat exchange between the first cooling medium and the second cooling medium ([0037]); and the heat utilization circuit is configured to when a temperature of the second cooling medium that has cooled the transaxle is equal to or higher than a temperature of the first cooling medium that has cooled the inverter, perform the heat exchange in the heat exchanger, and when the temperature of the second cooling medium that has cooled the transaxle is lower than the temperature of the first cooling medium that has cooled the inverter, reduce the heat exchange in the heat exchanger (this is achieved at least via #54 and #40; Fig. 1; [0037]). As pointed out above, the limitation “ when a temperature of the second cooling medium that has cooled the transaxle is equal to or higher than a temperature of the first cooling medium that has cooled the inverter, perform the heat exchange in the heat exchanger, and when the temperature of the second cooling medium that has cooled the transaxle is lower than the temperature of the first cooling medium that has cooled the inverter, reduce the heat exchange in the heat exchanger ” constitutes a contingent limitation and an intended use limitation. Regarding claim 3: Sakamoto further discloses wherein either or both of the first cooling channel and the second cooling channel include a heat exchange channel that passes through the heat exchanger (see Fig. 1), a bypass channel #14 that does not pass through the heat exchanger (see Fig. 2), and a switching valve #40 configured to selectively cause either or both of the first cooling medium and the second cooling medium to flow to either the heat exchange channel or the bypass channel ([0040-0042]); and the switching valve is configured to when the temperature of the second cooling medium that has cooled the transaxle is equal to or higher than the temperature of the first cooling medium that has cooled the inverter, cause either or both of the first cooling medium and the second cooling medium to flow to the heat exchange channel, and when the temperature of the second cooling medium that has cooled the transaxle is lower than the temperature of the first cooling medium that has cooled the inverter, cause either or both of the first cooling medium and the second cooling medium to flow to the bypass channel (see Fig. 1-2, [0040-0042]). Also, as pointed out above, the limitation “ when the temperature of the second cooling medium that has cooled the transaxle is equal to or higher than the temperature of the first cooling medium that has cooled the inverter, cause either or both of the first cooling medium and the second cooling medium to flow to the heat exchange channel, and when the temperature of the second cooling medium that has cooled the transaxle is lower than the temperature of the first cooling medium that has cooled the inverter, cause either or both of the first cooling medium and the second cooling medium to flow to the bypass channel” constitutes a contingent limitation and an intended use limitation . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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 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. 07-20-aia AIA 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. 07-23-aia AIA The factual inquiries set forth in Graham v. John Deere Co. , 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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. 07-21-aia AIA Claim (s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto (US 20220390323 A1) . Regarding claim 4: Sakamoto further discloses wherein the heat utilization circuit further includes a bypass channel #14 configured not to cause the cooling medium that has cooled the inverter to flow through the transaxle (Fig. 2), and a switching valve #40 configured to selectively cause the cooling medium to flow to either the second cooling channel or the bypass channel (Fig. 1-2); and the switching valve is configured to when the temperature of the cooling medium that has cooled the transaxle is equal to or higher than the temperature of the cooling medium that has cooled the inverter, cause the cooling medium that has cooled the inverter to flow to the second cooling channel, and when the temperature of the cooling medium that has cooled the transaxle is lower than the temperature of the cooling medium that has cooled the inverter, increase an amount of the cooling medium that is caused to flow to the bypass channel (see Fig. 1-2, [0040-0042]). Also, as pointed out above, the limitation “ when the temperature of the cooling medium that has cooled the transaxle is equal to or higher than the temperature of the cooling medium that has cooled the inverter, cause the cooling medium that has cooled the inverter to flow to the second cooling channel, and when the temperature of the cooling medium that has cooled the transaxle is lower than the temperature of the cooling medium that has cooled the inverter, increase an amount of the cooling medium that is caused to flow to the bypass channel” constitutes a contingent limitation and an intended use limitation. Sakamoto does not specifically disclose wherein the same cooling medium flows through the first cooling channel and the second cooling channel. However, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Thus, it would have been obvious for one of ordinary skills in the art before the effective filing date to have provided the apparatus of Sakamoto with the same coolant inside the first and second cooling channels. One of ordinary skills would have recognized that doing so would have simplified the design and maintenance of the system by using a single same coolant for each of the two loops rather than distinct coolants; thereby, improving the user friendliness of the system . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Yin (US 20240149637 A1), Hasegawa (US 20210309075 A1), Hasegawa (US 20210300154 A1), Sakamoto (US 20210300147 A1), Hanano (US 20210291628 A1), Sugimura (US 10449830 B2), Katoh (US 20160159204 A1), and Johnston (US 8336319 B2) . Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIONEL W NOUKETCHA whose telephone number is (571)272-8438. The examiner can normally be reached on Mon - Fri: 08:00 AM - 04:00 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, Frantz Jules can be reached on 571-272-6681. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /LIONEL NOUKETCHA/Primary Examiner, Art Unit 3763 Application/Control Number: 19/016,223 Page 2 Art Unit: 3763 Application/Control Number: 19/016,223 Page 3 Art Unit: 3763 Application/Control Number: 19/016,223 Page 4 Art Unit: 3763 Application/Control Number: 19/016,223 Page 5 Art Unit: 3763 Application/Control Number: 19/016,223 Page 6 Art Unit: 3763
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