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 before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
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.
The ADS (2/18/2025) fails to state that this application is a reissue of patent 10,440,856 (application 16/376,912). Correction is required. The new ADS should have all changes underlined and should include the application number (19/056,442) to the headings and in spaces in the domestic benefit section that were left blank due to the application number being unknown when the case was filed.
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. 10,440,856 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.
37 C.F.R. 1.177 (a) and (b) state, “(a) The Office may reissue a patent as multiple reissue patents. If applicant files more than one application for the reissue of a single patent, each such application must contain or be amended to contain in the first sentence of the specification a notice stating that more than one reissue application has been filed and identifying each of the reissue applications by relationship, application number and filing date. The Office may correct by certificate of correction under § 1.322 any reissue patent resulting from an application to which this paragraph applies that does not contain the required notice.
(b) If applicant files more than one application for the reissue of a single patent, each claim of the patent being reissued must be presented in each of the reissue applications as an amended, unamended, or canceled (shown in brackets) claim, with each such claim bearing the same number as in the patent being reissued. The same claim of the patent being reissued may not be presented in its original unamended form for examination in more than one of such multiple reissue applications. The numbering of any added claims in any of the multiple reissue applications must follow the number of the highest numbered original patent claim.
MPEP 1451 states, “An example of the suggested language to be inserted is as follows:
Notice: More than one reissue application has been filed for the reissue of Patent No. 99,999,999. The reissue applications are application number 99/999,994 (the present application); and application numbers 99/999,995 and 99/999,998, both of which are divisional reissues of Patent No. 99,999,999.”
Thus, patent owner is required to add the above notice to the first line of the specification. The claims also require renumbering to begin with claim 16, with an indication that claims 1-15 are canceled (as they are found in the earlier reissue).
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.
While the August 27, 2025 declaration states that claim 1 is being broadened, the error statement of a broadening reissue must state specific claim language that is not seen as required for patentability. MPEP 1414(II)(B) states in part, “For an application filed on or after September 16, 2012 that seeks to enlarge the scope of the claims of the patent, the reissue oath or declaration must also identify a claim that the application seeks to broaden in the identification of the error that is relied upon to support the reissue application. A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement. In specifically identifying the error as required by 37 CFR 1.175(a), it is sufficient that the reissue oath/declaration identify the claim being broadened and a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid.”
Claims 1-20 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 defect(s) in the declaration is set forth in the discussion above in this Office action.
Claim Rejections - 35 USC § 112
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.
Claims 1-14 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In line 10 of claim 1 the second enclosure side area is “communicating with the first enclosure side area”. It is unclear what is meant by “communicating”. Are the enclosures in fluid communication with respect to airflow, or do control elements communicate control signals to components in the enclosures? Claims 2-14 depend from claim 1 so they are unclear due to their dependency. In claim 11, “the digital controller” lacks antecedent basis as the digital controller has been deleted from claim 1. It is also confusing that the controller is within a surface.
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.
Claim(s) 1-5,7-9 and 11-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pre-Grant Publication 2013/0037253 to Schneider et al. (hereinafter “Schneider”) in view of US Patent No. 3,982,405 to Seigler et al.(hereinafter “Seigler”).
Schneider discloses a cooling unit 2 comprising a housing configured to attach to an enclosure opening in a sealed manner, with the enclosure 1 housing heat generating electrical equipment (switchgear components 3), with the housing comprising a first ambient side area with a compressor 27, condensing coils 26 and an ambient air intake (shown in figure 1, but not numbered), a first enclosure side area comprising an electrical box 22, a second enclosure side area communicating with the first enclosure side area and having a fan or impeller 23, an enclosure air intake, an enclosure air return (airflow shown in figure 1, but not numbered) and evaporator coils 21, and a second ambient side area with a fan or impeller 25 and an air exhaust. It is noted that there is no structure delimiting the areas, drawing random shapes around electrical box 22 or the ambient side fan would make 2 areas in the enclosure or ambient sides. The ambient side is sealed off from the enclosure side which is all that is required to separate the areas. Schneider does not specify that that the components of the cooling unit are non-sparking and non-arcing so the enclosure side does not require purging. Seigler discloses a cooling system for use in a hazardous environment. The cooling unit includes a compressor 16, and heat exchangers with blowers passing air over them. The paragraph beginning on line 36 of column 1 establishes that in such a hostile environment a spark from the thermostat or fan motor could cause an explosion. Column 5 lines 2-27 describes the standards that are met by the equipment to eliminate sparks and arcing to eliminate the chance of explosion. It would have been obvious to one of ordinary skill in the art at the time of applicant’s filing to modify the enclosure cooling system of Schneider by using non-sparking and non-arcing components, as taught by Seigler to avoid explosions.
In regard to claim 2, Seigler states in the abstract, “Any switching required in the electrical circuit is done by solid state devices”. In regard to claims 3 and 4, Schneider shows electrical box 22 on the enclosure side. Seigler shows electronics 29 and 39 mounted on plates which are spaced from the plates separating the enclosure side from the ambient side. This forms an air gap. In regard to claim 5, Schneider shows a rectangular housing. In regard to claims 7 and 8, the dimensions are considered a matter of obvious design choice lacking a stated criticality. In regard to claim 9, Seigler in line 20 of column 3 states that the air that cools the condenser exits the rear and the first line of column 4 states that this air enters through side vents 48. In regard to claim 11 (as best understood), the electrical box 22 of Schneider is on a surface that faces the housing. In regard to claims 12-14, Seigler states in lines 8-29 of column 4 that condensate travels along trough 51 in the bottom of the housing. The disclosed V-pocket is seen as an alternative to the well known ball valve to prevent air passage through the condensate path.
Claim(s) 15 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schneider in view of US Pre-Grant Publication 2012/0242206 to Gasser (hereinafter “Gasser”).
Schneider discloses a method of installing a closed loop cooling unit 2 on an enclosure 1. Paragraph 14 states that the cooling device 2 is mounted to the rear wall of the cabinet 1. Figure 1 shows the ambient air passing over the compressor and condenser, while air from the enclosure jets cooled by evaporator 21 and returned to the interior of the enclosure. The ambient side is segregated from the enclosure side, ensuring the air streams do not mix. comprising a housing configured to attach to an enclosure opening in a sealed manner, with the Schneider does not disclose the use of diverter plates that reversibly attach to an exhaust. Gasser discloses a shelter with an enclosure mounted thereto to cool the interior of the shelter. Paragraph 60 describes protection slides 25,26 which are “displaceable between an open position and a closed position of duct openings 23,24”. This is seen to teach diverter plates that reversibly attach to any inlet or outlet in a removable cooling system. It would have been obvious to one of ordinary skill in the art at the time of applicant’s filing to modify the enclosure cooling system and method of Schneider by using movable diverter plates to enable control of the air into and out of the cooling enclosure.
In regard to claim 16, enclosure 1of Schneider houses heat generating electrical equipment (switchgear components 3), with the housing comprising an ambient side area with a compressor 27, condensing coils 26 and an ambient air intake (shown in figure 1, but not numbered), an enclosure side area comprising an electrical box 22 and a fan or impeller 23, an enclosure air intake, an enclosure air return (airflow shown in figure 1, but not numbered) and evaporator coils 21. The ambient side area contains a fan or impeller 25 and an air exhaust. The ambient side is sealed off from the enclosure with the ambient air entering the ambient air inlet and exiting through the ambient air outlet.
Claim(s) 6 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schneider in view of Seigler as applied to claim1-5,7,9 and 11-14 above, and further in view of Gasser.
As discussed above Schneider in view of Seigler renders claim 1 obvious. Claim 6 depends from claim 1 and adds a filter to filter the air entering through the ambient air intake. Gasser shows a cooling system for an enclosure with paragraph 17 describing the use of filters. Using such filters on any inlet in the system is seen to reduce the particulates entering the system. As such, it would have been obvious at the time of applicant’s original filing, from the teaching of Gasser to modify the enclosure cooling system of Schneider by adding filters to reduce the amount of particulates in the system. In regard to claim 10, as detailed above, Gasser shows diverter plates 25,26 which controllably seal or permit flow through the openings of the cooling system.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schneider in view of Gasser as applied to claims 15 and 16 above, and further in view of US Patent No. 5,709,100 to Baer et al. (hereinafter “Baer”).
As discussed above Schneider in view of Gasser renders claim 16 obvious. Claim 17 depends from claim 16 and adds a hot air exhaust on three different sides of the housing. Like the other two references, Baer discloses a system for cooling an enclosure, such as an enclosure housing electrical components. As described in paragraph 3 of Baer, the condenser housing 44 has multiple outlets 56 and 58 (with the third side not shown in the figure, but the housing contains two condenser units and makes the two sides the same. It would have been obvious to one of ordinary skill in the art at the time of applicant’s invention from the teaching of Baer to modify the enclosure cooling system of Schneider by placing an exhaust opening on at least three walls to ensure air flow across the condenser for proper functioning of the cooling system.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schneider in view of Gasser as applied to claims 15 and 16 above, and further in view of either US Pre-Grant Publication 2002/0196605 to Hilpert et al. (hereinafter “Hilpert”) or US Pre-Grant Publication 2015/0114022 to Kreeley et al. (hereinafter “Kreeley”).
As discussed above Schneider in view of Gasser renders claim 16 obvious. Claim 18 depends from claim 16 and adds a connection for a purge tube. Like the two main references, Hilpert and Kreeley disclose systems for cooling an enclosure, such as an enclosure housing electrical components. Hilpert shows a purge system for a hazardous environment such as heat generating electrical components (paragraph 2). Figure 8 of Kreeley shows a purge pressurization system 804. Paragraph 45 describes the purge system and states that it will minimize if not eliminate the hazardous air coming in contact with an ignition source. It would have been obvious to one of ordinary skill in the art at the time of applicant’s invention from the teaching of either Hilpert or Kreeley to modify the enclosure cooling system of Schneider by using a purge tube to provide a safe atmosphere within the enclosure to reduce the chance of an explosion.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schneider in view of Gasser and either Hilpert or Kreeley as applied to claim 18 above, and further in view of Seigler.
As discussed above Schneider in view of Gasser and either Hilpert of Kreeley renders claim 18 obvious. Claim 19 depends from claim 18 and adds that the enclosure side components are non-sparking and non-arcing. Siegler discloses a cooling system with a sealed hazardous air path similar to the other references, but specifies the use of non-sparking and non-arcing components that will not spark so explosions will not occur if the components are operated in the hazardous atmosphere. It would have been obvious to one of ordinary skill in the art at the time of applicant’s invention from the teaching of Seigler to modify the enclosure cooling system of Schneider by using non-sparking and non-arcing components to eliminate the possibility of explosions, even if a purge system is not used.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schneider in view of Gasses as applied to claims 15 and 16 above, and further in view of Seigler.
As discussed above Schneider in view of Gasser renders claim 16 obvious. Claim 20 depends from claim 16 and adds that the enclosure side does not require purging of hazardous air. Siegler discloses a cooling system with a sealed hazardous air path similar to the other references, but specifies the use of non-sparking and non-arcing components that will not spark so explosions will not occur if the components are operated in the hazardous atmosphere. It would have been obvious to one of ordinary skill in the art at the time of applicant’s invention from the teaching of Seigler to modify the enclosure cooling system of Schneider by using non-sparking and non-arcing components to eliminate the possibility of explosions, even if a purge system is not used.
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 1-21 of U.S. Patent No. RE50,310. Although the claims at issue are not identical, they are not patentably distinct from each other because both claim the same inventive concept with only minor, non-patentably distinct differences. Both the new claims and the claims of the ‘310 reissue claim a cooling unit with a housing configured to attach to an enclosure opening in a sealed manner, with the enclosure housing heat generating electrical equipment. The housing comprises a first ambient side area or compartment comprising a compressor, condensing coils and an ambient air intake. There is also a first enclosure side are comprising an electrical box and a second enclosure side are or compartment which communicates with the first enclosure side area or compartment and comprising a fan or impeller, an enclosure air intake, an enclosure air return and evaporator coils in fluid communication with the condensing coils. A second ambient side area or compartment with a fan or impeller and at least one hot air exhausts is claimed in both claim 1s. Both claim 1 further claim the components of the cooling unit are non-sparking and non-arcing and the first and second enclosure side areas or compartments do not require purging of hazardous air and the first and second ambient side areas or compartments are sealed off from the first and second enclosure side areas or compartments. The current claim 1 does not include a plate oriented horizontally that separates the first enclosure side compartment from the first ambient side compartment or the second ambient side compartment being situated below the second enclosure side compartment. The lack of these further limitations mean the current claim 1 will dominate the ‘310 claim 1. A terminal disclaimer would prohibit the licensing of one invention without licensing the other to prevent multiple parties unknowingly having rights to the same invention. The remaining dependent claims are very similar to each other so they do not provide patentable distinctiveness between the two sets of claims. The same is true of claims 16-20 of the current claims when compared to claims 16-20 of the ‘310 reissue. The current claims are broader in scope than the published claims 16-20 of the ‘310 reissue.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM C DOERRLER whose telephone number is (571)272-4807. The examiner can normally be reached M-F, 7-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eileen Lillis can be reached on 571-272-6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM C DOERRLER/Reexamination Specialist, Art Unit 3993
Conferees: /WILLIAM E DONDERO/ Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
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