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 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5 of U.S. Patent No. US 11,788,793. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between claims 1-2 of the application and claims 1 and 5 of the patent lies in the fact that the patent claim includes many more elements and is thus much more specific. Thus the invention of claim 1-2 are in effect a “species” of the “generic” invention of claims 1 and 5. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d2010 (Fed. Cir. 1993). Since claims 1-2 are anticipated by claims 1 and 5 of the patent, they are not patentable distinct from claims 1 and 5.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the limitation of “a low pressure inlet at said cold end of said shell and a low pressure outlet at said hot end of said shell” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Applicant discloses (figures 2A-2B) the opposite of what being claimed, wherein the low pressure inlet (204) is located at the hot end (105) of the shell, and the low pressure outlet (205) is located at the cold end of the shell.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-2 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. The limitation of “a low pressure inlet at said cold end of said shell and a low pressure outlet at said hot end of said shell” renders the scope of the claim indefinite since applicant discloses the opposite in which the low pressure inlet (204) is located at the hot end (105) of the shell, and the low pressure outlet (205) is located at the cold end of the shell. (figures 2-3 and paragraph 21-22). Therefore, it is not clear whether applicant claims erroneously the subject matter.
Claims 1-2 are further rejected as can be best understood by the examiner in which the low pressure inlet is can be located either at the hot end or the cold end and the low pressure outlet is located at either the cold end or the hot end.
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.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Bare Howard J. (US 3,669,185) in view of Cameron (US 4,357,991) and Nakagome et al. (US 2002/0162651). Howard discloses (figures 2, 3 and 5) a recuperator comprising: an annular core (tube bundle) comprising a plurality of parallel tubes 20 or 51 (read as “microtubes”) wherein each microtube 20 comprises a hot end (right) and a cold end (left) and the core further comprises a series of baffles (30,31,32) perpendicular to said microtubes 20; an outer void (space between the shell and tube bundle) surrounding said core; a shell (11 or 50) surrounding said outer void wherein the shell comprises a hot end (right) and a cold end (left) wherein the shell further comprises an inlet 15 (read as a “low pressure”) at the hot end of the shell and an outlet 14 (read as a “low pressure”) at the cold end of the shell ; a hot end tube sheet 25 located adjacent to the hot ends of the microtubes and wherein the microtube hot ends extend into the hot end tube sheet 25; a hot end end cap (12 and end piece wherein said hot end end cap 13 is adjacent to said hot end of said shell 10 and wherein said hot end tube sheet 20 is fixed to said hot end end cap 14 and wherein hot end end cap (12 and end portion of 60, end of the shell 60 in figure 5 is a separate piece from the shell, in combination with the 12 to be considered end cap) further comprises at least one hot end exit port (immediately right of the microtubes ends) and a high pressure outlet 27 wherein said hot end exit port connects said hot ends of said microtubes 22 to said high pressure outlet 27;
a cold end tube sheet 24 located adjacent to said cold ends of said microtubes 20 and wherein said microtube cold ends extend into said cold end tube sheet 24; the cold end tube sheet 24 is capable of moving axially;
a cold end end cap (12’ and end portion of 60, end of the shell 60 in figure 5 is separate piece from the shell, in combination with the 12’ to be considered end cap) wherein the cold end end cap is adjacent to said cold end of the shell 11 and wherein the cold end tube sheet 24 is not fixed to said cold end end cap (as in case 35 is removed to allow axial movement, column 5, lines 19-25) and wherein a cold end tube sheet void exists between said cold end tube sheet 14 and the cold end end cap (i.e. end wall 12’) and wherein the cold end end cap further comprises at least one cold end entry port (immediately left of the microtubes ends) and a high pressure inlet 18 wherein the cold end entry port connects said cold end of said microtube 20 to the cold end entry port.
Regarding the term “inlet” and “outlet”, the recuperator as an apparatus, have openings which are capable of allowing fluid flowing in or out of the recuperator. Therefore, the term “inlet” or “outlet” can be used interchangeably depending on the intended use of the recuperator to allow the fluid to flow in which direction. (See reference to DE 10311529B3, for evidence that the inlet and outlet can be used interchangeably).
Regarding the term “microtube”, the specification does not provide any disclosure of the dimension of the “microtubes.”, therefore, the examiner must interpret the limitation as broadly as its allows, in which any tube can be a microtube. Further, the use of microtubes is not the novelty of the invention.
Bare Howard does not disclose:
the series of baffles 30,31,32 comprises alternating hollow baffles and solid baffles nor
the microtubes 20 laser welded to the tube sheets 24, 25.
Cameron (Figures 1-2) discloses a recuperator 2 comprising:
an annular core comprising a plurality of parallel tubes 18 (read as “microtubes”) wherein each microtube 18 comprises a hot end and a cold end and said core further comprises a series of baffles 10, 14 perpendicular to said microtubes 18 and wherein said series of baffles 10, 14 comprises alternating hollow baffles 10 and solid baffles 14 for the purpose of achieving a desired heat transfer.
Nakagome et al. discloses a recuperator (Figure 1) comprising:
a core comprising a plurality of parallel tubes 3 (read as “microtubes”) wherein each microtube 3 comprises a hot end (left) and a cold end (right);
an outer void surrounding said core; a shell 1 surrounding said outer void wherein said shell 1 comprises a hot end (left) and a cold end (right) wherein said shell 1 further comprises an inlet 4 at said cold end of said shell 1 and an outlet 5 at said hot end of said shell 1;
a hot end tube sheet 2 located adjacent to said hot ends of said microtubes 3 and wherein said microtube hot ends extend into said hot end tube sheet 2;
a cold end tube sheet 2 located adjacent to said cold ends of said microtubes 3 and wherein said microtube cold ends extend into said cold end tube sheet 2;
wherein the microtubes 3 are laser welded to the tube sheets 2 (Figure 3, paragraph 7) for the purpose of minimizing joint corrosion.
It would have been obvious at the time the invention was filed to a person having ordinary skill in the art to employ in Bare Howard an annular core comprising alternating hollow baffles and solid baffles for the purpose of achieving a desired heat transfer as recognized by Cameron, and employ in Bare Howard’s device the microtubes laser welded to the tube sheets for the purpose of minimizing joint corrosion.
Regarding the recitation “for transferring heat between a high pressure fluid stream and a low pressure fluid stream,” it has been held that 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 satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). Further, the recitation of “hot, “cold,” “inlet” and “outlet” merely adjectives or names to describe the intended use or function of structures, which structures are met by the combination of Warner and Cameron.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Warner (3,494,414) in view of Cameron (4,357,991) and Nakagome et al. (2022/0162651).
Warner discloses (figure 1) a recuperator comprising:
a core 18 comprising a plurality of parallel tubes 24 (read as “microtubes”) wherein each microtube 24 comprises a hot end (right) and a cold end (left) and said core 18 further comprises a series of baffles 26 perpendicular to said microtubes 24;
an outer void surrounding said core 18; a shell 10 surrounding said outer void wherein said shell 10 comprises a hot end (right) and a cold end (left) wherein said shell 10 further comprises an inlet 32 (read as a “low pressure”) at said cold end of said shell 10 and an outlet 36 (read as a “low pressure”) at said hot end of said shell 10;
a hot end tube sheet 20 located adjacent to said hot ends of said microtubes 24 and wherein said microtube hot ends extend into said hot end tube sheet 20;
a hot end end cap 14 wherein said hot end end cap 13 is adjacent to said hot end of said shell 10 and wherein said hot end tube sheet 20 is fixed to said hot end end cap 14 and wherein hot end end cap 14 further comprises at least one hot end exit port (immediately right of the microtubes ends) and a high pressure outlet 40 wherein said hot end exit port connects said hot ends of said microtubes 24 to said high pressure outlet 40;
a cold end tube sheet 22 located adjacent to said cold ends of said microtubes 24 and wherein said microtube cold ends extend into said cold end tube sheet 22; the cold end tube sheet is capable of moving axially;
a cold end end cap 16 wherein said cold end end cap 16 is adjacent to said cold end of said shell 10 and wherein said cold end tube sheet 22 is not fixed to said cold end end cap 16 (Figure 3) and wherein a cold end tube sheet void exists between said cold end tube sheet 22 (i.e. flange 55) and said cold end end cap 16 (i.e. end wall) and wherein said cold end end cap 16 further comprises at least one cold end entry port (immediately left of the microtubes ends) and a high pressure inlet 42 wherein said cold end entry port connects said cold end of said microtube 24 to said cold end entry port.
Regarding the term “inlet” and “outlet”, the recuperator as an apparatus, have openings which are capable of allowing fluid flowing in or out of the recuperator. Therefore, the term “inlet” or “outlet” can be used interchangeably depending on the intended use of the recuperator to allow the fluid to flow in which direction. (See reference to DE 10311529B3, for evidence that the inlet and outlet can be used interchangeably).
Regarding the term “microtube”, the specification does not provide any disclosure of the dimension of the “microtubes.”, therefore, the examiner must interpret the limitation as broadly as its allows, in which any tube can be a microtube. Further, the use of microtubes is not the novelty of the invention.
Wagner does not disclose:
the core 18 being annular;
the series of baffles 26 comprises alternating hollow baffles and solid baffles nor
the microtubes 24 laser welded to the tube sheets 20, 22.
Cameron (Figures 1-2) discloses a recuperator 2 comprising:
an annular core comprising a plurality of parallel tubes 18 (read as “microtubes”) wherein each microtube 18 comprises a hot end and a cold end and said core further comprises a series of baffles 10, 14 perpendicular to said microtubes 18 and wherein said series of baffles 10, 14 comprises alternating hollow baffles 10 and solid baffles 14 for the purpose of achieving a desired heat transfer.
Nakagome et al. discloses a recuperator (Figure 1) comprising:
a core comprising a plurality of parallel tubes 3 (read as “microtubes”) wherein each microtube 3 comprises a hot end (left) and a cold end (right);
an outer void surrounding said core; a shell 1 surrounding said outer void wherein said shell 1 comprises a hot end (left) and a cold end (right) wherein said shell 1 further comprises an inlet 4 at said cold end of said shell 1 and an outlet 5 at said hot end of said shell 1;
a hot end tube sheet 2 located adjacent to said hot ends of said microtubes 3 and wherein said microtube hot ends extend into said hot end tube sheet 2;
a cold end tube sheet 2 located adjacent to said cold ends of said microtubes 3 and wherein said microtube cold ends extend into said cold end tube sheet 2;
wherein the microtubes 3 are laser welded to the tube sheets 2 (Figure 3, paragraph 7) for the purpose of minimizing joint corrosion.
It would have been obvious at the time the invention was filed to a person having ordinary skill in the art to employ in Warner an annular core comprising alternating hollow baffles and solid baffles for the purpose of achieving a desired heat transfer as recognized by Cameron, and employ in Warner the microtubes laser welded to the tube sheets for the purpose of minimizing joint corrosion.
Regarding the recitation “for transferring heat between a high pressure fluid stream and a low pressure fluid stream,” it has been held that 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 satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). Further, the recitation of “hot, “cold,” “inlet” and “outlet” merely adjectives or names to describe the intended use or function of structures, which structures are met by the combination of Warner and Cameron.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yuan et al. (CN 111765784A) discloses a single tube pass floating head type heat exchanger.
McKey (US 6,206,086) discloses a multiple pass tube side heat exchanger.
Hartman (US 4,190,101A) discloses a heat exchanger tube base.
W.H. Poore (US 3,301,321) discloses a tube shell heat exchanger.
Kaellis (US 6,808,017) discloses a heat exchanger.
Kovalik et al. (US 3,294,159A) discloses a heat exchanger with spring bias support.
.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THO V DUONG whose telephone number is (571)272-4793. The examiner can normally be reached Monday through Friday 10-6PM.
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, Atkisson Jianying can be reached at 571-270-7740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/THO V DUONG/Primary Examiner, Art Unit 3763
Prosecution Insights