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 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 1-6 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.
Claim 1 recites the limitation " the lattice" in in line 4. There is insufficient antecedent basis for this limitation in the claim since it is unclear if “the lattice” is referring to the internal lattice structure or some other lattice.
Claim 1 recites the limitation "the thermal passage exteriorly" in lines 7-8. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-6 are rejected as being dependent from claim 1.
Claim Rejections - 35 USC § 102
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 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 –
(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.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Okonski, Sr. et al. (US Patent No.: 7,413,004 hereinafter “Okonski”).
With respect to claim 1, Okonski discloses a heat exchanger (Fig. 8, 19 and 21) comprising: (a) a tubular member (Fig. 19, 360) having an outer wall (Fig. 19, 368) and a first internal passage (Fig. 21 shows internal passage) and at least one opening for delivering a first fluid into the passage (Fig. 21, opening at 350); (b) an internal lattice structure disposed in the passage (Fig. 21, internal lattice structure 380), the lattice including a plurality of interconnected, overlapping or woven struts which cooperate to define a plurality of apertures (Fig. 21, 380); and (c) a plurality of fins thermodynamically coupled to the internal passage exteriorly of the internal passage (Fig. 19, external fins 390 are thermally coupled to the interior passage).
With respect to claim 2, Okonski discloses the heat exchanger of Claim 1 as discussed above. It is noted that claim 2 contains a product by process limitation (i.e. the heat exchanger is manufactured by additive manufacturing) and that the product by process limitation does not limit the claim to recite the step, just the structure obtained by performing the step. Further, in product-by-process claims, “once a product appearing to be substantially identical is found and a 35 U.S.C. 102/103 rejection [is] made, the burden shifts to the applicant to show an unobvious difference.” MPEP 2113. This rejection under 35 U.S.C. 102/103 is proper because the “patentability of a product does not depend on its method of production.” In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985).
With respect to claim 3, Okonski discloses the heat exchanger of Claim 2 as discussed above and below. Okonski also discloses wherein: the heat exchanger has a serpentine configuration (Fig. 19).
With respect to claim 4, Okonski discloses the heat exchanger of Claim 2 as discussed above and below. Okonski also discloses wherein: the tubular member is a closed loop heat exchanger (Col. 2).
With respect to claim 5, Okonski discloses the heat exchanger of Claim 2 as discussed above and below. It is noted that claim 5 contains a product by process limitation (i.e. the heat exchanger is manufactured by a DED or SLM process) and that the product by process limitation does not limit the claim to recite the step, just the structure obtained by performing the step. Further, in product-by-process claims, “once a product appearing to be substantially identical is found and a 35 U.S.C. 102/103 rejection [is] made, the burden shifts to the applicant to show an unobvious difference.” MPEP 2113. This rejection under 35 U.S.C. 102/103 is proper because the “patentability of a product does not depend on its method of production.” In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985).
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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Okonski, Sr. et al. (US Patent No.: 7,413,004 hereinafter “Okonski”) in view of Joseph et al. (US Patent No.: 11,118,838 hereinafter “Joseph”).
With respect to claim 2, Okonski discloses the heat exchanger of Claim 1 as discussed above. Joseph teaches the product by process limitation of additive manufacturing the heat exchanger (Col. 2, lines 25-30). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified the heat exchanger of Okonski to be additively manufactured as taught by Joseph to achieve varied tubular dimensions and to tailor to desired operating environments (Col. 2, lines 25-30).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Okonski, Sr. et al. (US Patent No.: 7,413,004 hereinafter “Okonski”) in view of Muley et al. (US Publication No.: 2020/0370841 hereinafter “Muley”).
With respect to claim 6, Okonski discloses the heat exchanger of Claim 1 as discussed above. Okonski does not disclose wherein: the fins are defined by a solid component of a material differing from that of the tubular element and lattice.
Muley teaches a heat exchanger with fins attached to a tube that has a different material than the tube (Para 0045). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified the fin material of Okonski to be different than the tube material as taught by Muley to have a desired material property that is corrosion resistant which reduces maintenance and cost (Para 0045).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLAIRE E ROJOHN III whose telephone number is (571)270-5431. The examiner can normally be reached 9:00-5:00 M-F.
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/CLAIRE E ROJOHN III/ Primary Examiner, Art Unit 3763
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