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 .
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 8-21, drawn to a spray nozzle and an assembly, classified in B05B1/048, and
II. Claims 22-27, drawn to a heat exchange system, classified in F28B 203/00.
The inventions are distinct, each from the other because of the following reasons:
Inventions II and I are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because Invention II does not require the D-shaped internal bore. The subcombination has separate utility such as non-heat exchanger spraying nozzle and assembly.
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because at least the following reason(s) apply:
the inventions have acquired a separate status in the art in view of their different classification
the inventions have acquired a separate status in the art due to their recognized divergent subject matter
the inventions require a different field of search (e.g., searching different
classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other invention.
This application contains claims directed to the following patentably distinct species:
Species I, Figures 6A and 6B;
Species II, Figure 9A;
Species III, Figure 10;
Species IV, Figure 12; and
Species V, Figure 13.
The species are independent or distinct because claims to the different species recite the mutually exclusive characteristics of such species. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, it appears that claims 8 and 17 are generic.
There is a search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply:
The species or groupings of patentably indistinct species have acquired a separate status in the art due to their recognized divergent subject matter; and
The species or groupings of patentably indistinct species have acquired a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or a grouping of patentably indistinct species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a telephone conversation with Mr. Matthew J. Seward on July 22, 2026, a provisional election was made without traverse to prosecute the invention I and Species V, where claims 8-21 read on the elected invention and Species. Affirmation of this election must be made by applicant in replying to this Office action.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Drawings
The drawings are objected to under 37 CFR 1.84(a)(2) because color drawings (gray shading in Figs. 1-7, 9A and 10-15) are not permitted in an application, or copy thereof, submitted under the Office electronic filing system. The Office will accept color drawings in utility or design patent applications and statutory invention registrations only after granting a petition filed under this paragraph explaining why the color drawings are necessary.
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 double set of threads as recited in claim 10 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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 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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless 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 a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “connection portion” in claim 8 where “portion” is the placeholder and “connection” is the functional language.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 8-21 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 term “D-shaped” in claim 8 is a relative term which renders the claim indefinite. The term “D-shaped” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The exact size, shape and geometry to meet the claim limitation is not known. In other words, based on different type of font, the limitation “D-shaped” can be “D,” “D,” “D,” “D” and many more. Which one would meet the claim limitation? Why and why not? For the purpose of examination, the limitation “D-shaped” is defined by having a flat sidewall and a curved sidewall.
Claim 16 recites the limitation "the flat sidewall" in line 3. There is insufficient antecedent basis for this limitation in the claim. It is unclear if the Applicant is referring the "flat sidewall" of the first D-shaped internal bore or the second D-shaped internal bore? Furthermore, if the "flat sidewall," in line 3, is referring to the first D-shaped internal bore, then it is unclear the "flat sidewall," which is a part/feature of the first D-shaped internal bore separate from itself (the first D-shaped internal bore)?
The above are just examples of inconsistencies and problematic issues noted by the Examiner. Applicant is advised to carefully review and amend the application to correct other deficiencies. For the purpose of examination, the claims will be examined as best understood by the Examiner.
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.
Claim(s) 8, 9, 11-13, 15-17 and 19-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aprea et al. (US4231524. Aprea hereinafter).
With respect to claim 8, Aprea discloses a spray nozzle (Figs. 1-9) for a heat exchanger, the spray nozzle comprising: a nozzle body having a first D-shaped internal bore (Fig. 5) extending in a longitudinal direction (along 18) of the spray nozzle, the first D-shaped internal bore being defined by: a flat sidewall (21); and a curved sidewall (22); an inlet (16 with 19) defined at a first (right) end of the nozzle body; an outlet (from 20 to 15) defined at a second end of the nozzle body, the second (left) end being opposite the first end along the longitudinal direction (on the left and right sides/ends of 18), the outlet being offset from the inlet along a (vertical) direction (Fig. 1) that is perpendicular to the longitudinal direction; and a connection portion (19) at the first end of the nozzle body, the connection portion being configured to (capable of) interface with a spray branch or a pipe adapter.
With respect to claim 9, Aprea discloses the spray nozzle of claim 8, further comprising a second D-shaped internal bore (26 including portion of flat sidewall 25. Fig. 3), the second D-shaped internal bore sharing the flat sidewall with the first D-shaped internal bore.
With respect to claim 11, Aprea discloses the spray nozzle of claim 8, wherein the outlet has a D-shaped cross section.
With respect to claim 12, Aprea discloses the spray nozzle of claim 8, further comprising a flat planar slanted surface (angled surface immediately upstream of 25. Fig. 3) at a first (upstream) end of the flat sidewall of the first D-shaped internal bore.
With respect to claim 13, Aprea discloses the spray nozzle of claim 8, further comprising a spray outlet (15) at a first (downstream) end of the first D-shaped internal bore, the spray outlet comprising a downwardly slanted top (rim) flange (14) and a bottom (cylindrical) flange (11), wherein the spray outlet provides a spray pattern of 170 degrees or greater.
With respect to claim 15, Aprea discloses the spray nozzle of claim 8, wherein the inlet has a circular cross section (Fig. 2).
With respect to claim 16, Aprea discloses the spray nozzle of claim 8, further comprising: a second D-shaped internal bore (26 including portion of flat sidewall 25. Fig. 3); wherein the flat sidewall separates (delineates) the second D-shaped internal bore from the first D-shaped internal bore, the flat sidewall having a top end (angled surfaces immediately upstream of 25. Fig. 3) tapered on both sides to form two flat planar slanted surfaces facing in opposing directions.
With respect to claim 17, Aprea discloses an assembly (Figs. 1-9) for a heat exchanger, the assembly comprising: a spray nozzle including: a nozzle body comprising a first D-shaped internal bore (Fig. 5), the first D-shaped internal bore having a flat portion (21) and a curved portion (22), a flat planar slanted surface (angled surface immediately upstream of 25. Fig. 3) at a first (upstream) end of the flat portion of the first D-shaped internal bore, and a first connection portion (19); and a pipe adapter (not shown) to connect the spray nozzle to a feed pipe, the pipe adapter comprising a second connection portion (female thread) for receiving the first connection portion of the nozzle body.
With respect to claim 19, Aprea discloses the assembly of claim 17, wherein the first connection portion and second connection portion are threaded.
With respect to claim 20, Aprea discloses the assembly of claim 17, wherein the first connection portion further comprising a threaded hole (of 17) that prevents over and under rotation during field installation by locking the spray nozzle in a fixed (coaxial) orientation.
With respect to claim 21, Aprea discloses the assembly of claim 17, further comprising: an inlet (16 with 19) defined at a first (right) end of the nozzle body; and an outlet (from 20 to 15) defined at a second (left) end of the nozzle body opposite the first end.
Claim Rejections - 35 USC § 103
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) 10 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Aprea in view of DeJong et al. (US 6415937. DeJong hereinafter).
With respect to claim 10, Aprea discloses the spray nozzle of claim 8 except for the connection portion further comprising a double set of threads for mating with an adaptor.
However, DeJong teaches a connection portion (24) comprising a double set of threads (60 and 66. Fig. 4) for (capable of) mating with an adaptor (Col. 4, lines 44-57).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of a connection portion with double set of threads, as taught by DeJong, to Aprea’s connection portion, in order to connect to multiple connection assemblies (Abstract).
With respect to claim 18, Aprea discloses the assembly of claim 17 except for wherein the first connection portion of the nozzle body and the second connection portion of the pipe adapter each include double-start threads.
However, DeJong teaches a connection portion (24) comprising a double-start threads (60 and 66. Fig. 4) for (capable of) mating with another connection portion (Col. 4, lines 44-57).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of a connection portion with double set of threads, as taught by DeJong, to Aprea’s first and second connection portions, in order to connect to multiple connection assemblies (Abstract).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Aprea.
With respect to claim 14, Aprea discloses the spray nozzle of claim 8, Aprea further discloses “in a practical example whirl chamber 11 is 3 1/2 inches in diameter... Col. 3, lines 17-18), Aprea fails to disclose wherein the first D-shaped internal bore has an internal diameter of at least 2 inches across a widest portion of the flat sidewall.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to design the first D-shaped internal bore has an internal diameter of at least 2 inches across a widest portion of the flat sidewall, since the claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Furthermore, a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following patents are cited to show the art with respect to a spray nozzle: Coffey et al., Tate et al. and Wahlin.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHEE-CHONG LEE whose telephone number is (571)270-1916. The examiner can normally be reached Monday-Friday 8am -5pm.
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, Arthur O. Hall can be reached at (571)270-1814. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHEE-CHONG LEE/Primary Examiner, Art Unit 3752 July 22, 2026
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