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 Objections
Claims 4-6 are objected to because of the following informalities: “including” appears to be in error for “includes”. Appropriate correction is required.
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: pipe connection part (i.e. part [generic placeholder] for pipe connection [functional language]) in claims 1-6.
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. In the case of pipe connection part, quick disconnect or other pipe connector is considered to the corresponding structure(s).
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.
Claim 3 and 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 3 recites the limitation “except for the heat-medium-circuit-unit-integrated outer contour part, at positions close to the heat-medium-circuit-unit-integrated outer contour part”. This limitation cannot be understood. Does this mean that the fixing plates are not at the outer contour part? Does this mean that the fixing plates are “close to” the outer contour part? Or that the fixing plates are not at the outer contour part or in areas “close to” the outer contour part? Additionally, the term “close” in claim 3 is a relative term which renders the claim indefinite. The term “close” 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. It is unclear how close to the element must be or not be to meet or fail to meet “close to”. To expedite prosecution, prior art was applied to the claim as best it could be understood as presented. Claim 6 is rejected insofar as it is dependent on claim 3 and therefore includes the same error(s).
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) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nishioka et al. (US 2016/0084547: cited by Applicant).
Regarding claim 1, Nishioka et al. shows a heat medium relay unit of an above-ceiling installation type (see at least heat medium relay unit #100), constituting one portion of an air-conditioning apparatus and exchanging heat between refrigerant and a heat medium (see at least Figure 1, unit #100 is interposed between indoor/outdoor units #11/#12 and facilitates heat transfer between refrigerant and heat medium), the heat medium relay unit comprising:
a housing constituting an outer contour (frame and lower housing portions shown, additional housing inherent to prevent injury and/or contamination);
a heat medium circuit unit provided in the housing, and including a heat medium pipe through which the heat medium flows and a pump configured to deliver the heat medium (see at least paragraphs [0036]; [0034]);
a refrigerant circuit unit provided in the housing, and including a refrigerant pipe through which the refrigerant flows (see at least paragraph [0034]); and
a plate-type heat exchanger (see at least heat exchangers #1a/#1b, which are depicted as plate-type heat exchangers, see at least Figures 1 and 4) configured to exchange heat between the refrigerant, flowing through the refrigerant circuit unit, and the heat medium, flowing through the heat medium circuit unit (see at least paragraph [0034]), wherein
the heat medium circuit unit includes a heat medium pipe connection part and an external heat medium pipe connection part, the heat medium pipe connection part being connected to the plate-type heat exchanger, the external heat medium pipe connection part being connected to an external heat medium pipe (see at least paragraphs [0088]; [0092]-[0093]),
the heat medium circuit unit and the refrigerant circuit unit are disposed in a non- overlapping manner as viewed in a plan view (see at least paragraph [0092]-[0093]: since the refrigerant circuit and the heat medium circuit can be separated singly, there must exist at least one plan view for which they do not overlap), and
the heat medium pipe connection part is connected to the plate-type heat exchanger by a detachable connection part, and the external heat medium pipe connection part is connected to the external heat medium pipe by a detachable connection part (see at least paragraphs [0092]-[0093]).
Regarding claim 2, Nishioka et al. further shows comprising a heat-medium-circuit-unit-integrated outer contour part in which a heat-medium-circuit- unit holding plate and the heat medium circuit unit are integrally formed, the heat-medium- circuit-unit holding plate constituting one portion of the housing (see at least paragraph [0068]).
Regarding claim 3, Nishioka et al. further shows comprising fixing plates used for installation of the heat medium relay unit above a ceiling (see at least paragraph [0065]), wherein
the fixing plates are provided in plurality to the heat-medium-circuit-unit-integrated outer contour part, and the fixing plates are provided in plurality to portions of the heat medium relay unit, except for the heat-medium-circuit-unit-integrated outer contour part, at positions close to the heat-medium-circuit-unit-integrated outer contour part (see at least paragraph [0065]).
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) 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nishioka et al. (US 2016/0084547: cited by Applicant).
Nishioka et al. discloses all the elements of claims 1-3, upon which claims 4-6 depend (see rejection(s), above).
Regarding claims 4-6, Nishioka et al. further discloses wherein the refrigerant circuit unit including a refrigerant pipe connection part and a plate- side refrigerant pipe connection part connected to the refrigerant pipe connection part (see at least paragraphs [0088]; [0092]-[0093]),
the plate-type heat exchanger is provided such that a plate-side heat medium pipe connection part connected to the heat-medium pipe connection part and the plate-side refrigerant pipe connection part connected to the refrigerant pipe connection part are disposed separately (see at least paragraphs [0088];[0092]-[0093]), with the heat medium circuit unit being on a side of the plate-side heat medium pipe connection part, and the refrigerant circuit unit being on a side of the plate-side refrigerant pipe connection part, and the heat medium circuit unit and the refrigerant circuit unit are disposed separately (see at least paragraphs [0088]; [0092]-[0093]).
Nishioka et al. does not disclose the plate-type heat exchanger is provided such that a plate-side heat medium pipe connection part connected to the heat-medium pipe connection part and the plate-side refrigerant pipe connection part connected to the refrigerant pipe connection part are disposed separately on a left part and a right part of the plate-type heat exchanger relative to a center line of the plate- type heat exchanger, and the heat medium circuit unit and the refrigerant circuit unit are disposed in such a way as to face each other across the center line of the plate-type heat exchanger.
There is no evidence of record that establishes that providing the plate-type heat exchanger is provided such that a plate-side heat medium pipe connection part connected to the heat-medium pipe connection part and the plate-side refrigerant pipe connection part connected to the refrigerant pipe connection part are disposed separately on a left part and a right part of the plate-type heat exchanger relative to a center line of the plate- type heat exchanger, and the heat medium circuit unit and the refrigerant circuit unit are disposed in such a way as to face each other across the center line of the plate-type heat exchanger would result in a difference in function of the Nishioka et al. system. Further, a person having ordinary skill in the art, being faced with modifying the system of Nishioka et al., would have reasonable expectation of success in making such a modification and it appears that the system would function as intended being given the claimed arrangement. Lastly, Applicant has not disclosed that the claimed arrangement solves any stated problem, and therefore there appears to be no criticality placed on the arrangement as claimed such that it produces an unexpected result.
It would, therefore, have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide the system of Nishioka et al. with the plate-type heat exchanger is provided such that a plate-side heat medium pipe connection part connected to the heat-medium pipe connection part and the plate-side refrigerant pipe connection part connected to the refrigerant pipe connection part are disposed separately on a left part and a right part of the plate-type heat exchanger relative to a center line of the plate- type heat exchanger, and the heat medium circuit unit and the refrigerant circuit unit are disposed in such a way as to face each other across the center line of the plate-type heat exchanger as an obvious matter of design choice within the skill of the art (see also In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).).
Conclusion
The prior art made of record and not relied upon is considered pertinent to the Applicant’s disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAVIA SULLENS whose telephone number is (571)272-3749. The examiner can normally be reached M-R 6:30-4:30 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jianying Atkisson 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.
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/TAVIA SULLENS/Primary Examiner, Art Unit 3763
