DETAILED ACTION
Claims 1-12 were filed with the Preliminary Amendment dated 09/18/2025.
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 .
Information Disclosure Statement
The information disclosure statement filed 09/18/2025 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. Complete copies of DE 2849837 and EP0884478 are missing. However, the examiner has attached copies of DE 2849837 and EP0884478 with the attached PTO-892 form, and those references have been reviewed.
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 “air between the housing and the bladder is fluidically connected to the atmosphere via valve” (claim 4) and “additional device” (claim 6, 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 Rejections - 35 USC § 112b
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 12 is 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 12 recites the limitation "the drain" in line 5. There is insufficient antecedent basis for this limitation in the claim. Claim 12 depends from claim 7. It is not clear if claim 12 should be amended to state “a drain” or if claim 12 should be amended to depend from claim 8 (which introduces a drain). For purposes of examination, claim 12 will be construed as if it depends from claim 8.
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, 5-10, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP1847789 (hereinafter referred to as “Castellana”).
With regard to claim 1, Castellana discloses a device (Fig 1) comprising a collecting tank (6) having a feed (line with 10) for a mixture of sealing oil and coolant (“refrigerant and oil” para [0024]; see also [0028]), a drain (line and valve leading to oil recovery tank 8, see annotated Fig 1) for sealing oil (“oil recovery tank” para [0028]), and an additional tank (7) which is designed for collecting coolant (para [0030]: “refrigerant carried to the lung vessel 7”) and is fluidically connected to the collecting tank (6) (see Fig 1).
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With regard to claim 5, Castellana discloses a valve (valve shown leading from 6 into 7, see annotated Fig 1) between the collecting tank (6) and the additional tank (7).
With regard to claim 6, Castellana discloses that the collecting tank (6) has a bleed valve (valve shown in line to 9, see annotated Fig 1) that forms a fluidic connection between the coolant in the collecting tank (6) and an additional device (additional device is 9; see annotated Fig 1).
With regard to claim 7, Castellana discloses a method of collecting a sealing oil and coolant (method is inherent in apparatus shown and described for Fig 1), comprising the steps of: feeding (feeding along line with 10) a mixture of sealing oil and coolant (“refrigerant and oil” para [0024]; see also [0028]) into a collecting tank (6); collecting the coolant escaping from the sealing oil in an additional tank (7) (para [0030]: “refrigerant carried to the lung vessel 7”).
With regard to claim 8, Castellana discloses that the collecting tank (6) is filled with coolant from the additional tank (7) when sealing oil is being removed from the collecting tank (6) via a drain (line/valve toward 8; para [0028]) (coolant from additional tank 7 is returned to collecting tank 6 along line with arrow pointed toward 6 in Fig 1 while oil ca be removed via the drain to 8).
With regard to claim 9, Castellana discloses a valve (valve shown leading from 6 into 7, see annotated Fig 1) between the additional tank (7) and the collecting tank (6).
With regard to claim 10, Castellana discloses a bleed valve (valve in line leading to 9, see annotated Fig 1) between the collecting tank (6) and the additional tank (7) (valve is between 6 and 7 as can be seen in Fig 1) establishes a fluidic connection between the coolant in the collecting tank (6) and an additional device (9).
With regard to claim 12, Castellana discloses (as best understood) in a first process step, the mixture of sealing oil and coolant is in the collecting tank (6) (“refrigerant and oil” para [0024]; see also [0028]) and the coolant separates from the sealing oil and collects above the sealing oil (because oil outlet at bottom and coolant outlet higher up for lines leading to and from 7), where the coolant above the sealing oil fills the additional tank (7) (para [0030]: “refrigerant carried to the lung vessel 7”) (line to 7 is above line to oil tank 8), where, in a second process step, the collected sealing oil is removed via the drain (line/valve leading to 8 which is at bottom of 6) and the space above the sealing oil in the collecting tank (6) is filled with coolant from the additional tank (7) (Fig 1 shows coolant returning from additional tank 7 to collecting tank 6 at top of tank 6 via a return line shown by arrow pointed to 6).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2, 3, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over EP1847789 (hereinafter referred to as “Castellana”) in view of WO 2014/035134 (hereinafter referred to as “Korea Institute”) (as evidenced by Translation).
With regard to claim 2, Castellana discloses that the additional tank is a lung vessel (para [0030]), but is silent as to its features.
Castellana discloses all the claimed features with the exception of disclosing wherein the additional tank has a bladder made of an elastic material.
Korea Institute teaches that it is known in the art to modify a vessel for storing coolant (see abstract; coolant enters via 23b and exits via 23a, similar to that of Castellana’s tank 7) to include a bladder (bellows 23) made of an elastic material. The bladder (23) is considered to be made of an elastic material because the bladder expands and contracts (page 7, lines 1-3).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to utilize an additional tank with a bladder made of elastic material as taught by Korea Institute in place of the additional tank of Castellana, since the tanks are known equivalents and the use of which would be known to one of ordinary skill in the art.
Alternatively, if Korea Institute is not considered to teach the bladder is made of an elastic material, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to make the variable volume bladder of Korea Institute out of any suitable material, such as elastic material, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice (See MPEP 2144.07).
With regard to claim 3 (claim 3 depends from claim 2), the combination discloses that the volume of the bladder (bellows 23) is variable (page 6, line 7 of Korea Institute).
With regard to claim 11, Castellana discloses that the additional tank is a lung vessel (para [0030]), but is silent as to its features.
Castellana discloses all the claimed features with the exception of disclosing wherein the additional tank has a bladder made of an elastic material and the volume of the bladder is variable.
Korea Institute teaches that it is known in the art to modify a vessel for storing coolant (see abstract; coolant enters via 23b and exits via 23a, similar to that of Castellana’s tank 7) to include a bladder (bellows 23) made of an elastic material. The bladder (23) is considered to be made of an elastic material because the bladder expands and contracts (page 7, lines 1-3 of Korea Institute). The volume of the bladder (bellows 23) is variable (page 6, line 7 of Korea Institute).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to utilize an additional tank with a bladder made of elastic material and having a variable volume as taught by Korea Institute in place of the additional tank of Castellana, since the tanks are known equivalents and the use of which would be known to one of ordinary skill in the art.
Alternatively, if Korea Institute is not considered to teach the bladder is made of an elastic material, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to make the variable volume bladder of Korea Institute out of any suitable material, such as elastic material, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice (See MPEP 2144.07).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over EP 1847789 (“Castellana”) in view of WO2014035134 (“Korea Institute”) as applied to claim 2 above, and further in view of U.S. Pat. Pub. No. 2005/0044864 (“Manole”)
With regard to claim 4, Castellana in view of Korea Institute disclose a housing (30) around the bladder (bellows 23) and connected to the atmosphere (via slits 31a).
Castellana in view of Korea Institute discloses all the claimed features with the exception of disclosing wherein air between the housing and the bladder is fluidically connected to the atmosphere via a valve
Manole teaches that it is known in the art to modify a tank with variable fluid amount and having a variable volume chamber (26; para [0040]) that is controlled to change volume by a fluid controlled by a valve (paras [0039] [0040]: “By the use of one or more selectively actuated valves, fluid flow through conduit 32c, and the transfer of thermal energy between conduit 32c and working fluid 30, can be readily controlled”).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the control of the variable volume within bladder (23) of Castellana/Korea Institute by controlling the air between the housing (30) and bladder (23) (exposed via slit 31a) by a valve in place of the piston plate as taught by Manole (see para [0040]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. Pat. Pub. No. 2005/0022551 (“Barratt”) discloses a device with a collecting tank (430) and oil drain (441/439).
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/JESSICA CAHILL/Primary Examiner, Art Unit 3753
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