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 .
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.
Specification
The disclosure is objected to because of the following informalities:
Citations to specific claim numbers in the specification such as “claim 8”, “claim 10” and “claim 1” on Page 1 of the instant specification should be removed since claims numbers and content of the claims change throughout prosecution of the application.
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. Specifically, the claim limitation “at least one heat transmission means” in claim 1 will be treated 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 1-10 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 contains the limitation “A device (3) for a fairground ride (1), in particular for a roller coaster”, which is unclear. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “A device (3) for a fairground ride (1)”, and the claim also recites “in particular for a roller coaster” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purpose of this Office Action, the limitation “in particular for a roller coaster” will not be treated as part of claim 1.
Claim 1 additionally sets forth “at least one first Peltier element” in line 7 and subsequently refers to “the first Peltier element” in line 11 which does not have proper antecedent basis. For the purpose of this Office Action, “the first Peltier element” in line 11 will be treated as if it reads “the at least one first Peltier element”.
Claims 2-10 are additionally rejected as being dependent on a rejected base claim and including all of the limitations thereof.
Claim 2 contains the limitation “the consumer comprises an electricity storage unit, in particular an electricity storage unit of the vehicle”, which is unclear. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation “the consumer comprises an electricity storage unit”, and the claim also recites “in particular an electricity storage unit of the vehicle” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purpose of this Office Action, the limitation “in particular an electricity storage unit of the vehicle” will not be treated as part of claim 2.
Claim 4 contains the limitation “the at least one second Peltier element (42) is thermally coupled to the component (10) which is to be cooled, in particular in that the at least one second Peltier element (42) is arranged on the surface (11) of the component which is to be cooled”, which is unclear. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation “the at least one second Peltier element (42) is thermally coupled to the component (10) which is to be cooled”, and the claim also recites “in particular in that the at least one second Peltier element (42) is arranged on the surface (11) of the component which is to be cooled” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purpose of this Office Action, the limitation “in particular in that the at least one second Peltier element (42) is arranged on the surface (11) of the component which is to be cooled” will not be treated as part of claim 4.
Claims 4-6 depend on claim 1 and recite the limitation “the at least one second Peltier element” which does not have antecedent basis in claim 1. For the purpose of this Office Action, claims 4-6 will be treated as if they depend on claim 3 in order to provide proper antecedent basis for all the claim limitations.
Claim 8 contains the limitation “A vehicle (2) of a fairground ride (1), in particular a roller coaster, having a device (3) according to claim 1”, which is unclear. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 8 recites the broad recitation “A vehicle (2) of a fairground ride (1)”, and the claim also recites “in particular a roller coaster” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purpose of this Office Action, the limitation “in particular a roller coaster” will not be treated as part of claim 8.
Claim 9 is additionally rejected as being dependent on a rejected base claim and including all of the limitations thereof.
Claim Rejections - 35 USC § 102
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 1-6 and 8-9 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Weickert et al. (WO 2016074918 A1).
Regarding claim 1, Weickert discloses a device for recovering energy in Figures 1 and 2, having
a component which is to be cooled (Page 13 lines 14-21, the storage vessel, exhaust gas system or sorption medium can be cooled by the Peltier device),
a cooling apparatus (Peltier element 1, Page 10 lines 22-38 and Page 13 lines 14-21) and
at least one heat transmission means (hot side 3 has a surface which transmits heat), Figures 1-3 and Page 14 line 33-Page 15 line 7),
wherein the cooling apparatus (Peltier element 1) is arranged on a surface of the component which is to be cooled and comprises at least one first Peltier element (1) (Page 10 lines 22-38 and Page 13 lines 14-21, it is noted that the limitation “arranged on” does not require direct contact or a particular order or the components),
wherein the at least one first Peltier element (1) is arranged between the surface of the component (cold side 5) and the at least one heat transmission means (hot side 3) (Figures 1-3), and
wherein the at least one first Peltier element (1) is operated by generator (Page 10 lines 22-38 and Page 13 lines 14-21, voltage difference applied to device requires some form of generator) and is connected electrically to a consumer (battery 15, Figure 1 and Page 4 lines 30-37), and
wherein the at least one first Peltier element (1) energizes the consumer (charges battery 15, Figure 1 and Page 4 lines 30-37).
Regarding the limitation “for a fairground ride”, statements in the preamble reciting the purpose or intended use of the claimed invention which do not result in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art do not limit the claim and do not distinguish over the prior art apparatus (or process). See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) and cases cited therein, as it has been held that the recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). See also MPEP § 2111.02, §2112.02 and 2114-2115. The device of Weickert is capable of being used in a fairground ride and thus satisfies the claim requirements.
Regarding claim 2, Weickert discloses all of the claim limitations as set forth above. Weickert additionally discloses that the consumer (15) comprises an electricity storage unit (battery 15, Figure 1 and Page 4 lines 30-37).
Regarding claim 3, Weickert discloses all of the claim limitations as set forth above. Weickert additionally discloses that the consumer comprises at least one second Peltier element (Page 14 lines 25-43, see multiple thermoelectric devices).
Regarding claim 4, Weickert discloses all of the claim limitations as set forth above. Weickert additionally discloses that the at least one second Peltier element is thermally coupled to the component which is to be cooled (Page 14 lines 25-43 and Page 10 lines 22-27).
Regarding claims 5 and 6, Weickert discloses all of the claim limitations as set forth above. Weickert additionally discloses that a cooling side of the at least one second Peltier element is thermally coupled to the component and a heating side of the at least one second Peltier element is thermally coupled to the at least one heat transmission means (Page 14 lines 25-43 and Page 10 lines 22-27).
Regarding claim 8, Weickert discloses all of the claim limitations as set forth above. Weickert additionally discloses a vehicle having a device as set forth above (abstract, Figure 1 and Page 13 lines 40-43).
Regarding the limitation “of a fairground ride”, statements in the preamble reciting the purpose or intended use of the claimed invention which do not result in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art do not limit the claim and do not distinguish over the prior art apparatus (or process). See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) and cases cited therein, as it has been held that the recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). See also MPEP § 2111.02, §2112.02 and 2114-2115. The vehicle of Weickert is capable of being used in a fairground ride and thus satisfies the claim requirements.
Regarding claim 9, Weickert discloses all of the claim limitations as set forth above. Weickert additionally discloses that the device is arranged on at least one brake (As discussed in Page 4 line 2, the vehicle can stop which necessarily requires a brake of some type. The limitation “arranged on” does not require direct contact or any particular spatial arrangement. All of the components of the vehicle of Weickert are “arranged on” each other.).
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.
Claims 7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Weickert et al. (WO 2016074918 A1), as applied to claim 1 above, in view of Frau (EP 1607122A2, see English machine translation provided for mapping).
Regarding claim 7, Weickert discloses all of the claim limitations as set forth above. Weickert does not explicitly disclose that the at least one heat transmission means comprises cooling ribs and/or cooling fins.
Frau discloses a Peltier device comprising at least one heat transmission means comprises cooling ribs and/or cooling fins ([51]).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to use cooling fins as the at least one heat transmission means in the device of Weickert, as taught by Frau, because it would amount to the simple substitution of one known heat transmission element for another to obtain predictable results.
Regarding claim 10, Wickert discloses all of the claim limitations as set forth above. Weickert additionally discloses a vehicle comprising a device as set forth above (abstract). Weickert does not disclose a fairground ride comprising the vehicle and at least one device as set forth above.
Frau discloses a fairground ride ([1]-[2]) comprising a vehicle in Figure 1 and a Peltier device for cooling the vehicle ([51]).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to combine the vehicle and Peltier device of Weickert with a fairground ride, as taught by Frau, because it would amount to nothing more than the combination of prior art elements according to known methods to yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDSEY A BUCK whose telephone number is (571)270-1234. The examiner can normally be reached Monday-Friday 9am-5:30pm.
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/LINDSEY A BUCK/Primary Examiner, Art Unit 1728
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