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 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: liquid feed portion (i.e portion [generic placeholder] for liquid feed(ing) [functional language]) in claim 2; and heating portion (i.e portion [generic placeholder] for heating [functional language]) in claims 5-9.
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 liquid feed portion, the correspond structure(s) are found in paragraph [0059]; in the case of heating portion, please see below.
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 7 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 7 recites the limitation “each of the cells extending from a first end face to a second end face to form a flow path for the second fluid”. This is unclear in that claim 6, upon which claim 7 depends does not require the second fluid. The claim should first be amended to require the second fluid and then form a flow path for the second fluid.
Claims 5-9 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 limitation “heating portion” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 8-9 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 8 recites the limitation “wherein the second fluid heated can flow through the second cylindrical member or a heating portion is provided in the second cylindrical member”. Claim 6, upon which claim 8 depends, recites the limitation “wherein a second fluid heated can flow through the inner peripheral wall or a heating portion is provided within the inner peripheral wall”. It is unclear whether the recitation of claim 8 is in addition to or is a partially redundant presentation. It is believed that the limitation of claim 8 should be more positively linked back to that of claim 6, i.e. to require the one of XXX and further limitation the one of XXX. Claim 9 is rejected insofar as it is dependent on claim 8 and therefore includes the same error(s).
Claim 9 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 9 recites the limitation “each of the cells extending from a first end face to a second end face to form a flow path for the second fluid”. This is unclear in that claim 6, upon which claim 9 depends does not require the second fluid. The claim should first be amended to require the second fluid and then form a flow path for the second fluid.
Claims 10-14 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 10 recites the limitation “and the second fluid heated can flow through the second cylindrical member”. There is insufficient antecedent basis for this limitation in the claim, as claim 1 does not require a second fluid. Claims 11-14 are rejected insofar as they are dependent on claim 10 and therefore include the same error(s).
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 “a third honeycomb structure”. This is unclear since no second honeycomb structure is required in the dependency chain. Clarification is requested.
Claim 14 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 14 recites the limitation “a third honeycomb structure”. This is unclear since no second honeycomb structure is required in the dependency chain. Clarification is requested.
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- 6, 8, and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suzuki et al. (US 2012/0247732).
Regarding claim 1, Suzuki et al. shows an evaporator, comprising:
a first honeycomb structure that is porous (see at least honeycomb structure #1), the first honeycomb structure having an outer peripheral wall (see at least outer peripheral wall #7) and partition walls disposed on an inner side of the outer peripheral wall (see at least partition walls #4), the partition walls defining a plurality of cells, each of the cells extending from a first end face to a second end face to form a flow path for a first fluid (see at least end faces #2; see also Abstract);
a first cylindrical member fitted to the outer peripheral wall, the first cylindrical member having a penetration portion through which a liquid can flow (see at least punching metal #55; paragraph [0189]);
a jacket member disposed at an interval so as to form a flow path for the liquid on a radially outer side of the first cylindrical member (see at least casing #21); and
a liquid feeder capable of feeding the liquid to the flow path for the liquid and of adjusting an amount of the liquid fed (see at least inlet #22: Examiner notes that the inlet not only has the capability of feeding the liquid but also of adjusting the amount fed relative to a source).
Regarding claim 2, Suzuki et al. further shows wherein at least a portion of the outer peripheral wall and the partition walls of the first honeycomb structure is provided with a liquid feed portion that is penetrated in a radial direction of the first honeycomb structure (see at least punching metal #55; paragraph [0189]).
Regarding claim 3, Suzuki et al. further shows wherein the liquid feed portion is at least one slit and/or at least one through hole (see at least punching metal #55; paragraph [0189]).
Regarding claim 4, Suzuki et al. further shows wherein at least a part of the outer peripheral wall of the first honeycomb structure is provided with a groove (see at least paragraph [0190]: fins on wall #7 will form grooves).
Regarding claim 5, Suzuki et al. further shows wherein a heating portion for the first fluid is provided on an upstream side of the first honeycomb structure, based on a flow direction of the first fluid (see at least paragraph [0176]: exhaust gas of an automobile is indicative of an engine of an automobile as upstream heating portion).
Regarding claim 6, Suzuki et al. further shows wherein the first honeycomb structure is a hollow honeycomb structure further comprising an inner peripheral wall (see at least Figures 40A/B inner peripheral wall about heat conductive element #58), wherein the partition walls are arranged between the inner peripheral wall and the outer peripheral wall (see at least cells #3 defined by partition walls #4 are positioned between the inner wall about #58 and the outer wall #7), and
wherein a second fluid heated can flow through the inner peripheral wall or a heating portion is provided within the inner peripheral wall (see at least paragraph [0224]).
Regarding claim 8, Suzuki et al. further shows further comprising a second cylindrical member fitted to the inner peripheral wall (see at least heating element #58; paragraph [0224]),
wherein the second fluid heated can flow through the second cylindrical member or a heating portion is provided in the second cylindrical member (see at least heating element #58; paragraph [0224]).
Regarding claim 15, Suzuki et al. further shows wherein the liquid is water (see at least paragraph [0176]).
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.
Claim(s) 7 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. as applied to claims 6 or 8 above, and further in view of Hamada et al. US 2020/0309471).
Regarding claim 7, Suzuki et al. does not disclose wherein a second honeycomb structure is disposed in the inner peripheral wall of the first honeycomb structure, the second honeycomb structure having an outer peripheral wall and partition walls disposed on an inner side of the outer peripheral wall, the partition walls defining a plurality of cells, each of the cells extending from a first end face to a second end face to form a flow path for the second fluid.
Hamada et al. teaches another evaporator wherein a second honeycomb structure is disposed in the inner peripheral wall of the first honeycomb structure (see at least Figure 3, heat recovery member #40 within inner cylinder #10), the second honeycomb structure having an outer peripheral wall and partition walls disposed on an inner side of the outer peripheral wall, the partition walls defining a plurality of cells, each of the cells extending from a first end face to a second end face to form a flow path for the second fluid (see at least Figure 3, inner part of #10 defines the outer peripheral wall of #40, #40 including partition walls defining a plurality of cells for passage of an additional heat exchange medium).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide the evaporator of Suzuki et al. with wherein a second honeycomb structure is disposed in the inner peripheral wall of the first honeycomb structure, the second honeycomb structure having an outer peripheral wall and partition walls disposed on an inner side of the outer peripheral wall, the partition walls defining a plurality of cells, each of the cells extending from a first end face to a second end face to form a flow path for the second fluid, as taught by Hamada et al., to improve the evaporator of Suzuki et al. by allowing for heat transfer between a plurality of heat transfer fluids, thus allowing for additional heat recovery and greater system efficiency.
Regarding claim 9, Suzuki et al. does not disclose wherein a second honeycomb structure is disposed in the second cylindrical member, the second honeycomb structure having an outer peripheral wall and partition walls disposed on an inner side of the outer peripheral wall, the partition walls defining a plurality of cells, each of the cells extending from a first end face to a second end face to form a flow path for the second fluid.
Hamada et al. teaches another evaporator wherein a second honeycomb structure is disposed in the second cylindrical member (see at least Figure 3, heat recovery member #40 within inner cylinder #10), the second honeycomb structure having an outer peripheral wall and partition walls disposed on an inner side of the outer peripheral wall, the partition walls defining a plurality of cells, each of the cells extending from a first end face to a second end face to form a flow path for the second fluid (see at least Figure 3, inner part of #10 defines the outer peripheral wall of #40, #40 including partition walls defining a plurality of cells for passage of an additional heat exchange medium).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide the evaporator of Suzuki et al. with wherein a second honeycomb structure is disposed in the second cylindrical member, the second honeycomb structure having an outer peripheral wall and partition walls disposed on an inner side of the outer peripheral wall, the partition walls defining a plurality of cells, each of the cells extending from a first end face to a second end face to form a flow path for the second fluid, as taught by Hamada et al., to improve the evaporator of Suzuki et al. by allowing for heat transfer between a plurality of heat transfer fluids, thus allowing for additional heat recovery and greater system efficiency.
Claim(s) 10-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. as applied to claim 1 above, and further in view of Hamada et al. US 2020/0309471).
Regarding claim 10, Suzuki et al. further discloses wherein the first honeycomb structure is a hollow honeycomb structure further comprising an inner peripheral wall, wherein the partition walls are arranged between the inner peripheral wall and the outer peripheral wall (see at least cells #3 defined by partition walls #4 are positioned between the inner wall about #58 and the outer wall #7), and
wherein the evaporator further comprises a second cylindrical member fitted to the inner peripheral wall (see at least heating element #58; paragraph [0224]), and
wherein a first heat exchanger for heating the first fluid is provided on an upstream side of the first honeycomb structure, based on a flow direction of the first fluid (see at least paragraphs [0072]; [0073]).
Suzuki et al. does not disclose and the second fluid heated can flow through the second cylindrical member.
Hamada et al. teaches another evaporator wherein the second fluid heated can flow through the second cylindrical member (see at least Figure 3, heat recovery member #40 within inner cylinder #10, through which a fluid can flow).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide the evaporator of Suzuki et al. with and the second fluid heated can flow through the second cylindrical member, as taught by Hamada et al., to improve the evaporator of Suzuki et al. by allowing for heat transfer between a plurality of heat transfer fluids, thus allowing for additional heat recovery and greater system efficiency.
Regarding claim 11, Suzuki et al. as modified by Hamada et al. further discloses wherein the second fluid flows so as to oppose to the flow direction of the first fluid (see at least Figures 1 and 5, the first and second fluids are in counterflow).
Regarding claim 12, Suzuki et al. further discloses wherein the first heat exchanger comprises a third honeycomb structure having an outer peripheral wall and partition walls disposed on an inner side of the outer peripheral wall, the partition walls defining a plurality of cells, each of the cells extending from a first end face to a second end face to form a flow path for the second fluid; a third cylindrical member fitted to the outer peripheral wall of the third honeycomb structure; and a jacket member disposed at an interval so as to form a flow path for the first fluid, the jacket member being disposed on a radially outer side of the third cylindrical member (see at least paragraphs [0072];[0073]; rejection of claim 1, above).
Regarding claims 13 and 14, Suzuki et al. in view of Hamada et al. does not disclose wherein a second heat exchanger for heating vapor generated in the first honeycomb structure is provided on a downstream side of the first honeycomb structure, based on a flow direction of the first fluid; wherein the second heat exchanger comprises: a third honeycomb structure having an outer peripheral wall and partition walls disposed on an inner side of the outer peripheral wall, the partition walls defining a plurality of cells, each of the cells extending from a first end face to a second end face to form a flow path for the second fluid; a third cylindrical member fitted to the outer peripheral wall of the third honeycomb structure; and a jacket member disposed at an interval so as to form a flow path for the vapor, the jacket member being disposed on a radially outer side of the third cylindrical member .
However, such provision would merely require duplication of the parts set forth in claims 1 and 10 and their functions.
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 evaporator of Suzuki et al. in view of Hamada et al. with wherein a second heat exchanger for heating vapor generated in the first honeycomb structure is provided on a downstream side of the first honeycomb structure, based on a flow direction of the first fluid; wherein the second heat exchanger comprises: a third honeycomb structure having an outer peripheral wall and partition walls disposed on an inner side of the outer peripheral wall, the partition walls defining a plurality of cells, each of the cells extending from a first end face to a second end face to form a flow path for the second fluid; a third cylindrical member fitted to the outer peripheral wall of the third honeycomb structure; and a jacket member disposed at an interval so as to form a flow path for the vapor, the jacket member being disposed on a radially outer side of the third cylindrical member, since it has been held that duplication of parts is within the level of ordinary skill in the art (see In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) (Claims at issue were directed to a water-tight masonry structure wherein a water seal of flexible material fills the joints which form between adjacent pours of concrete. The claimed water seal has a "web" which lies in the joint, and a plurality of "ribs" projecting outwardly from each side of the web into one of the adjacent concrete slabs. The prior art disclosed a flexible water stop for preventing passage of water between masses of concrete in the shape of a plus sign (+). Although the reference did not disclose a plurality of ribs, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.).).
Conclusion
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
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