`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313- 1450
`wwwusptogov
`
`APPLICATION NO.
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`
`
`
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` F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`
`
`
`
`CONF {MATION NO.
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`12/835,568
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`07/13/2010
`
`Susumu Kobayashi
`
`092122—0013
`
`1526
`
`53080
`”90
`W20”
`McpemonwmandEmeryLLp —
`The McDermott Building
`ZERPHEY, CHRISTOPHER R
`BER
`500 North Capitol Street, NW.
`ART UNIT
`PAPER
`WASHINGTON, DC 20001
`——
`3744
`
`
`
`
`
`11/26/2013
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`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
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`mweipdocket @ mwe.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`Application/Control Number: 12/835,568
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`Page 2
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`Art Unit: 3744
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`DETAILED ACTION
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`1.
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`The present application is being examined under the pre-AIA first
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`to invent
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`provisions.
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`2.
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`The amendment filed on 11/6/2013 canceling all claims drawn to the elected
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`invention and presenting only claims drawn to a non-elected invention is non-responsive
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`(MPEP § 821.03). The remaining claims are not readable on the elected invention
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`because:
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`I. Claims 1-5, drawn to a refrigerant cycle utilizing a non-azeotropic refrigerant
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`composition, classified in 62/502.
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`ll. Claims 6-10, drawn to plural refrigerant cycles having evaporators nested on
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`the structure of a cooled enclosure, classified in 62/516.
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`lll. Claims 11-15, drawn to an evaporator structure with particularly spaced heat
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`exchange pipes on a cooled enclosure, classified in 165/169.
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`The inventions are distinct, each from the other because of the following reasons:
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`3.
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`Inventions l and II are related as combination and subcombination.
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`Inventions in
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`this relationship are distinct if it can be shown that (1) the combination as claimed does
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`not require the particulars of the subcombination as claimed for patentability, and (2)
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`that
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`the subcombination has utility by itself or
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`in other combinations (MPEP §
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`806.05(c)).
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`In the instant case,
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`the combination as claimed does not require the
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`particulars of the subcombination as claimed because Invention ll does not require the
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`particular dual heat exchanger arrangement using a mixture of at least three refrigerants
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`

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`Application/Control Number: 12/835,568
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`Page 3
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`Art Unit: 3744
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`as is require by invention I. The subcombination has separate utility such as efficiently
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`cooling a space using a non-azeotropic refrigerant mixture.
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`4.
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`Inventions II and III are related as combination and subcombination.
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`Inventions
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`in this relationship are distinct if
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`it can be shown that (1) the combination as claimed
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`does not require the particulars of the subcombination as claimed for patentability, and
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`(2)
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`that the subcombination has utility by itself or in other combinations (MPEP §
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`806.05(c)).
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`In the instant case,
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`the combination as claimed does not require the
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`particulars of the subcombination as claimed because Invention ll does not require the
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`particular refrigerant coil spacing as is require by invention Ill. The subcombination has
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`separate utility such as an evaporator in a simple vapor compression refrigeration cycle.
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`5.
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`Inventions I and III are related as subcombinations disclosed as usable together
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`in a single combination. The subcombinations are distinct if they do not overlap in
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`scope and are not obvious variants, and if it is shown that at least one subcombination
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`is separately usable.
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`In the instant case, subcombination III has separate utility such as
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`an evaporator
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`in a simple vapor compression refrigeration cycle.
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`See MPEP
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`§ 806.05(d).
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`6.
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`The amendment filed on 11/6/2013 canceling all claims drawn to the elected
`
`invention and presenting only claims drawn to a non-elected invention is non-
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`responsive (MPEP § 821.03). Since applicant has received an action on the merits for
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`the originally presented invention of Group I, Group I has been constructively elected by
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`original presentation for prosecution on the merits. The remaining claims are not
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`readable on the elected invention as discussed above.
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`

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`Application/Control Number: 12/835,568
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`Page 4
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`Art Unit: 3744
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`Since the above-mentioned amendment appears to be a bona fide attempt to
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`reply, applicant is given a TIME PERIOD of ONE (1) MONTH or THIRTY (30) DAYS,
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`whichever is longer, from the mailing date of this notice within which to supply the
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`omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME
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`PERIOD UNDER 37 CFR 1.136(a) ARE AVAILABLE.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to CHRISTOPHER R. ZERPHEY whose telephone
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`number is (571)272-5965. The examiner can normally be reached on Monday-Friday,
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`alt Friday 7:30-5:00 EST.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Judy Swann can be reached on 5712727075. The fax phone number for
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`the organization where this application or proceeding is assigned is 571 -273-8300.
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval
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`(PAIR)
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`system.
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`Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free).
`
`If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
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`

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`Application/Control Number: 12/835,568
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`Page 5
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`Art Unit: 3744
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`/C. R. Z./
`
`Examiner, Art Unit 3744
`/J J Swann/
`
`Supervisory Patent Examiner, Art Unit 3744
`
`

`

`
`Application No.
`Applicant(s)
`
`Notice of Non-Compliant
`Amendment (37 CFR 1.121)
`
`
`gm?
`(gm/18W ET AL-
`
`3744
`CHRISTOPHER R.
`ZERPHEY
`
`
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`
`The amendment document filed on 06 November 2013 is considered non-compliant because it has failed to meet the
`requirements of 37 CFR 1.121 or 1.4. In order for the amendment document to be compliant, correction of the following
`item(s) is required.
`
`THE FOLLOWING MARKED (X) |TEM(S) CAUSE THE AMENDMENT DOCUMENT TO BE NON-COMPLIANT:
`I] 1. Amendments to the specification:
`[I A. Amended paragraph(s) do not include markings.
`|:l B. New paragraph(s) should not be underlined.
`[I C. Other
`.
`
`El 2. Abstract:
`|:I A. Not presented on a separate sheet. 37 CFR 1.72.
`
`I] B. Other
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`I:| 3. Amendments to the drawings:
`D A. The drawings are not properly identified in the top margin as “Replacement Sheet,” “New Sheet,” or
`“Annotated Sheet” as required by 37 CFR 1.121(d).
`[I B. The practice of submitting proposed drawing correction has been eliminated. Replacement drawings
`showing amended figures, without markings, in compliance with 37 CFR 1.84 are required.
`I:I C. Other
`.
`
`IXI 4. Amendments to the claims:
`III A. A complete listing of all of the claims is not present.
`I:I B. The listing of claims does not include the text of all pending claims (including withdrawn claims)
`III C. Each claim has not been provided with the proper status identifier, and as such, the individual status
`of each claim cannot be identified. Note:
`the status of every claim must be indicated after its claim
`number by using one of the following status identifiers: (Original), (Currently amended), (Canceled),
`(Previously presented), (New), (Not entered), (Withdrawn) and (Withdrawn-currently amended).
`I] D. The claims of this amendment paper have not been presented in ascending numerical order.
`IXI E. Other: new claims are drawn to an invention other than previously claimed.
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`I] 5. Other (e.g., the amendment is unsigned or not signed in accordance with 37 CFR 1.4):
`
`
`For further explanation of the amendment format required by 37 CFR 1.121, see MPEP § 714.
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`TIME PERIODS FOR FILING A REPLY TO THIS NOTICE:
`
`1. Applicant is given no new time period if the non-compliant amendment is an after-final amendment or an amendment
`filed after allowance.
`If applicant wishes to resubmit the non-compliant after-final amendment with corrections, the
`entire corrected amendment must be resubmitted.
`
`2. Applicant is given one month, or thirty (30) days, whichever is longer, from the mail date of this notice to supply the
`correction, if the non-compliant amendment is one of the following: a preliminary amendment, a non-final amendment
`(including a submission for a request for continued examination (RCE) under 37 CFR 1.114), a supplemental
`amendment filed within a suspension period under 37 CFR 1.103(a) or (c), and an amendment filed in response to a
`Quay/e action. If any of above boxes 1. to 4. are checked, the correction required is only the corrected section of the
`non-compliant amendment in compliance with 37 CFR 1.121.
`
`Extensions of time are available under 37 CFR 1.136(a) only if the non-compliant amendment is a non-final
`amendment or an amendment filed in response to a Quay/e action.
`
`Failure to timely respond to this notice will result in:
`Abandonment of the application if the non-compliant amendment is a non-final amendment or an amendment
`filed in response to a Quay/e action; or
`Non-entry of the amendment if the non-compliant amendment is a preliminary amendment or supplemental
`amendment.
`
`
`
`/C. R. Z./
`
`Examiner, Art Unit 3744
`
`
`

`

`Continuation Sheet (PTOL-324)
`US. Patent and Trademark Office
`PTOL-324 (01-06)
`
`Notice of Non-Compliant Amendment (37 CFR 1.121)
`
`Application No.
`Part of Paper No. 20131115
`
`