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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`wwwusptogov
`
`
`
`
`
`14/388,136
`
`09/25/2014
`
`Yoshifumi Abe
`
`20286.0023USWO
`
`7096
`
`01’0““ —HAMRE, SCHUMANN,MUELLER&LARSONP.C. m
`7590
`53148
`45 South Seventh Street
`BERTHEAUD, PETER JOHN
`Suite 2700
`MINNEAPOLIS, MN 55402- 1683
`
`PAPER NUMBER
`
`ART UNIT
`3746
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`01/05/2018
`
`ELECTRONIC
`
`Please find below and/0r attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`PTOMail @hsml.com
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 14/388,136 ABE ET AL
`
`Office Action Summary
`Examiner
`Art Unit
`AIA (First Inventorto File)
`
`
`StatusNo PETER J. BERTHEAUD 3746
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`In no event, however, may a reply be timely filed
`
`-
`-
`
`Status
`
`1)IXI Responsive to communication(s) filed on 12/13/2017.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)lX| This action is non-final.
`2a)I:| This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
`
`
`; the restriction requirement and election have been incorporated into this action.
`
`4)|:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`3) D Interview Summary (PT0_413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`—
`4) I:I Other'
`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/Osb)
`
`Paper No(s)/Mai| Date .
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20180102
`
`Disposition of Claims*
`5)|XI Claim(s) 1and3 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`s
`1 and 3 is/are rejected.
`
`is/are objected to.
`
`) )
`
`_
`
`
`are subject to restriction and/or election requirement.
`9)|:l Claim(s
`)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`htt
`://www.usoto. ov/ atentS/init events"
`h/index.‘s
`
`
`
`
`
`, or send an inquiry to PRI-Ifeedback{<‘buspto.qov.
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`11)|Z| The drawing(s) filed on 9/25/2014 is/are: a)I:I accepted or b)lZl objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)IZI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §119(a)-(d) or (f).
`Certified copies:
`
`b)I:I Some” c)I:I None of the:
`a)le All
`1.I:I Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`3le Copies of the certified copies of the priority documents have been received in this National Stage
`
`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`
`
`

`

`Application/Control Number: 14/388,136
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`Page 2
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`Art Unit: 3746
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`DETAILED ACTION
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`Continued Examination Under 37 CFR 1. 114
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`1.
`
`A request for continued examination under 37 CFR 1.114, including the fee set
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`forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
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`application is eligible for continued examination under 37 CFR 1.114, and the fee set
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`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
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`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on
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`12/13/2017 has been entered. It should be noted that claim 1 has been amended and
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`claim 2 has been cancelled.
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`Drawings
`
`2.
`
`The drawings are objected to under 37 CFR 1.83(a). The drawings must show
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`every feature of the invention specified in the claims. Therefore, the “mounting leg” and
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`an “impact portion” must both be shown in at least one Figure or the feature(s) canceled
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`from the claim(s). No new matter should be entered.
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`Corrected drawing sheets in compliance with 37 CFR 1.121 (d) are required in
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`reply to the Office action to avoid abandonment of the application. Any amended
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`replacement drawing sheet should include all of the figures appearing on the immediate
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`prior version of the sheet, even if only one figure is being amended. The figure or figure
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`number of an amended drawing should not be labeled as “amended.” If a drawing figure
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`is to be canceled, the appropriate figure must be removed from the replacement sheet,
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`and where necessary, the remaining figures must be renumbered and appropriate
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`changes made to the brief description of the several views of the drawings for
`
`

`

`Application/Control Number: 14/388,136
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`Page 3
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`Art Unit: 3746
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`consistency. Additional replacement sheets may be necessary to show the renumbering
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`of the remaining figures. Each drawing sheet submitted after the filing date of an
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`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,
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`the applicant will be notified and informed of any required corrective action in the next
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`Office action. The objection to the drawings will not be held in abeyance.
`
`Claim Rejections - 35 USC § 1 12
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`3.
`
`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.
`
`4.
`
`Claims 1 and 3 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
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`distinctly claim the subject matter which the inventor or a joint inventor, or for
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`pre-AIA the applicant regards as the invention.
`
`Claim 1
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`is indefinite because it recites both a “mounting leg” and an “impact
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`portion” that “extends around the entire circumference of the casing”, and neither of
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`Applicant’s embodiments show both elements. Furthermore, based on the positioning of
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`elements 2 and 3d in Figures 1 and 2, respectively, the Examiner must assume that
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`these are the same element, which doesn't seem to be what the Applicant intended.
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`Nevertheless, claim 1
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`is indefinite.
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`

`

`Application/Control Number: 14/388,136
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`Page 4
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`Art Unit: 3746
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`Claim Rejections - 35 USC § 102
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`5.
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`The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C.
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`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) the invention was known or used by others in this country, or patented or described in a
`printed publication in this or a foreign country, before the invention thereof by the applicant for
`a patent.
`
`6.
`
`Claims 1 and 3 are rejected, as best as can be understood, under pre-AIA
`
`35 U.S.C. 102(a) as being anticipated by Ogawa (WIPO Publication WO
`
`2012035767 A1 published on 22 March 2012; PG Pub US 20120308414 A1 is being
`
`used as an English Translation).
`
`Ogawa (see embodiment in Fig. 11) discloses, regarding claim 1, an electric
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`compressor comprising a casing (see elements 4, 5, 141 in Fig. 11) in which a
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`compressing mechanism (see 4, specifically 11 and 12), an electric motor portion (see
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`5, specifically 5a and 5b) for driving the compressing mechanism, and an inverter
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`portion (see 141) for driving the electric motor portion are incorporated, wherein the
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`electric compressor is oriented laterally in use by a mounting leg 2 on a periphery of a
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`barrel of the casing (clearly shown in Fig. 11); the casing comprises a main container
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`(see the container in the middle of Fig. 11 which surrounds elements 5a, 5b, 11 and 12),
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`a suction auxiliary container providing a suction port 8, and a discharge auxiliary
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`container providing a discharge port 9; a first end of the main container constitutes a
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`compressing mechanism-side opening (see left side of Fig. 11 where 4 meets 141); a
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`second end of the main container constitutes an electric motor-side opening (clearly
`
`shown at the right end of Fig. 11); the suction auxiliary container is attached to the
`
`

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`Application/Control Number: 14/388,136
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`Page 5
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`Art Unit: 3746
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`compressing mechanism-side opening such that the suction auxiliary container is
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`opposed to the compressing mechanism-side opening (clearly shown in Fig. 11); the
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`discharge auxiliary container is attached to the electric motor-side opening such that the
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`discharge auxiliary container is opposed to the electric motor-side opening (clearly
`
`shown in Fig. 11); the compressing mechanism and the electric motor portion are
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`incorporated in the main container (this is clearly shown in Fig. 11); the inverter portion
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`is incorporated in the suction auxiliary container (clearly shown in Fig. 11); an impact
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`portion 2 projects from a surface of the casing and receives an impact from outside of
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`the surface of the casing; the impact portion 2 extends around an entire circumference
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`of the casing (this is clearly the case; Figure 11 in Ogawa is identical to the embodiment
`
`shown in Figs 1-2 of the Application); the impact portion 2 is not provided on a portion
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`corresponding to a location of the electric motor portion (5a, 5b) in the main container
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`(clearly shown in Fig. 11); the impact portion 2 is not provided on the suction auxiliary
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`container in which the inverter portion (141) is incorporated (clearly shown in Fig. 11);
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`the impact portion 2 is located between the suction port 8 and the discharge port 9 in a
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`direction from the first end to the second end of the main container (clearly shown in
`
`Fig. 11); and the impact portion 2 is provided on only a portion corresponding to a
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`location of the compressing mechanism (11, 12) in the main container (clearly shown in
`
`Fig. 11); Re claim 3, wherein the casing has a ring shape in a cross-sectional view (this
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`is clearly the case).
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`

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`Application/Control Number: 14/388,136
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`Page 6
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`Art Unit: 3746
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`Response to Arguments
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`7.
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`In light of the new 35 U.S.C. 112, 2nd paragraph rejection, as well as the
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`reinterpretation of Ogawa (element 2 is interpreted as both the mounting leg and impact
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`portion), Applicant’s arguments are moot.
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`Conclusion
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`8.
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`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to PETER J. BERTHEAUD whose telephone number is
`
`(571)272-3476. The examiner can normally be reached on M-F 9am - 5pm.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Devon Kramer can be reached on (571) 272-7118. The fax phone number
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`for the organization where this application or proceeding is assigned is 571 -273-8300.
`
`

`

`Application/Control Number: 14/388,136
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`Page 7
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`Art Unit: 3746
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`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571 -272—1 000.
`
`PJB
`
`/PETER J BERTHEAUD/
`
`Primary Examiner, Art Unit 3746
`
`