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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`wwwusptogov
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`14/649,115
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`06/02/2015
`
`Yoshiyuki FUTAGAMI
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`20240.0041USWO
`
`4095
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`12/12/2017 —HAMRE, SCHUMANN,MUELLER&LARSONP.C. m
`7590
`53148
`45 South Seventh Street
`HANSEN, KENNETH I
`Suite 2700
`MINNEAPOLIS, MN 55402- 1683
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`PAPER NUMBER
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`ART UNIT
`3746
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`NOTIFICATION DATE
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`DELIVERY MODE
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`12/12/2017
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`ELECTRONIC
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`Please find below and/0r 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):
`PTOMail @hsml.com
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`PTOL—90A (Rev. 04/07)
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`
`
`
`Application No.
`Applicant(s)
`
` 14/649,115 FUTAGAMI ET AL.
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`3746KENNETH J. HANSEN $233
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g 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).
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`In no event, however, may a reply be timely filed
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`-
`-
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`Status
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`1)IXI Responsive to communication(s) filed on 30 Aug 2017.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|:| This action is non-final.
`2a)IZ| 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
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`; the restriction requirement and election have been incorporated into this action.
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`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.
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`3) D Interview Summary (PT0_413)
`1) E 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/08b)
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`Paper No(s)/Mai| Date .
`US. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20171205
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`Disposition of Claims*
`5)|XI Claim(s) M is/are pending in the application.
`5a) Of the above claim(s) 13 and 14 is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`s 1-_12 is/are rejected.
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`is/are objected to.
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`) )
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`_
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`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
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`participating intellectual property office for the corresponding application. For more information, please see
`htt
`://www.usoto. ov/ atents/init events"
`h/index.‘s
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`
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`
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`or send an inquiry to PF"I-Ifeedback{<‘busgto.qov.
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`Application Papers
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`10)I:I The specification is objected to by the Examiner.
`11)|:I The drawing(s) filed on _ is/are: a)I:I accepted or b)I:I 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).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
`12)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`b)I:I Some” c)I:I None of the:
`a)I:I 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.
`3.I:I Copies of the certified copies of the priority documents have been received in this National Stage
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`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.
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`Attachment(s)
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`Application/Control Number: 14/649,115
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`Page 2
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`Art Unit: 3746
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`Application Status
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`This communication is in response to the Amendment and Request for
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`Reconsideration filed 30 August 2017. Claims 1-12 are pending in the application.
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`Claims 1-6 have been amended. Claims 13 and 14 are new.
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`Election/Restriction by Original Presentation
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`Newly submitted claims 13 and 14 are directed to an invention that is
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`independent or distinct from the invention originally claimed for the following reasons:
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`Application/Control Number: 14/649,115
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`Page 3
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`Art Unit: 3746
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`As provided in 37 CFR 1.475(a), a national stage application shall relate to one
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`invention only or to a group of inventions so linked as to form a single general inventive
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`concept (“requirement of unity of invention”). Where a group of inventions is claimed in
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`a national stage application, the requirement of unity of invention shall be fulfilled only
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`when there is a technical relationship among those inventions involving one or more of
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`the same or corresponding special technical features. The expression “special technical
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`features” shall mean those technical features that define a contribution which each of
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`the claimed inventions, considered as a whole, makes over the prior art.
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`The determination whether a group of inventions is so linked as to form a single
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`general inventive concept shall be made without regard to whether the inventions are
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`claimed in separate claims or as alternatives within a single claim. See 37 CFR
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`1.475(e).
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`The amendment filed in response to the outstanding Office action of 3 May 2017
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`added claims to a new invention.
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`In this regard, the following inventions or groups of
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`inventions which are not so linked as to form a single general inventive concept under
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`PCT Rule 13.1.
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`In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to
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`elect a single invention to which the claims must be restricted.
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`Group I, claim(s) 1-12, drawn to compressor, classified in F04B
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`39/1066.
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`Application/Control Number: 14/649,115
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`Page 4
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`Art Unit: 3746
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`Group II, claim(s) 13 and 14, drawn to method of manufacturing a
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`compressor, classified in Y10T 29/49236.
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`The groups of inventions listed above do not relate to a single general inventive
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`concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or
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`corresponding special technical features for the following reasons:
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`The groups of inventions lack unity of invention because the groups do not share
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`the same or corresponding technical feature(s).
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`In the instant case, the method of
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`manufacture claims of Group II require the corresponding technical features of heating,
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`drying and calcining under specific temperature conditions that are not required to
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`manufacture the product claims of Group |. For example, the compressor can be
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`manufactured by spraying and curing the surface treatment coating on the valve and
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`valve seat without the specific calcining step at the temperature conditions recited.
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`Thus, unity of invention between the product and process of manufacturing groups of
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`inventions is lacking
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`Since applicant has received an action on the merits for the originally presented
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`invention, this invention has been constructively elected by original presentation for
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`prosecution on the merits. Accordingly, claims 13 and 14 are withdrawn from
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`consideration as being directed to a non-elected invention. See 37 CFR 1.142(b)
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`and MPEP § 821.03.
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`Claim Objections
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`Claim 4 is objected to because of the following informalities:
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`Application/Control Number: 14/649,115
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`Page 5
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`Art Unit: 3746
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`In claim 4, line 1, “according claim 1” should read “according to claim 1”.
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`Appropriate correction is required.
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`Claim Rejections - 35 USC § 103
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`In the event the determination of the status of the application as subject to AIA 35
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`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`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.
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`Claims 2, 1, 3, 8 and 12 are rejected under 35 U.S.C. 103 as being
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`unpatentable over Airhart (U. S Patent No. 3994319) in view of Sugiura et al. (U. 8.
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`Patent Application Publication No. 2002/0166611).
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`As to claim 2 (treated first clue to limitations intrinsically disclosed by
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`Airhart), Airhart discloses a compressor (FIG. 4, col. 2, line 16) comprising:
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`a cylinder 15 (FIG. 4, col. 3, line 1) which accommodates a reciprocatable
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`piston 13 (FIG. 4, col. 3, line 9) therein;
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`Application/Control Number: 14/649,115
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`Page 6
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`Art Unit: 3746
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`a valve plate 21 (FIG. 2, col. 2, lines 63-65, “disc member 21 having
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`suction and discharge ports therein” — interpreted as forming recited valve plate)
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`which is placed at an opening end of the cylinder 15 and includes a suction valve
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`seat 45, 47 (FIG. 3, col. 3, lines 25-26, “valve 11 seats against edges 45 and an
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`edge 47") provided to surround a suction hole 41 (FIG. 3, col. 3, lines 22-23, “port
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`holes 41”);
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`and a suction valve 11 (FIG.’s 1-4, col. 2, lines 52-54) which opens and
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`closes the suction hole (col. 3, lines 25-31, describing valve operation to open
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`and close suction port),
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`wherein at least one of the suction valve seat 45, 47 and a portion of the
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`suction valve 11 which contacts the suction valve seat 45, 47 is provided with a
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`surface treatment film 51’ 53’ 55' (FIG.’s 7 & 8, col. 4, lines 38-40, as shown — at
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`least one of these sheet Iayer(s) that makes up valve 11 is interpreted as the
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`recited surface treatment film) including synthetic resin (col. 4, lines 16-22, “[b]y
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`forming the reed valve 11 from a plurality of plies of the composite material in
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`tape or sheet form, ...[t]he sheet form used was an epoxy resin reinforced with
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`carbon fibers...” — interpreted as forming recited synthetic resin film under a
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`broadest reasonable interpretation).
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`As to wherein the surface treatment film has a buffed outer surface, Airhart
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`is silent as to buffing of the film surface.
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`In this regard, Sugiura teaches a method of
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`producing a wearable compressor shoe component provided with a film that is polished
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`and buffed (FIG. 3, step 230, see also para. 0080). With this in mind, it would have
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`Application/Control Number: 14/649,115
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`Page 7
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`Art Unit: 3746
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`been obvious to one having ordinary skill in the art before the effective filing date of the
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`instant application to provide a buffed outer surface of the surface treatment film in
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`order to clean and smooth the surface as taught by Airhart (ld.). Note further that this
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`is a product by process limitation given lesser weight in the instant product claims.
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`Even though product-by-process claims are limited by and defined by the process,
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`determination of patentability is based on the product itself. The patentability of a
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`product does not depend on its method of production. If the product in the product-by-
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`process claim is the same as or obvious from a product of the prior art, the claim is
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`unpatentable even though the prior product was made by a different process.
`
`In re
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`Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985)
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`As to claim 1 (treated second clue to limitations implicitly taught by
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`Airhart), Airhart is discussed above and discloses the compressor having the recited
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`valve and valve plate arrangement. Basically, claim 1
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`is identical to claim 2 except that
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`it recites a discharge valve and valve seats which opens and closes a discharge hole
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`whereas Airhart’s main embodiment for valve 11 is disclosed as a suction valve which
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`opens and closes the suction hole. However, Airhart teaches that its valve 11
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`arrangement may be deployed as a suction and/or as a discharge valve (col. 2, line 8-
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`11). With this in mind, it would have been obvious to one having ordinary skill in the art
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`before the effective filing date of the instant application to arrange the valve as a
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`discharge valve. Once modified, the valve would be arranged in the manner recited in
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`claim 1. The motivation would be to apply a known technique used for a suction valve
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`to improve a discharge valve since operation as either type of compressor valve would
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`Application/Control Number: 14/649,115
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`Page 8
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`Art Unit: 3746
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`be known to predictively provide suitable valve functionality as either a suction of
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`discharge valve as indicated by Airhart (ld.).
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`As to claim 3, Airhart discloses a suction valve 11 which opens and closes a
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`suction hole 41, wherein the valve plate 21 further includes a suction valve seat 45, 47
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`provided to surround the suction hole 41, and wherein at least one of the suction valve
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`seat 45, 47 and a portion of the suction valve 11 which contacts the suction valve seat
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`45, 47 is provided with a surface treatment film including synthetic resin (as set forth in
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`the rejection of claim 2 above).
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`As to claim 8, Airhart discloses the synthetic resin comprising at least one resin
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`selected from a resin group consisting of polyamide resin, epoxy resin, and phenol resin
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`(col. 4, lines 16-22, epoxy resin).
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`As to claim 12, Airhart discloses the synthetic resin comprising at least one resin
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`selected from a resin group consisting of polyamide resin, epoxy resin, and phenol resin
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`(col. 4, lines 16-22, epoxy resin).
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`Claim 4, 7, 9, 10 and 11 are rejected under 35 U.S.C. 103 as being
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`unpatentable over Airhart (U. S Patent No. 3994319) in view of Sugiura et al. (U. 8.
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`Patent Application Publication No. 2002/0166611), as applied to claims 1 and 2
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`above, further in view of lwata et al. (U. S. Patent Application Publication No.
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`2004/0166341).
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`Application/Control Number: 14/649,115
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`Page 9
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`Art Unit: 3746
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`As to claims 4, 9 and 10, Airhart and Sugiura are discussed above but are silent
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`as to the surface treatment film including a solid lubricant. lwata et al. teaches a sliding
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`member surface treatment for compressor components including a solid lubricant using
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`PTFE (polytetrafluoroethylene) or M082 (molybdenum disulfide) (FlG.'s 2 & 3, para.
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`0040, lines 1-3) arranged to be used on a swash-plate compressor (FIG. 4, para. 0043).
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`With this in mind then, it would have been obvious to one having ordinary skill in the art
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`before the effective filing date of the instant application to apply a solid lubricant in the
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`surface treatment film of Airhart so as to improve wear-ability over longer periods of
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`time in order to prevent damage due to heat as taught by lwata (para. 0021, lines 3-6).
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`As to claims 7 and 11, Airhart and Sugiura are discussed above but are silent
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`as to the surface treatment film having a thickness of 1 pm to 20 pm.
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`In this regard,
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`lwata teaches providing a surface treatment film having a thickness of between 0.1 pm
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`to 20 um (para. 0017, lines 4-7) thus encompassing the recited range of thicknesses.
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`Therefore, it would have been obvious to one having ordinary skill in the art before the
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`effective filing date of the instant application to prevent an adverse influence on surface
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`shape as taught by lwata (ld.).
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`Claim 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over
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`Airhart (U. 8 Patent No. 3994319) in view of Sugiura et al. (U. S. Patent Application
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`Publication No. 2002/0166611) as applied to claims 1 and 2 above, further in view
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`of Kobayashi (Japanese Patent Publication No. 9-280167).
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`Application/Control Number: 14/649,115
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`Page 10
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`Art Unit: 3746
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`As to claims 5 and 6, Airhart and Sugiura are discussed above but are silent as
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`to each of the discharge or suction valve seat(s) and the portion(s) of the discharge or
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`suction va|ve(s) which contacts the discharge or suction valve seat(s) is provided with
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`the surface treatment film.
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`In this regard, Kobayashi teaches a valve plate assembly for
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`a compressor having a valve seat surface that contacts the valve formed of a resin
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`(FIG. 1, Abstract — DenNent). With this in mind then, it would have been obvious to one
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`having ordinary skill in the art before the effective filing date of the instant application to
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`form the valve seat and the portion of the valve that contacts the seat with the same
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`resin material surface treatment in order to advantageously reduce noise and vibration
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`and improve sealing as taught by Kobayashi (ld.).
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`Response to Arguments
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`Applicant’s remarks regarding the 35 U.S.C. 102 and 103 rejections of the claims
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`over Airhart and the applied art references have been considered but are moot because
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`the amendment to the claims has necessitated a new grounds of rejection in view of the
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`teachings of Sugiura.
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`Applicant argues that Airhart does not teach or suggest the alleged surface
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`treatment film having a buffed surface. The Examiner agrees and cites Sugiura in this
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`regard as indicated above.
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`Applicant has not presented any substantive arguments with regard to the
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`rejections of the dependent claims over the art of record including the combinations of
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`Application/Control Number: 14/649,115
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`Page 11
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`Art Unit: 3746
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`proposed modification, rationale, or motivations to make those combinations. Applicant
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`simply asserts that they are allowable for the same reasons made for the independent
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`claims.
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`Conclusion
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`Applicant's amendment necessitated the new ground(s) of rejection presented in
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`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
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`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
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`CFR1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action.
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`In the event a first reply is filed within
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`TWO MONTHS of the mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTH shortened statutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
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`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the date of this final action.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to KENNETH J. HANSEN whose telephone number is
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`(571)272-6780. The examiner can normally be reached on Monday-Friday between the
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`hours of 8:00 AM - 4:30 PM.
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`
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`Application/Control Number: 14/649,115
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`Page 12
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`Art Unit: 3746
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`for 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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`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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`
`/KENNETH J. HANSEN/
`
`Examiner, Art Unit 3746
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`