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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
`
`
`
`
`
`14/649,115
`
`06/02/2015
`
`Yoshiyuki FUTAGAMI
`
`20240.0041USWO
`
`4095
`
`12/12/2017 —HAMRE, SCHUMANN,MUELLER&LARSONP.C. m
`7590
`53148
`45 South Seventh Street
`HANSEN, KENNETH I
`Suite 2700
`MINNEAPOLIS, MN 55402- 1683
`
`PAPER NUMBER
`
`ART UNIT
`3746
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/12/2017
`
`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)
`
`

`

`
`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
`
`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).
`
`In no event, however, may a reply be timely filed
`
`-
`-
`
`Status
`
`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
`
`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
`
`
`; 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) 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)
`
`Paper No(s)/Mai| Date .
`US. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20171205
`
`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.
`
`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 PF"I-Ifeedback{<‘busgto.qov.
`
`Application Papers
`
`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).
`
`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)I:I 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)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
`
`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: 14/649,115
`
`Page 2
`
`Art Unit: 3746
`
`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.
`
`Application Status
`
`This communication is in response to the Amendment and Request for
`
`Reconsideration filed 30 August 2017. Claims 1-12 are pending in the application.
`
`Claims 1-6 have been amended. Claims 13 and 14 are new.
`
`Election/Restriction by Original Presentation
`
`Newly submitted claims 13 and 14 are directed to an invention that is
`
`independent or distinct from the invention originally claimed for the following reasons:
`
`

`

`Application/Control Number: 14/649,115
`
`Page 3
`
`Art Unit: 3746
`
`As provided in 37 CFR 1.475(a), a national stage application shall relate to one
`
`invention only or to a group of inventions so linked as to form a single general inventive
`
`concept (“requirement of unity of invention”). Where a group of inventions is claimed in
`
`a national stage application, the requirement of unity of invention shall be fulfilled only
`
`when there is a technical relationship among those inventions involving one or more of
`
`the same or corresponding special technical features. The expression “special technical
`
`features” shall mean those technical features that define a contribution which each of
`
`the claimed inventions, considered as a whole, makes over the prior art.
`
`The determination whether a group of inventions is so linked as to form a single
`
`general inventive concept shall be made without regard to whether the inventions are
`
`claimed in separate claims or as alternatives within a single claim. See 37 CFR
`
`1.475(e).
`
`The amendment filed in response to the outstanding Office action of 3 May 2017
`
`added claims to a new invention.
`
`In this regard, the following inventions or groups of
`
`inventions which are not so linked as to form a single general inventive concept under
`
`PCT Rule 13.1.
`
`In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to
`
`elect a single invention to which the claims must be restricted.
`
`Group I, claim(s) 1-12, drawn to compressor, classified in F04B
`
`39/1066.
`
`

`

`Application/Control Number: 14/649,115
`
`Page 4
`
`Art Unit: 3746
`
`Group II, claim(s) 13 and 14, drawn to method of manufacturing a
`
`compressor, classified in Y10T 29/49236.
`
`The groups of inventions listed above do not relate to a single general inventive
`
`concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or
`
`corresponding special technical features for the following reasons:
`
`The groups of inventions lack unity of invention because the groups do not share
`
`the same or corresponding technical feature(s).
`
`In the instant case, the method of
`
`manufacture claims of Group II require the corresponding technical features of heating,
`
`drying and calcining under specific temperature conditions that are not required to
`
`manufacture the product claims of Group |. For example, the compressor can be
`
`manufactured by spraying and curing the surface treatment coating on the valve and
`
`valve seat without the specific calcining step at the temperature conditions recited.
`
`Thus, unity of invention between the product and process of manufacturing groups of
`
`inventions is lacking
`
`Since applicant has received an action on the merits for the originally presented
`
`invention, this invention has been constructively elected by original presentation for
`
`prosecution on the merits. Accordingly, claims 13 and 14 are withdrawn from
`
`consideration as being directed to a non-elected invention. See 37 CFR 1.142(b)
`
`and MPEP § 821.03.
`
`Claim Objections
`
`Claim 4 is objected to because of the following informalities:
`
`

`

`Application/Control Number: 14/649,115
`
`Page 5
`
`Art Unit: 3746
`
`In claim 4, line 1, “according claim 1” should read “according to claim 1”.
`
`Appropriate correction is required.
`
`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 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.
`
`Claims 2, 1, 3, 8 and 12 are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Airhart (U. S Patent No. 3994319) in view of Sugiura et al. (U. 8.
`
`Patent Application Publication No. 2002/0166611).
`
`As to claim 2 (treated first clue to limitations intrinsically disclosed by
`
`Airhart), Airhart discloses a compressor (FIG. 4, col. 2, line 16) comprising:
`
`a cylinder 15 (FIG. 4, col. 3, line 1) which accommodates a reciprocatable
`
`piston 13 (FIG. 4, col. 3, line 9) therein;
`
`

`

`Application/Control Number: 14/649,115
`
`Page 6
`
`Art Unit: 3746
`
`a valve plate 21 (FIG. 2, col. 2, lines 63-65, “disc member 21 having
`
`suction and discharge ports therein” — interpreted as forming recited valve plate)
`
`which is placed at an opening end of the cylinder 15 and includes a suction valve
`
`seat 45, 47 (FIG. 3, col. 3, lines 25-26, “valve 11 seats against edges 45 and an
`
`edge 47") provided to surround a suction hole 41 (FIG. 3, col. 3, lines 22-23, “port
`
`holes 41”);
`
`and a suction valve 11 (FIG.’s 1-4, col. 2, lines 52-54) which opens and
`
`closes the suction hole (col. 3, lines 25-31, describing valve operation to open
`
`and close suction port),
`
`wherein at least one of the suction valve seat 45, 47 and a portion of the
`
`suction valve 11 which contacts the suction valve seat 45, 47 is provided with a
`
`surface treatment film 51’ 53’ 55' (FIG.’s 7 & 8, col. 4, lines 38-40, as shown — at
`
`least one of these sheet Iayer(s) that makes up valve 11 is interpreted as the
`
`recited surface treatment film) including synthetic resin (col. 4, lines 16-22, “[b]y
`
`forming the reed valve 11 from a plurality of plies of the composite material in
`
`tape or sheet form, ...[t]he sheet form used was an epoxy resin reinforced with
`
`carbon fibers...” — interpreted as forming recited synthetic resin film under a
`
`broadest reasonable interpretation).
`
`As to wherein the surface treatment film has a buffed outer surface, Airhart
`
`is silent as to buffing of the film surface.
`
`In this regard, Sugiura teaches a method of
`
`producing a wearable compressor shoe component provided with a film that is polished
`
`and buffed (FIG. 3, step 230, see also para. 0080). With this in mind, it would have
`
`

`

`Application/Control Number: 14/649,115
`
`Page 7
`
`Art Unit: 3746
`
`been obvious to one having ordinary skill in the art before the effective filing date of the
`
`instant application to provide a buffed outer surface of the surface treatment film in
`
`order to clean and smooth the surface as taught by Airhart (ld.). Note further that this
`
`is a product by process limitation given lesser weight in the instant product claims.
`
`Even though product-by-process claims are limited by and defined by the process,
`
`determination of patentability is based on the product itself. The patentability of a
`
`product does not depend on its method of production. If the product in the product-by-
`
`process claim is the same as or obvious from a product of the prior art, the claim is
`
`unpatentable even though the prior product was made by a different process.
`
`In re
`
`Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985)
`
`As to claim 1 (treated second clue to limitations implicitly taught by
`
`Airhart), Airhart is discussed above and discloses the compressor having the recited
`
`valve and valve plate arrangement. Basically, claim 1
`
`is identical to claim 2 except that
`
`it recites a discharge valve and valve seats which opens and closes a discharge hole
`
`whereas Airhart’s main embodiment for valve 11 is disclosed as a suction valve which
`
`opens and closes the suction hole. However, Airhart teaches that its valve 11
`
`arrangement may be deployed as a suction and/or as a discharge valve (col. 2, line 8-
`
`11). With this in mind, it would have been obvious to one having ordinary skill in the art
`
`before the effective filing date of the instant application to arrange the valve as a
`
`discharge valve. Once modified, the valve would be arranged in the manner recited in
`
`claim 1. The motivation would be to apply a known technique used for a suction valve
`
`to improve a discharge valve since operation as either type of compressor valve would
`
`

`

`Application/Control Number: 14/649,115
`
`Page 8
`
`Art Unit: 3746
`
`be known to predictively provide suitable valve functionality as either a suction of
`
`discharge valve as indicated by Airhart (ld.).
`
`As to claim 3, Airhart discloses a suction valve 11 which opens and closes a
`
`suction hole 41, wherein the valve plate 21 further includes a suction valve seat 45, 47
`
`provided to surround the suction hole 41, and wherein at least one of the suction valve
`
`seat 45, 47 and a portion of the suction valve 11 which contacts the suction valve seat
`
`45, 47 is provided with a surface treatment film including synthetic resin (as set forth in
`
`the rejection of claim 2 above).
`
`As to claim 8, Airhart discloses the synthetic resin comprising at least one resin
`
`selected from a resin group consisting of polyamide resin, epoxy resin, and phenol resin
`
`(col. 4, lines 16-22, epoxy resin).
`
`As to claim 12, Airhart discloses the synthetic resin comprising at least one resin
`
`selected from a resin group consisting of polyamide resin, epoxy resin, and phenol resin
`
`(col. 4, lines 16-22, epoxy resin).
`
`Claim 4, 7, 9, 10 and 11 are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Airhart (U. S Patent No. 3994319) in view of Sugiura et al. (U. 8.
`
`Patent Application Publication No. 2002/0166611), as applied to claims 1 and 2
`
`above, further in view of lwata et al. (U. S. Patent Application Publication No.
`
`2004/0166341).
`
`

`

`Application/Control Number: 14/649,115
`
`Page 9
`
`Art Unit: 3746
`
`As to claims 4, 9 and 10, Airhart and Sugiura are discussed above but are silent
`
`as to the surface treatment film including a solid lubricant. lwata et al. teaches a sliding
`
`member surface treatment for compressor components including a solid lubricant using
`
`PTFE (polytetrafluoroethylene) or M082 (molybdenum disulfide) (FlG.'s 2 & 3, para.
`
`0040, lines 1-3) arranged to be used on a swash-plate compressor (FIG. 4, para. 0043).
`
`With this in mind then, it would have been obvious to one having ordinary skill in the art
`
`before the effective filing date of the instant application to apply a solid lubricant in the
`
`surface treatment film of Airhart so as to improve wear-ability over longer periods of
`
`time in order to prevent damage due to heat as taught by lwata (para. 0021, lines 3-6).
`
`As to claims 7 and 11, Airhart and Sugiura are discussed above but are silent
`
`as to the surface treatment film having a thickness of 1 pm to 20 pm.
`
`In this regard,
`
`lwata teaches providing a surface treatment film having a thickness of between 0.1 pm
`
`to 20 um (para. 0017, lines 4-7) thus encompassing the recited range of thicknesses.
`
`Therefore, it would have been obvious to one having ordinary skill in the art before the
`
`effective filing date of the instant application to prevent an adverse influence on surface
`
`shape as taught by lwata (ld.).
`
`Claim 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Airhart (U. 8 Patent No. 3994319) in view of Sugiura et al. (U. S. Patent Application
`
`Publication No. 2002/0166611) as applied to claims 1 and 2 above, further in view
`
`of Kobayashi (Japanese Patent Publication No. 9-280167).
`
`

`

`Application/Control Number: 14/649,115
`
`Page 10
`
`Art Unit: 3746
`
`As to claims 5 and 6, Airhart and Sugiura are discussed above but are silent as
`
`to each of the discharge or suction valve seat(s) and the portion(s) of the discharge or
`
`suction va|ve(s) which contacts the discharge or suction valve seat(s) is provided with
`
`the surface treatment film.
`
`In this regard, Kobayashi teaches a valve plate assembly for
`
`a compressor having a valve seat surface that contacts the valve formed of a resin
`
`(FIG. 1, Abstract — DenNent). With this in mind then, it would have been obvious to one
`
`having ordinary skill in the art before the effective filing date of the instant application to
`
`form the valve seat and the portion of the valve that contacts the seat with the same
`
`resin material surface treatment in order to advantageously reduce noise and vibration
`
`and improve sealing as taught by Kobayashi (ld.).
`
`Response to Arguments
`
`Applicant’s remarks regarding the 35 U.S.C. 102 and 103 rejections of the claims
`
`over Airhart and the applied art references have been considered but are moot because
`
`the amendment to the claims has necessitated a new grounds of rejection in view of the
`
`teachings of Sugiura.
`
`Applicant argues that Airhart does not teach or suggest the alleged surface
`
`treatment film having a buffed surface. The Examiner agrees and cites Sugiura in this
`
`regard as indicated above.
`
`Applicant has not presented any substantive arguments with regard to the
`
`rejections of the dependent claims over the art of record including the combinations of
`
`

`

`Application/Control Number: 14/649,115
`
`Page 11
`
`Art Unit: 3746
`
`proposed modification, rationale, or motivations to make those combinations. Applicant
`
`simply asserts that they are allowable for the same reasons made for the independent
`
`claims.
`
`Conclusion
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in
`
`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
`
`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
`
`CFR1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action.
`
`In the event a first reply is filed within
`
`TWO MONTHS of the mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTH shortened statutory period, then the
`
`shortened statutory period will expire on the date the advisory action is mailed, and any
`
`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
`
`the advisory action.
`
`In no event, however, will the statutory period for reply expire later
`
`than SIX MONTHS from the date of this final action.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to KENNETH J. HANSEN whose telephone number is
`
`(571)272-6780. The examiner can normally be reached on Monday-Friday between the
`
`hours of 8:00 AM - 4:30 PM.
`
`

`

`Application/Control Number: 14/649,115
`
`Page 12
`
`Art Unit: 3746
`
`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
`
`for the organization where this application or proceeding is assigned is 571 -273-8300.
`
`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—1000.
`
`/KENNETH J. HANSEN/
`
`Examiner, Art Unit 3746
`
`

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