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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
`
`
`
`
`
`14/668,974
`
`03/25/2015
`
`Susumu KOBAYASHI
`
`095306—0013
`
`4302
`
`20277
`7590
`02/23/2018
`MCDERMOTT WILL&EMERY LLP —
`The McDermott Building
`TANENBAUM’ TZVI SAMUEL
`500 North Capitol Street, NW.
`
`3744
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`02/23/2018
`
`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):
`
`ipdocketmwe @ mwe.com
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 14/668,974 KOBAYASHI ET AL.
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`STEVE TAN ENBAUM [SENS 3744
`-- 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 CFR1. 136( a).
`after SIX () 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)IZI Responsive to communication(s) filed on 11/16/2017.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|ZI This action is non-final.
`2a)|:l 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)|:| 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 Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)IZI Claim(s) His/are pending in the application.
`5a) Of the above claim(s) fiis/are withdrawn from consideration.
`
`is/are allowed.
`6)I:I Claim(s)
`7)|Z| CIaim(s)_1-3is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
`
`are subject to restriction and/or election requirement.
`9)I:I 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
`hit
`:/'/\W¢W.LISI>I‘.0. ovI’ atentS/init events/
`
`
`
`iindex.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)I:l 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:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)I:l All
`
`b)|:l Some” c)I:l None of the:
`
`1.I:I Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| 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)
`
`
`
`3) D Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) I] 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 20180214-A
`
`

`

`Application/Control Number: 14/668,974
`
`Page 2
`
`Art Unit: 3744
`
`DETAILED ACTION
`
`1.
`
`In view of the Appeal Brief filed on 1/16/2018, PROSECUTION IS HEREBY
`
`REOPENED. New grounds of rejection are set forth below.
`
`To avoid abandonment of the application, appellant must exercise one of the
`
`following two options:
`
`(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply
`
`under 37 CFR 1.113 (if this Office action is final); or,
`
`(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed
`
`by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and
`
`appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth
`
`in 37 CFR 41.20 have been increased since they were previously paid, then appellant
`
`must pay the difference between the increased fees and the amount previously paid.
`
`A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by
`
`signing below:
`
`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions.
`
`Election/Restrictions
`
`1.
`
`Newly submitted claims 4-7 directed to an invention that is independent or
`
`distinct from the invention originally claimed for the following reasons: The invention as
`
`originally claimed (e.g. the invention of claims 1-3) and the invention as newly
`
`

`

`Application/Control Number: 14/668,974
`
`Page 3
`
`Art Unit: 3744
`
`submitted, (e.g. the invention of claims 1-2, 4-7 are directed to related products. The
`
`related inventions are distinct if: (1) the inventions as claimed are either not capable of
`
`use together or can have a materially different design, mode of operation, function, or
`
`effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the
`
`inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant
`
`case, the inventions as claimed are not capable of use together and have materially
`
`different design, mode of operation, or effect; and are mutually exclusive and are not
`
`obvious variants. Furthermore, the inventions as claimed do not encompass
`
`overlapping subject matter and there is nothing of record to show them to be obvious
`
`variants.
`
`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 4-7 are withdrawn from consideration as
`
`being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
`
`Claim Rejections - 35 USC § 103
`
`2.
`
`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.
`
`3.
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
`
`for all obviousness rejections set forth in this Office action:
`
`

`

`Application/Control Number: 14/668,974
`
`Page 4
`
`Art Unit: 3744
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`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102, if the differences between the subject matter sought to be patented
`and the prior art are such that the subject matter as a whole would have been obvious at the
`time the invention was made to a person having ordinary skill in the art to which said subject
`matter pertains. Patentability shall not be negatived by the manner in which the invention was
`made.
`
`4.
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
`
`USPQ 459 (1966), that are applied for establishing a background for determining
`
`obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
`
`1. Determining the scope and contents of the prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`4. Considering objective evidence present in the application indicating
`
`obviousness or nonobviousness.
`
`5.
`
`This application currently names joint inventors. In considering patentability of the
`
`claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter
`
`of the various claims was commonly owned at the time any inventions covered therein
`
`were made absent any evidence to the contrary. Applicant is advised of the obligation
`
`under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was
`
`not commonly owned at the time a later invention was made in order for the examiner to
`
`consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C.
`
`102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
`
`6.
`
`Claims 1-3 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable
`
`over Takasugi (US 2004/0118145) as evidenced by van Wijngaarden (US
`
`2008/0184735) and further in view of Yuzawa (US 6951115).
`
`7.
`
`Regarding claim 1,
`
`

`

`Application/Control Number: 14/668,974
`
`Page 5
`
`Art Unit: 3744
`
`8.
`
`Referring to Fig. 1, Takasugi teaches
`
`A binary refrigeration apparatus 100 comprising:
`
`a high temperature refrigeration cycle H; and
`
`a low temperature refrigeration cycle L including an evaporator 14; and a
`
`cascade condenser 12 connecting the high temperature refrigeration cycle
`
`and the low temperature refrigeration cycle, wherein;
`
`the high temperature refrigeration cycle is filled with propane (see par. 46)
`
`and a refrigerator oil (see pars. 34, 48, 56)
`
`the low temperature refrigeration cycle is filled with a refrigerant (e.g.
`
`ethane, see par. 47) including a hydrocarbon (e.g. ethane, see par. 47)
`
`having a boiling point of -80 CC or lower (wherein it is known in the art that
`
`ethane generally has a boiling point of -89 degrees Celsius, as evidenced
`
`by van Wijngaarden, par. 4), a refrigerator oil (see pars. 34, 48, 56),
`
`the hydrocarbon having a boiling point of -80 CC or lower consists of
`
`ethane (see par. 47),
`
`and the low temperature refrigeration cycle does not include an oil
`
`separator.
`
`9.
`
`A claim term is functional when it recites a feature "by what it does rather than by
`
`what it is".
`
`10. While features of an apparatus may be recited either structurally or functionally,
`
`claims directed to an apparatus must be distinguished from the prior art in terms of
`
`structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQZd
`
`

`

`Application/Control Number: 14/668,974
`
`Page 6
`
`Art Unit: 3744
`
`1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference
`
`relating to function did not defeat the Board’s finding of anticipation of claimed
`
`apparatus because the limitations at issue were found to be inherent in the prior art
`
`reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29
`
`(CCPA1971);ln re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959).
`
`“[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard
`
`Co. v. Bausch & Lomb Inc, 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir.
`
`1990) (emphasis in original).
`
`11.
`
`It appears that the language, an ultra/ow temperature of -80 CC or lower is
`
`produced by evaporating the hydrocarbon in the evaporator, is a recitation of what the
`
`evaporator is configured to do and not what the evaporator is as there are no structural
`
`attributes of the interrelated components except for the requirement that an ultralow
`
`temperature of -80 degrees Celsius or lower is produced by evaporating the
`
`hydrocarbon in the evaporator. While features of an apparatus may be recited either
`
`structurally or functionally, claims directed to an apparatus must be distinguished from
`
`the prior art in terms of structure rather than function, see MPEP 2114 [R-1]. Since the
`
`evaporator of Takasugi is capable of producing an ultralow temperature of -80 degrees
`
`Celsius or lower by evaporating the hydrocarbon in the evaporator (see pars. 40, 64),
`
`the evaporator of Takasugi meets the claimed limitations of being configured to do so.
`
`There is no structural difference between the evaporator of Takasugi and the evaporator
`
`of Applicant’s claim 1.
`
`

`

`Application/Control Number: 14/668,974
`
`Page 7
`
`Art Unit: 3744
`
`12.
`
`Takasugi does not teach that the low temperature refrigeration cycle is filled with
`
`a refrigerant, a refrigerator oil, and
`
`an oil return agent,
`
`the oil return agent is contained in an amount of from 0.1 to 14 mass%
`
`with respect to the ethane in refrigerant in the low temperature
`
`refrigeration cycle.
`
`13.
`
`However, the prior art contains a comparable device that was improved by
`
`adding an oil return agent, wherein the oil return agent is contained in an amount of
`
`from 0.1 to 14 mass% with respect to the refrigerant of the prior art device.
`
`14.
`
`For example, Yuzawa, directed to a refrigerant composition and refrigerating
`
`circuit using the same, teaches a refrigerant composition comprising 0.1 to 12 wt % of
`
`an oil return agent (e.g. with respect to a fluorocarbon based refrigerant, see col 1, lines
`
`46-59); wherein the oil return agent is n-pentane (see col 1, lines 60-61). Yuzawa
`
`teaches that the addition of 0.1 to 12 wt % of the oil return agent to the refrigerant
`
`further improved recovery of oil (see col 4, lines 20-22).
`
`15.
`
`Therefore, it would have been obvious to one of ordinary skill in the art at the
`
`time of invention to modify Takasugi by Yuzawa, using the known technique of adding a
`
`specific amount of oil return agent to a refrigerant in order to improve the recovery of oil,
`
`such that the low temperature refrigeration cycle is filled with a refrigerant, a refrigerator
`
`oil, and
`
`an oil return agent (e.g. n-pentane),
`
`

`

`Application/Control Number: 14/668,974
`
`Page 8
`
`Art Unit: 3744
`
`the oil return agent is contained in an amount of from 0.1 to 14 mass%
`
`with respect to the ethane in the refrigerant in the low temperature
`
`refrigeration cycle,
`
`with the motivation of further improving the recovery of oil (see Yuzawa col 4, lines 20-
`
`22). As in Yuzawa, it is within the capabilities of one of ordinary skill in the art to add a
`
`specific amount of oil return agent to the refrigerant of Takasugi with the predicted result
`
`of improving the recovery of oil.
`
`16.
`
`Regarding claim 2,
`
`17.
`
`Takasugi teaches that the refrigerator oil is an alkylbenzene oil (see pars. 34,
`
`56).
`
`18.
`
`Regarding claim 3,
`
`19.
`
`Takasugi as modified above teaches that the oil return agent is n-pentane (see
`
`Yuzawa, col 1, lines 60-61).
`
`20. m is/are alternatively rejected under pre-AIA 35 U.S.C. 103(a) as being
`
`unpatentable over Takasugi (US 2004/0118145) as evidenced by van Wijngaarden
`
`(2008/0184735) in view of Takemasa (US 5351499).
`
`21.
`
`Regarding claim 1,
`
`22.
`
`Referring to Fig. 1, Takasugi teaches
`
`A binary refrigeration apparatus 100 comprising:
`
`a high temperature refrigeration cycle H; and
`
`

`

`Application/Control Number: 14/668,974
`
`Page 9
`
`Art Unit: 3744
`
`a low temperature refrigeration cycle L including an evaporator 14; and a
`
`cascade condenser 12 connecting the high temperature refrigeration cycle
`
`and the low temperature refrigeration cycle, wherein;
`
`the high temperature refrigeration cycle is filled with propane (see par. 46)
`
`and a refrigerator oil (see pars. 34, 48, 56)
`
`the low temperature refrigeration cycle is filled with a refrigerant (e.g.
`
`ethane, see par. 47) including a hydrocarbon (e.g. ethane, see par. 47)
`
`having a boiling point of -80 CC or lower (wherein it is known in the art that
`
`ethane generally has a boiling point of -89 degrees Celsius, as evidenced
`
`by van Wijngaarden, par. 4), a refrigerator oil (see pars. 34, 48, 56),
`
`the hydrocarbon having a boiling point of -80 CC or lower consists of
`
`ethane (see par. 47),
`
`and the low temperature refrigeration cycle does not include an oil
`
`separator.
`
`23.
`
`A claim term is functional when it recites a feature "by what it does rather than by
`
`what it is".
`
`24. While features of an apparatus may be recited either structurally or functionally,
`
`claims directed to an apparatus must be distinguished from the prior art in terms of
`
`structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d
`
`1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference
`
`relating to function did not defeat the Board’s finding of anticipation of claimed
`
`apparatus because the limitations at issue were found to be inherent in the prior art
`
`

`

`Application/Control Number: 14/668,974
`
`Page 10
`
`Art Unit: 3744
`
`reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29
`
`(CCPA1971);ln re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959).
`
`“[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard
`
`Co. v. Bausch & Lomb Inc, 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir.
`
`1990) (emphasis in original).
`
`25.
`
`It appears that the language, an ultra/ow temperature of -80 CC or lower is
`
`produced by evaporating the hydrocarbon in the evaporator, is a recitation of what the
`
`evaporator is configured to do and not what the evaporator is as there are no structural
`
`attributes of the interrelated components except for the requirement that an ultralow
`
`temperature of -80 degrees Celsius or lower is produced by evaporating the
`
`hydrocarbon in the evaporator. While features of an apparatus may be recited either
`
`structurally or functionally, claims directed to an apparatus must be distinguished from
`
`the prior art in terms of structure rather than function, see MPEP 2114 [R-1]. Since the
`
`evaporator of Takasugi is capable of producing an ultralow temperature of -80 degrees
`
`Celsius or lower by evaporating the hydrocarbon in the evaporator (see pars. 40, 64),
`
`the evaporator of Takasugi meets the claimed limitations of being configured to do so.
`
`There is no structural difference between the evaporator of Takasugi and the evaporator
`
`of Applicant’s claim 1.
`
`26.
`
`Takasugi does not teach that the low temperature refrigeration cycle is filled with
`
`a refrigerant, a refrigerator oil, and
`
`an oil return agent,
`
`

`

`Application/Control Number: 14/668,974
`
`Page 11
`
`Art Unit: 3744
`
`the oil return agent is contained in an amount of from 0.1 to 14 mass%
`
`with respect to the ethane in the refrigerant in the low temperature
`
`refrigeration cycle.
`
`27.
`
`However, the prior art contains a comparable device that was improved by
`
`adding an oil return agent, wherein the oil return agent is contained in an amount of
`
`from 0.1 to 14 mass% with respect to the refrigerant of the prior art device.
`
`28.
`
`For example, Takemasa, directed to a refrigerant composition and binary
`
`refrigeration system using it, teaches a refrigerant composition wherein n-pentane is
`
`used as an oil returning agent (see col 1, lines 66-68) and added to a refrigerant in a
`
`specific amount (see col 2, lines 10-16). The refrigerants sealed in the low temperature
`
`refrigerant circuit is mixed with n-pentane at a ratio of 0.1 to 14% by weight based on
`
`the total weight of the refrigerant sealed in the low temperature refrigerant circuit (see
`
`col 2, lines 10-16).
`
`29.
`
`Takemasa teaches that n-pentane is highly compatible with the oil of the
`
`compressor, and when n-pentane is mixed by a predetermined amount to a refrigerant
`
`mixture, the oil being dissolved in n-pentane can be fed back to the compressor so that
`
`troubles such as blockage caused by lack of oil in the compressor can be prevented
`
`(see col 2, lines 49-64).
`
`30.
`
`Therefore, it would have been obvious to one of ordinary skill in the art at hte
`
`time of invention to modify Takasugi by Takemasa, using the known technique of
`
`adding a specific amount of an oil return agent to a refrigerant in order to improve the
`
`

`

`Application/Control Number: 14/668,974
`
`Page 12
`
`Art Unit: 3744
`
`return of oil to a compressor, such that the low temperature refrigeration cycle is filled
`
`with a refrigerant, a refrigerator oil, and
`
`an oil return agent (e.g. n-pentane),
`
`the oil return agent is contained in an amount of from 0.1 to 14 mass%
`
`with respect to the ethane in the refrigerant in the low temperature
`
`refrigeration cycle,
`
`with the motivation dissolving the oil in the return agent and thereby further assisting the
`
`return of the oil to the compressor and avoiding damage to the compressor due to lack
`
`of oil in the compressor as taught by Takemasa. As in Takemasa, it is within the
`
`capabilities of one of ordinary skill in the art to add a specific amount of oil return agent
`
`to the refrigerant of Takasugi with the predicted result of assisting the return of the oil to
`
`the compressor and avoiding damage to the compressor due to lack of oil in the
`
`compressor.
`
`Response to Arguments
`
`Previously entered rejections under 35 USC 112 are withdrawn.
`
`Applicant’s arguments, filed 11/16/2017, with respect to the rejection of claims 1-
`
`2.
`
`3.
`
`7 under 35 USC 112(a) have been fully considered and are persuasive. The rejection
`
`of claims 1-7 under 35 USC 112(a) has been withdrawn. Therefore, the previous
`
`interpretation of claim 1 has been withdrawn as well. However, upon further
`
`consideration, a new ground(s) of rejection is made as described above.
`
`

`

`Application/Control Number: 14/668,974
`
`Page 13
`
`Art Unit: 3744
`
`4.
`
`Please note that applicant argues that Takasugi fails to disclose that the
`
`hydrocarbon of the refrigerant consists of ethane. However, referring to par. 47,
`
`Takasugi teaches that the hydrocarbon can consist of ethane.
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to STEVE TANENBAUM whose telephone number is
`
`(313)446-6522. The examiner can normally be reached on Monday through Friday
`
`10:30 AM to 7 PM.
`
`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, Frantz Jules can be reached on (571) 272-6681. The fax phone number for
`
`the organization where this application or proceeding is assigned is 571 -273-8300.
`
`

`

`Application/Control Number: 14/668,974
`
`Page 14
`
`Art Unit: 3744
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`Information regarding the status of an application may be obtained from the
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`/S. T./
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`Examiner, Art Unit 3744
`/FRANTZ JULES/
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`Supervisory Patent Examiner, Art Unit 3744
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