`
`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
`www.uspto.gov
`
`
`
`
`
`14/008,150
`
`09/27/2013
`
`Tsutomu Kon
`
`730356.401USPC
`
`5227
`
`Seed Intellectual Property Law Group PLLC
`701 Fifth Avenue, Suite 5400
`Seattle, WA 98104
`
`WAN’DEMING
`
`PAPER NUIVIBER
`
`ART UNIT
`
`3748
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`10/07/2015
`
`ELECTRONIC
`
`Please find below and/or 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):
`
`patentinfo @ seedip.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 14/008,150 KON ET AL.
`
`Office Action Summary
`Examiner
`Art Unit
`AIA (First Inventorto File)
`
`
`StatusNo DEMING WAN 3748
`-- 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 0137 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 9/15/2015.
`[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/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 20150922
`
`Disposition of Claims*
`5)|XI Claim(s) L5is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`s L5 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{<‘buspto.qov.
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`11)|Z| The drawing(s) filed on 9/27/2013 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)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.IZI Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`33.le 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: 14/008,150
`
`Page 2
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`Art Unit: 3748
`
`DETAILED ACTION
`
`1.
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions.
`
`2.
`
`The amendment filed on 9/15/2015 has been entered. Claim 6 has been
`
`canceled. Claims 1-5 are pending and under consideration.
`
`Claim Rejections - 35 USC § 1 12
`
`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.
`
`Claim 2 is 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 distinctly claim the
`
`subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards
`
`as the invention.
`
`In Reference to Claim 2
`
`Claim 2 recites “an outer diameter which allows for passing through a region of
`
`minimum inner diameter It is not clear which minimum inner diameter the applicant
`
`refers to, the copper pipe body, intake pipe or the steel pip body?
`
`Note, the following prior art rejections have been made as best the claims are
`
`understood in view of the 112 second paragraph errors above.
`
`

`

`Application/Control Number: 14/008,150
`
`Page 3
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`Art Unit: 3748
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`Claim Rejections - 35 USC § 103
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`5.
`
`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:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102 of this title, 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.
`
`6.
`
`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).
`
`7.
`
`Claim 1
`
`is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
`
`US Patent Publication 2008/0226483 to lwanami et al (lwanami), in view of US Patent
`
`5,039,287 to Da Costa, and further in view of US Patent 4,844,705 to Gannaway.
`
`ln Reference to Claim 1
`
`lwanami discloses a scroll compressor in which comprising;
`
`an intake pipe (Fig. 6, 50) being securely joined to a steel compressor
`
`casing (Fig. 6, 11a) by penetrating thereto,
`
`

`

`Application/Control Number: 14/008,150
`
`Page 4
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`Art Unit: 3748
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`the steel compressor casing (Fig. 6, 11a) being configured to house a
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`stationary scroll (Fig. 6, 23) and a swingable scroll (Fig. 6, 21);
`
`the intake portion (Fig. 6, 50) being provided in the stationary scroll (Fig. 6,
`
`23);
`
`a filter (Fig. 6, 40) being installed in the steel pipe body (Fig. 6, 50).
`
`lwanami discloses the invention substantially except the following which is taught by Da
`
`Costa:
`
`the intake pipe being configured to have a first pipe body (Fig. 2, 40) on an
`
`intake portion side and a second pipe body (Fig. 2, 31) joined to an upper end
`
`part of the first pipe body (Fig. 2, 40);
`
`the fist pipe body (Fig. 2, 40) of the intake pipe attached to the upper end
`
`part of the second pipe body (Fig. 2, 31);
`
`an end of the tubular steel mount pipe (Fig. 2, 30) protruding from the
`
`steel compressor casing (Fig. 2, 2) being welded to the outer circumference of
`
`the second pipe body (Fig. 2, 31), ;
`
`a filter (Fig. 2A, 50) being installed in the first pipe body (Fig. 2A, 40).
`
`

`

`Application/Control Number: 14/008,150
`
`Page 5
`
`Art Unit: 3748
`
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`
`It would have been obvious to one with ordinary skill, in the art at the time of the
`
`invention, to modify the invention of Iwanami to incorporate teachings from Da Costa.
`
`Doing so, would result in a suction which has a mount pipe, an intake pipe assembly,
`
`and a filter as being taught by Da Costa being implemented into lwanami's design.
`
`Iwanami discloses a suction pipe with filter is required for a scroll compressor.
`
`Iwanami
`
`is silent on detail of connecting the pipe from enteral to the fixed scroll via the casing of
`
`the compressor. Da Costa teaches an invention to introduce fluid into a stationary
`
`compressor mechanism externally via the compressor housing and the invention further
`
`includes a filer. A person with ordinary skill in the art will implement teachings from Da
`
`Costa into the invention of Iwanami since Da Costa provides a design which is easy to
`
`assemble and lower cost (Col. 1, 53-55).
`
`

`

`Application/Control Number: 14/008,150
`
`Page 6
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`Art Unit: 3748
`
`The combination of Iwanami and Da Costa as applied to Claim 1
`
`is silent on the
`
`material of pipes. However, it will be obvious to a person with ordinary skill in the art to
`
`make such a design decision based on obvious try choosing from a finite number of
`
`identified, predictable solutions, with a reasonable expectation of success and since it
`
`has been held to be within the general skill of a worker in the art to select a known
`
`material on the basis of its suitability for the intended use as a matter of obvious design
`
`choice. In re Leshin, 125 USPQ 416.
`
`Further the combination of Iwanami and Da Costa as applied to Claim 1
`
`is silent
`
`on how the intake pipe is attached to the casing. However, the applicant recites the
`
`product limitation by the process. Based on MPEP 2113, “[E]ven 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" Since Da Costa discloses the intake pipe is
`
`attached to the compressor casing, the first pipe (which is considered as the copper
`
`pipe by the Office) and the second pipe (which is considered as the steel pipe by the
`
`Office) are attached together, therefore, Da Costa discloses the claimed limitation in
`
`terms of structure.
`
`The combination of Iwanami and Da Costa as applied to Claim 1 does not teach the
`
`following but is taught by Gannaway:
`
`

`

`Application/Control Number: 14/008,150
`
`Page 7
`
`Art Unit: 3748
`
`the intake pipe (Fig. 4, 272) being into an intake portion with an O-ring
`
`(Fig. 4, 284) disposed therebetween;
`
`the O-ring being (Fig. 4, 284) installed on an outer circumference of the
`
`pipe body (Fig. 4, 272) fitted into the intake portion side
`
`It would have been obvious to one with ordinary skill, in the art at the time of the
`
`invention, to modify the combination of lwanami and Da Costa as applied to Claim 1 to
`
`incorporate teachings from Gannaway. Doing so, would result in an O ring being used
`
`between the intake pipe and the wall of the stationary scroll. O ring is well-known in the
`
`art to prevent any leakage at a joint. Further, Gannaway teaches an O ring at the
`
`suction pipe allows variation in radial spacing (Col. 10, Line 1). Therefore, it will be
`
`obvious to a person with ordinary skill in the art to incorporate an O ring as taught by
`
`Gannaway since it provides a seal and allows assembly tolerance.
`
`ln Reference to Claim 2
`
`lwanami discloses a filter in the suction pipe but is silent on how the filter is
`
`aflached.
`
`lwanami does not teach the following but is taught by Da Costa:
`
`an opening edge portion of the filter (As showed in Figure 2A, and 28)
`
`has an outer diameter which allows for passing through of minimum inner
`
`diameter, with the opening edge portion of the filter press-fitted into a stepped
`
`portion (as disclosed in Col. 4, Line 30, screen sit on the tab on the tube wall.)
`
`It would have been obvious to one with ordinary skill, in the art at the time of the
`
`invention, to modify the invention of lwanami to incorporate teachings from Da Costa.
`
`

`

`Application/Control Number: 14/008,150
`
`Page 8
`
`Art Unit: 3748
`
`Doing so, would result in a filter being attached to the wall of the suction pipe with tab as
`
`being taught by Da Costa being implemented into lwanami's design.
`
`lwanami discloses
`
`a suction pipe with filter is required for a scroll compressor.
`
`lwanami is silent on how
`
`the filter is attached. Da Costa teaches a design of attaching a filter in the compression
`
`suction pipe. A person with ordinary skill in the art will implement teachings from Da
`
`Costa into the invention of lwanami since Da Costa provides a design with a promised
`
`success of installing the filter in the suction pipe for a compressor.
`
`ln Reference to Claim 3
`
`lwanami discloses the filer in the suction pipe.
`
`lwanami is does silent of how the filer is formed. However, the applicant recites
`
`the product limitation by the process. Based on MPEP 2113, “[E]ven 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" Since the lwanami already
`
`discloses a suction pipe for a compressor with a filter installed, therefore, the lwanami
`
`discloses the claimed limitation in terms of structure.
`
`In Reference to Claim 4
`
`lwanami discloses the filter is a mesh filer (as showed in Fig. 6).
`
`lwanami is silent on the material of pipes. However, it will be obvious to a person
`
`with ordinary skill in the art to make such a design decision based on obvious try
`
`

`

`Application/Control Number: 14/008,150
`
`Page 9
`
`Art Unit: 3748
`
`choosing from a finite number of identified, predictable solutions, with a reasonable
`
`expectation of success and since it has been held to be within the general skill of a
`
`worker in the art to select a known material on the basis of its suitability for the intended
`
`use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
`
`lwanami is silent of how the filer is formed. However, the applicant recites the
`
`product limitation by the process. Based on MPEP 2113, “[E]ven 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" Since the lwanami already discloses a
`
`suction pipe for a compressor with a filter installed, therefore, the lwanami discloses the
`
`claimed limitation in terms of structure.
`
`In Reference to Claim 5
`
`lwanami discloses a filter in a suction pipe for a compressor.
`
`The combination of lwanami and Da Costa does not teach the following but is taught by
`
`Gannaway:
`
`an opening edge portion of the filter (Fig. 4, 298) is sandwiched between
`
`the first pipe (Fig. 4, 272) body and the second pipe body (Fig. 4, 270) with a joint
`
`area thereof.
`
`It would have been obvious to one with ordinary skill, in the art at the time of the
`
`invention, to modify the combination of lwanami and Da Costa to incorporate teachings
`
`

`

`Application/Control Number: 14/008,150
`
`Page 10
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`Art Unit: 3748
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`from Gannaway. Doing so, would result in the filer being sandwiched at the joint area of
`
`the first and the second pipe.
`
`lwanami discloses a filter is installed in the compressor
`
`suction pipe.
`
`lwanami is silent on the detail installation method. A person with ordinary
`
`skill in the art will integrate teachings from Gannaway since Gannaway provides an
`
`installation method with a promised result of success.
`
`8.
`
`Applicant's arguments filed 9/15/2015 have been fully considered but they are
`
`Response to Arguments
`
`not persuasive.
`
`The Claim amendment to Claims 1, 2, and 5 has overcome the Claim Objections.
`
`The Claim amendment to Claim 3 has overcome the 35 USC 112(b) Claim
`
`Rejection to Claim 3. The 35 USC 112(b) Claim Rejection to Claim 3 has been
`
`withdrawn.
`
`The 35 USC 112(b) Claim Rejection to Claim 6 is moot due to the claim
`
`cancellation to Claim 6.
`
`Starting on Page 5 to Page 9, the applicant's argument is based on the amended
`
`claims. The argument is moot in terms of the new ground rejection.
`
`Conclusion
`
`9.
`
`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).
`
`

`

`Application/Control Number: 14/008,150
`
`Page 11
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`Art Unit: 3748
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`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 DEMING WAN whose telephone number is (571 )272-
`
`1410. The examiner can normally be reached on Monday to Friday, 9:00 AM ~ 5:00 PM
`
`EST.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Kenneth Bomberg can be reached on 5712724922. The fax phone number
`
`for the organization where this application or proceeding is assigned is 571 -273-8300.
`
`

`

`Application/Control Number: 14/008,150
`
`Page 12
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`Art Unit: 3748
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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.
`
`/D. W./
`
`Examiner, Art Unit 3748
`9/22/2015
`
`/Jorge Pereiro/
`Primary Examiner, Art Unit 3743
`
`