vs! “111%
`\.\_:
`
`
`
`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
`
`
`
`
`
`15/117,447
`
`08/08/2016
`
`TAKESHI OGATA
`
`20296.0072USWO
`
`1079
`
`”OW” —HAMRE, SCHUMANN,MUELLER&LARSONP.C. m
`7590
`53148
`45 South Seventh Street
`WAN, DEMING
`Suite 2700
`MINNEAPOLIS, MN 55402- 1683
`
`PAPER NUMBER
`
`ART UNIT
`3748
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`11/08/2018
`
`ELECTRONIC
`
`Please find below and/0r attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`PTOMail @hsml.com
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 15/117,447 OGATA ET AL.
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`DEMING WAN $2218 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 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 10/17/2018.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)IZI 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) 1 and 3-5is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`is/are allowed.
`6)I:I Claim(s)
`
`7)|Z| Claim(s)_1 and3-5is/are rejected.
`8)|:| 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. ov/ atentS/init events/
`
`
`
`h/index.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)IXI The drawing(s) filed on 8/8/2016 is/are: a)lX| 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)IXI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)IZl All
`
`b)|:l Some” c)I:l None of the:
`
`1.IXI Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.IX| 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) E InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date 9/12/2018.
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20181031
`
`

`

`Application/Control Number: 15/117,447
`
`Page 2
`
`Art Unit: 3748
`
`DETAILED ACTION
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`2.
`
`A request for continued examination under 37 CFR 1.114, including the fee set
`
`forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
`
`application is eligible for continued examination under 37 CFR 1.114, and the fee set
`
`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
`
`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on
`
`10/17/2018 has been entered.
`
`Claim Rejections - 35 USC § 103
`
`3.
`
`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.
`
`4.
`
`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.
`
`5.
`
`This application currently names joint inventors. In considering patentability of the
`
`claims the examiner presumes that the subject matter of the various claims was
`
`commonly owned as of the effective filing date of the claimed invention(s) absent any
`
`

`

`Application/Control Number: 15/117,447
`
`Page 3
`
`Art Unit: 3748
`
`evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
`
`point out the inventor and effective filing dates of each claim that was not commonly
`
`owned as of the effective filing date of the later invention in order for the examiner to
`
`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
`
`prior art against the later invention.
`
`6.
`
`Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over US
`
`Patent Publication 2006/0233655 to Clendenin et al (Clendenin) in view of US Patent
`
`Publication 2009/0101776 to Peterson et al (Peterson), and further in view of US Patent
`
`5,489,198 to Comparin et al (Comparin).
`
`ln Reference to Claim 1
`
`Clendenin discloses a scroll compressor comprising:
`
`a partition plate (Fig. 23, 22) that partitions an inside of a sealed container
`
`into a high-pressure space and a low-pressure space;
`
`a fixed scroll (Fig. 23, 566) adjacent to the partition plate;
`
`an orbiting scroll (Fig. 23, 54) that meshes with the fixed scroll to form a
`
`compression chamber;
`
`a rotation restrictor (Fig. 23, 64) that prevents rotation of the orbiting scroll;
`
`a main bearing (Fig. 23, 24) that supports the orbiting scroll;
`
`a bearing coupler (Fig. 23, annotated by the examiner) provided in the
`
`main bearing;
`
`a scroll coupler (Fig. 23, annotated by the examiner) provided in the fixed
`
`scroll; and
`
`

`

`Application/Control Number: 15/117,447
`
`Page 4
`
`Art Unit: 3748
`
`a pillar member (Fig. 23, annotated by the examiner) having a lower end
`
`and an upper end, the lower end being inserted in the bearing coupler, the upper
`
`end being inserted in the scroll coupler,
`
`wherein
`
`the fixed scroll, the orbiting scroll, the rotation restrictor, and the main
`
`bearing are disposed in the low-pressure space (as showed in Fig. 23),
`
`the fixed scroll and the orbiting scroll are disposed between the partition
`
`plate and the main bearing (as showed in Fig. 23), and
`
`the lower end of the pillar member (Fig. 23, annotated by the examiner)
`
`and the bearing coupler are threaded and fixed together, and the upper end of
`
`the pillar member and the scroll coupler are coupled together in a manner
`
`slidable (Paragraph 42 of Clendenin) in an axial direction, and
`
`a coupling region (Fig. 23, annotated by the examiner) where the pillar
`
`member couples with the scroll coupler is in intersecting relationship with a
`
`horizontal plane positioned at a center of a scroll wrap height of the fixed scroll.
`
`Clendenin does not teach the following but is taught by Peterson:
`
`a press-fit is an alternative mounting method of a bolt connection
`
`(Paragraph 50)
`
`At the time claimed invention was made it would have been obvious to an artisan
`
`of ordinary skill to combine that taught by Clendenin with that taught by Peterson, since
`
`this would enable the practitioner of Clendenin to practice the advantage of providing a
`
`simplified, lower cost mounting method (Paragraph 50 of Peterson).
`
`

`

`Application/Control Number: 15/117,447
`
`Page 5
`
`Art Unit: 3748
`
`The combination of Clendenin and Peterson as applied to Claim 1 does not teach the
`
`following but is taught by Comparin:
`
`the rotation restrictor is provided with a first key (Fig. 1, 92/94) and a
`
`second key (Fig. 3, 98/100), the first key engages with a first key groove (Fig. 1,
`
`Fig. 3, 106) of the orbiting scroll and the second key engages with a second key
`
`groove (Fig. 1, 108/110) of the fixed scroll.
`
`It would have been obvious to one with ordinary skill, in the art at the time of the
`
`invention, to modify the combination of Clendenin and Peterson as applied to Claim 1 to
`
`further incorporate teachings from Comparin. Doing so, would result in the Oldham ring
`
`of Comparin being used in the design of Clendenin, since Comparin provides method of
`
`limiting the rotation of the orbiting scroll.
`
`ln Reference to Claim 3
`
`Clendenin discloses wherein relationship expressed below is satisfied,
`
`where H is the scroll wrap height of the fixed scroll and L is an axial length of a
`
`coupling region where the upper end of the pillar member couples with the scroll
`
`coupler. (H/22L)
`
`Fig. 23 figure of Clendenin appears to show the necessary relative
`
`dimensions of 1/2 the height of the scroll wrap height (H) being greater than or
`
`equal to the axial length of the coupling region (L),
`
`it is deemed inherent, absent
`
`evidence to the contrary, that the H/2ZL)
`
`

`

`Application/Control Number: 15/117,447
`
`Page 6
`
`Art Unit: 3748
`
`pillar
`member
`
`scrolii
`§.{}L§§§&§‘
`
`Waring
`maple:
`
`' g,
`
`/
`.
`- “1%
`’
`.
`.
`.
`.97Q?‘
`§§
`
`spoofing
`._
`
`'
`seggmm
`
` V
`
`
`
`'
`
`Fig. 23, spammed by the examiner
`
`7.
`
`Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over of
`
`Clendenin, Peterson and Comparin as applied to claim 1 above, and further in view of
`
`US Patent 4,431,388 to Eber et al (Eber).
`
`In Reference to Claim 4
`
`Clendenin discloses a scroll compressor.
`
`The combination of Clendenin, Peterson and Comparin as applied to Claim 1 does not
`
`teach the following but is taught by Eber:
`
`an inner wall (Fig. 3, 27) of a fixed scroll wrap of the fixed scroll extends to
`
`a vicinity of a wall end (Fig. 3, 26) of an orbiting scroll wrap of the orbiting scroll
`
`to divide the compression chamber into a first chamber and a second chamber,
`
`the first chamber being formed between the inner wall of the fixed scroll wrap and
`
`an outer wall of the orbiting scroll wrap, the second chamber being formed
`
`

`

`Application/Control Number: 15/117,447
`
`Page 7
`
`Art Unit: 3748
`
`between an outer wall of the fixed scroll wrap and an inner wall of the orbiting
`
`scroll wrap, the first chamber and the second chamber having different trapped
`
`volumes.
`
`At the time claimed invention was made it would have been obvious to an artisan
`
`of ordinary skill to combine that taught by the combination of Clendenin, Peterson and
`
`Comparin as applied to Claim 1 with that taught by Eber, since this would enable the
`
`practitioner of Clendenin to practice the advantage of providing a dual compression
`
`design.
`
`In Reference to Claim 5
`
`Clendenin discloses a scroll compressor.
`
`The combination of Clendenin, Peterson and Comparin as applied to Claim 1 does not
`
`teach the following but is taught by Eber:
`
`where H is the scroll wrap height of the fixed scroll and R is a minimum
`
`distance between a center of the main bearing and an outer circumferential
`
`portion of a wrap edge of a fixed scroll wrap of the fixed scroll, the outer
`
`circumferential portion not overlapping the suction inlet in a radial direction when
`
`viewed from the center of the main bearing: HSR. (As showed in Fig. 1 of Eber)
`
`At the time claimed invention was made it would have been obvious to an artisan
`
`of ordinary skill to combine that taught by the combination of Clendenin, Peterson and
`
`Comparin as applied to Claim 1 with that taught by Eber, since this would enable the
`
`practitioner of Clendenin to practice the advantage of providing a dual compression
`
`design.
`
`

`

`Application/Control Number: 15/117,447
`
`Page 8
`
`Art Unit: 3748
`
`8.
`
`Applicant's arguments filed 10/17/2018 have been fully considered but they are
`
`Response to Arguments
`
`not persuasive.
`
`Starting on Page 4, the Applicant argues that the combination of Clendenin,
`
`Peterson as applied to Claim 1 does not teach the Oldham ring design as the
`
`amended claim. This is true. However, this argument is based on the amended
`
`claim. And it is moot in terms of the new ground of rejection.
`
`Starting on Page 5, the Applicant argues that 35 USC 103 rejection to Claims 4
`
`and 5, this argument is based on the argument to Claim 1, since Claim 1
`
`is
`
`rejected in the new ground of rejection, the argument to Claims 4 and 5 is moot.
`
`Conclusion
`
`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.
`
`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, Mark Laurenzi can be reached on 5712707878. The fax phone number for
`
`the organization where this application or proceeding is assigned is 571-273-8300.
`
`

`

`Application/Control Number: 15/117,447
`
`Page 9
`
`Art Unit: 3748
`
`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.
`
`/DEMING WAN/
`
`Examiner, Art Unit 3748
`11/1/2018
`
`