www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`
`15/328,359
`
`01/23/2017
`
`MASANORI KOBAYASHI
`
`20759.0019USWO
`
`8005
`
`53148
`
`759°
`
`01/28/20”
`
`HAMRE, SCHUMANN, MUELLER & LARSON RC.
`45 South Seventh Street
`Suite 2700
`
`MINNEAPOLIS, MN 55402-1683
`
`TANENBAUM' TZVI SAMUEL
`
`ART UNIT
`3763
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`01/28/2019
`
`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):
`PTOMai1@hsml.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Off/09 A0170” Summary
`
`Application No.
`15/328,359
`Examiner
`STEVE S TAN EN BAUM
`
`Applicant(s)
`KOBAYASHI et al.
`Art Unit
`AIA Status
`3763
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 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). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f 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).
`
`Status
`
`1). Responsive to communication(s) filed on 12/20/2018.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a). This action is FINAL.
`
`2b) C] This action is non-final.
`
`3)[:] 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 Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)
`Claim(s)
`
`1—12 is/are pending in the application.
`
`5a) Of the above claim(s)
`
`is/are withdrawn from consideration.
`
`E] Claim(s)
`
`is/are allowed.
`
`Claim(s) fl is/are rejected.
`
`[:1 Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
`
`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabte. 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
`
`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10)[:] The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 12/20/2018 is/are: a). accepted or b)[:] 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)[:] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)I:I All
`
`b)D Some”
`
`C)D None of the:
`
`1.[:] Certified copies of the priority documents have been received.
`
`2.[:] 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)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) E] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20190118
`
`

`

`Application/Control Number: 15/328,359
`Art Unit: 3763
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined under the first
`
`inventor to file provisions of the AIA.
`
`Claim Rejections - 35 USC § 103
`
`1.
`
`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.
`
`2.
`
`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 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.
`
`3.
`
`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.
`
`4.
`
`The factual inquiries set forth in Graham v. John Deere C0,, 383 U.S. 1, 148 USPQ 459 (1966),
`
`that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are
`
`summarized as follows:
`
`

`

`Application/Control Number: 15/328,359
`Art Unit: 3763
`
`Page 3
`
`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.
`
`2.
`
`Claims 1-7I 9-10,
`
`is/are rejected under 35 U.S.C. 103 as being unpatentable over Kita (JP
`
`2000249061).
`
`4.
`
`5.
`
`Regarding claim 1,
`
`Referring to the embodiment shown in Figs. 1, 7 and annotated Fig.8 Kita teaches
`
`A hermetic compressor 1 comprising, inside a hermetic container 2:
`
`an electric motor 4;
`
`a compression element 5 driven by the electric motor;
`
`a lubricating oil 22 for lubricating the compression element; and
`
`a vibration damping member 36 formed of a plate-shaped member (e.g. as vibration
`
`damping member 36 is formed in the shape of a [baffle plate], see pars. 104, 106, 109)
`
`having a part 25 fixed to the hermetic container and another part being a free end part
`
`(e.g. a free end part comprising free end parts 29-34),
`
`the vibration damping member further comprising a connection part (e.g. one of parts
`
`26-28, see par. 108) between the part 25 fixed to the hermetic container and thefree
`
`end part (e.g. one of the free end parts 29-34),
`
`wherein a widthwise shape of the free end part is offset to one side so that the vibration
`
`damping member as a whole is unbalanced in weight with respect to an axis (e.g. as
`
`element 35 creates an unbalance in weight, see annotated Fig.8),
`
`

`

`Application/Control Number: 15/328,359
`Art Unit: 3763
`
`Page 4
`
`wherein a natural frequency of the vibration clamping member is in conformity with a
`
`naturalfrequency of the hermetic container (e.g. the natural frequency of the vibration
`
`clamping member is in some conformity with the natural frequency of the hermetic
`
`container, see pars. 46, 49, 53, 76, 115).
`
`I
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`
`x
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`a.» ”q“
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`
`6.
`
`7.
`
`Kita does not specifically teach
`
`the connection part being narrower than the part fixed to the hermetic container and
`
`the free end part.
`
`8.
`
`Kita does, however, disclose that elements such as the width and shape of the connection
`
`part(s) can be changed in order to change the natural frequency; due to the shape of the container 2
`
`noise reduction can be expanded (see par. 114).
`
`9.
`
`Therefore, the width of the connection part is recognized as a result-effective variable, Le. a
`
`variable which achieves a recognized result. In this case, the recognized result is that the natural
`
`\
`\
`\\\\\\\ t
`'
`
`1w \
`w
`.
`-
`,
`¢ \ ->:
`g fii
`.
`.
`
`m‘
`
`.
`
`\
`
`N ‘
`
`

`

`Application/Control Number: 15/328,359
`Art Unit: 3763
`
`Page 5
`
`frequency can be changed which affects a noise reduction. Therefore, since the general conditions of
`
`the claim, i.e. that the width of the connection part(s) can be changed, was disclosed in the prior art by
`
`Kita, it is not inventive to discover the optimum width by routine experimentation, and it would have
`
`been obvious to one of ordinary skill in the art at the time of the invention to modify the connection
`
`part such that the connection part [is] narrower than the partfixed to the hermetic container and the
`
`free end part in order to change the natural frequency and affect a noise reduction.
`
`10.
`
`Regarding claim 2,
`
`11.
`
`Kita teaches wherein the vibration damping member 36 includes a plurality of the free end parts
`
`(e.g. free end parts 29-35).
`
`12.
`
`Regarding claim 3,
`
`13.
`
`Kita teaches wherein the plurality of the free end parts of the vibration damping member have
`
`different natural frequencies (see pars. 112-113).
`
`14.
`
`Regarding claim 4,
`
`15.
`
`Kita teaches wherein a plurality of the vibration damping members are provided (see at least
`
`par. 87).
`
`16.
`
`Regarding claim 5,
`
`17.
`
`Kita teaches Wherein the part of the vibration damping member fixed to the hermetic container
`
`is fixed to a part of the hermetic container where amplitude of the natural frequency of the hermetic
`
`container is greatest (e.g. at an antinode, see at least par. 22).
`
`18.
`
`Regarding claim 6,
`
`19.
`
`Kita teaches wherein the vibration damping member is provided inwardly of the hermetic
`
`container.
`
`20.
`
`Regarding claim 7,
`
`

`

`Application/Control Number: 15/328,359
`Art Unit: 3763
`
`Page 6
`
`21.
`
`Kita teaches wherein the vibration damping member is provided to be positioned in the
`
`lubricating oil 22 at a bottom of the hermetic container.
`
`22.
`
`Regarding claim 9,
`
`23.
`
`Kita teaches wherein the vibration damping member further includes, other than the free end
`
`part (e.g. the free end part comprising free end parts 29-34), another part 35 including at least one
`
`contact part (e.g. the bottom part that contacts the container) that is in elastic contact with a surface of
`
`the hermetic container (see pars. 28, 79, 100, 128).
`
`24.
`
`Regarding claim 10,
`
`25.
`
`Kita teaches wherein the compression element is of a reciprocating type (see par. 68).
`
`26.
`
`Claims 5 is/are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Kita in
`
`view of Byung Hyun Kim (US 2006/0292023).
`
`27.
`
`Regarding claim 5,
`
`28.
`
`Assuming Kita does not specifically teach
`
`Wherein the part of the vibration clamping member fixed to the hermetic container is
`
`fixed to a part of the hermetic container where amplitude of the natural frequency of the
`
`hermetic container is greatest.
`
`29.
`
`Referring to Figs. 1, 3C, Byung Hyun Kim, directed to a hermetic compressor and vibration
`
`damping member, teaches Wherein a part (e.g. part 51) of a vibration damping member 50 fixed to the
`
`hermetic container 1 is fixed to a part of the hermetic container where amplitude of the natural
`
`frequency of the hermetic container is greatest (e.g. at the antinode of the lower case 10b).
`
`30.
`
`It would have been obvious to one of ordinary skill in the art before the filing date of the
`
`invention to modify Kita by Byung Hyun Kim with the motivation of maximizing the damping effect of
`
`the vibration damping member.
`
`

`

`Application/Control Number: 15/328,359
`Art Unit: 3763
`
`Page 7
`
`31.
`
`
`Claim 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kita in view of Chul-sung
`
`Kim (US 6435841).
`
`32.
`
`Regarding claim 8,
`
`33.
`
`Kita teaches wherein the vibration damping member is formed of a steel plate (see pars 91-92)
`
`but does not teach wherein the vibration damping member is formed of an iron plate.
`
`34.
`
`Chul-sung Kim, directed to a hermetic reciprocating compressor, teaches an elastic member 70
`
`that may be formed of any metal material having elasticity such as iron or steel (see col 4, lines 62-63).
`
`35.
`
`Since it has been held that the selection of a known material based on its suitability for its
`
`intended use supports a prima facie obviousness determination (see MPEP 2144.07), it would have been
`
`obvious to one of ordinary skill in the art before the filing date of the invention to modify Kita by Chul-
`
`sung Kim with the motivation of providing a relatively cheaper material (e.g. iron is usually cheaper than
`
`steel) that still provides suitable elasticity.
`
`36.
`
`Claim 11is/are rejected under 35 U.S.C. 103 as being unpatentable over Kita in view of
`
`Kawabata (US 2008/0253909).
`
`37.
`
`Regarding claim 11,
`
`38.
`
`Kita does not teach wherein driving at a plurality of operating frequencies is caused by an
`
`inverter.
`
`39.
`
`Kawabata, directed to a closed type electric refrigerant compressor, teaches wherein driving at
`
`a plurality of operating frequencies is caused by an inverter as hermetic container 301 comprises a
`
`compression mechanism 303 driven by inverter type electric motor 304 (see pars. 77, 97).
`
`40.
`
`It would have been obvious to one of ordinary skill in the art before the filing date of the
`
`invention to modify Kita by Kawabata with the motivation of modulating the compression capacity of
`
`the compressor of Kita and thereby satisfy alternating compressing demands.
`
`

`

`Application/Control Number: 15/328,359
`Art Unit: 3763
`
`Page 8
`
`41.
`
`Claim 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hiwata (US
`
`2014/0099218) in view of Kita.
`
`42.
`
`Regarding claim 12,
`
`43.
`
`Referring to Fig. 7, Hiwata teaches a refrigeration device 500 comprising a refrigerant circuit
`
`including a compressor 100 , a radiator 502, a decompressor 504, and a heat absorber 506 that are
`
`connected in a loop by piping (see par. 128) but does not teach wherein the compressor is the hermetic
`
`compressor according to claim 1.
`
`44.
`
`Kita, directed to a hermetic compressor, teaches the hermetic compressor according to claim 1.
`
`45.
`
`It would have been obvious to one of ordinary skill in the art before the filing date of the
`
`invention to modify Hiwata by Kita with the motivation of employing a low noise compressor (see Kita
`
`par. 1).
`
`Response to Arguments
`
`46.
`
`Previously entered objections to the drawings are withdrawn. Previously entered claim
`
`interpretations under 35 USC 112 are withdrawn. Previously entered rejections under 35 USC 112 are
`
`withdrawn.
`
`47.
`
`Applicant's arguments filed 12/20/2018 have been fully considered but they are not persuasive.
`
`Applicant argues that Kita does not teach that connection part(s) are narrower than the alleged fixed
`
`part fixed to the hermetic container and the alleged free end part. Kita, however, teaches a connection
`
`part(s) and further teaches that the width of the connection part(s) is recognized as a results effective
`
`variable. As the width of the connection part(s) is recognized as a results effective variable, it is not
`
`therefore inventive to discover the optimum width of the connection part(s) by routine
`
`experimentation.
`
`48.
`
`With respect to claims 1, 5, Applicant further argues that Byung Hyun Kim does not teach a
`
`connection part of the alleged vibration damping member being narrower than the alleged part fixed to
`
`

`

`Application/Control Number: 15/328,359
`Art Unit: 3763
`
`Page 9
`
`the hermetic container and the alleged free end part. Also, Byung Hyun Kim does not teach a widthwise
`
`shape of the alleged free end part offset to one side so the vibration damping member as a whole is
`
`unbalanced in weight with respect to an axis. Kita, however, teaches a connection part(s) and further
`
`teaches that the width of the connection part(s) is recognized as a results effective variable. As the
`
`width of the connection part(s) is recognized as a results effective variable, it is not therefore inventive
`
`to discover the optimum width of the connection part(s) by routine experimentation. Further, Kita
`
`teaches that a widthwise shape of the alleged free end part is offset to one side so the vibration
`
`damping member as a whole is unbalanced in weight with respect to an axis (see amended Fig.8).
`
`49.
`
`Applicant’s arguments with respect to claims 8, 11-12 have been fully considered but they are
`
`not persuasive for the same reasons as presented above.
`
`Conclusion
`
`50.
`
`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 CFR 1.136(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.
`
`51.
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to STEVE S TANENBAUM whose telephone number is (313)446-6522. The examiner
`
`can normally be reached on M-F 11 AM - 7 PM.
`
`

`

`Application/Control Number: 15/328,359
`Art Unit: 3763
`
`Page 10
`
`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.
`
`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
`
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`CANADA) or 571-272-1000.
`
`/S.T./
`Examiner, Art Unit 3763
`
`/FRANTZ F JULES/
`
`Supervisory Patent Examiner, Art Unit 3763
`
`