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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`
`15/538,118
`
`06/20/2017
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`HIROAKI NAKAI
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`20296.0100USWO
`
`5840
`
`53148
`
`759°
`
`02/08/20”
`
`HAMRE, SCHUMANN, MUELLER & LARSON RC.
`45 South Seventh Street
`Suite 2700
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`MINNEAPOLIS, MN 55402-1683
`
`ZERPHEY' CHRISTOPHER R
`
`ART UNIT
`3763
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`02/08/2019
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
`PTOMail@hsml.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Off/09 A0170” Summary
`
`Application No.
`15/538,118
`Examiner
`CHRISTOPHER R ZERPHEY
`
`Applicant(s)
`NAKAI et al.
`Art Unit
`3763
`
`AIA Status
`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
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`1). Responsive to communication(s) filed on 12/17/2018.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a). This action is FINAL.
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`2b) C] This action is non-final.
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`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.
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`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.
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`Disposition of Claims*
`5)
`Claim(s)
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`8—13 is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
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`Claim(s) fl is/are rejected.
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`[:1 Claim(s) _ is/are objected to.
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`) ) ) )
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`6 7
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`8
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`
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`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
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
`10)[:] The specification is objected to by the Examiner.
`
`11)[:] The drawing(s) filed on
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`is/are: a)D accepted or b)l:] 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:
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`a)D All
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`b)I:I Some”
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`c)C] None of the:
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`1.[:] Certified copies of the priority documents have been received.
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`2.[:] Certified copies of the priority documents have been received in Application No.
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`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)).
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`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
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`1) C] Notice of References Cited (PTO-892)
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`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-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20190205
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`

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`Application/Control Number: 15/538,118
`Art Unit: 3763
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`Page 2
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`Notice of Pre-AIA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
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`2.
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`The amendment received 12/17/2018 is entered. Claims 1-7 are cancelled and claims 8-13 are
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`new
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`Specification
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`3.
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`The specification amendment received 12/17/2018 is entered. Said amendment correctsa
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`typogra phical error at [0004].
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`Claim Rejections - 35 USC § 102
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`4.
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`In the event the determination ofthe status of the application as subject to A|A35 U.S.C.102
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`and 103 (or as subject to pre-AIA 35 U.S. C. 102 and 103) is incorrect, any correction of the statutory
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`basis for the rejection will not be considered a new ground of rejection ifthe prior art relied upon, and
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`the rationale supporting the rejection, would be the same under either status.
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`5.
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`The following is a quotation of the appropriate paragraphs of 35 U.S. C. 102 that form the basis
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`for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(a )(1) the claimed invention was patented, described in a printed publication, or in pu blic use, on sale
`or otherwise a vailable to the public before the effective filing date ofthe claimed invention.
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`6.
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`Claim(s) 8, 9, and 11-13 is/are rejected under 35 U.S.C.102(a)(1) as being anticipated by Tana be
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`et aI (JP 05-149634).
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`a.
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`Regarding claim 8, Tanabe discloses (refer tofigure 1 unless otherwise noted) a
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`refrigeration cycle device comprising:
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`

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`Application/Control Number: 15/538,118
`Art Unit: 3763
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`Page 3
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`b.
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`a compressor (1) including a first compression chamber (3) and a second compression
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`chamber (4) that are independent;
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`c.
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`d.
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`e.
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`f.
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`a condenser (10);
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`a decompressor (11 and/or 14);
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`an evaporator (15);
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`an injection path (21) configured to introduce intermediate pressure refrigerant
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`decompressed by the decompressor (11 or 14);
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`g.
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`a first suction path (connecting to port 6) configured to introduce low pressure
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`refrigerant form the evaporator (15) to the first compression chamber (3);
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`h.
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`a second suction path (22 and 20) configured to introduce low pressure refrigerant from
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`the evaporator (15) to the second compression chamber (4);
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`i.
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`a communication passage (17) configured to introduce intermediate pressure
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`refrigerant compressed in the first compression chamber (3) to the second compression
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`chamber (4); and
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`j.
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`a switch (18 and 23) configured to selectively make one of the evaporator(15) and the
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`communication passage (17) communicate with the second suction path (22 and 20) and block
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`the other one of the evaporator and the communication passage from communicating with the
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`second suction path (from figure 1 the condition of 23 enables the evaporator 15 to be
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`connected to the suction path 20 and the condition of 18 enables the communication passage
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`17 to connect with the suction path 20; therefor because the system is established to be capable
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`of meeting this limitation it is met by the reference),
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`k.
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`wherein the injection path (21) introduces the intermediate pressure refrigerant tothe
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`second compression chamber (4; [0035]),
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`

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`Application/Control Number: 15/538,118
`Art Unit: 3763
`
`Page4
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`l.
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`the refrigerant is compressed in the first compression chamber (3) and the second
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`compression chamber (4) independently (in this context the term independently is understood
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`to mean that the chambers are arranged to be in parallel) when the second compression
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`chamber (4) is communicated with the evaporator (15), and
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`m.
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`refrigerant compressed in the first compression chamber (3) is further compressed in
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`the second compression chamber when the second compression chamber is communicated
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`with the communication passage (the compressor chambers are also arranged to be in series).
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`n.
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`Regarding claim 9, Tanabe discloses the second suction path (22 and 20) has a
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`connection part connection with the injection path (21) on a downstream side ofthe switch
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`element (18).
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`0.
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`Regarding claim 11, Tana be discloses the compressor is provided around a shaft and has
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`two eccentric shafts each performing eccentric rotation, and phases of the two eccentric shafts
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`are deviated by 180 degrees ([0043]).
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`p.
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`Regarding claim 12, Tana be discloses the suction path has an upward gradient
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`(generally vertical sections are shown in figure 1) between the connection part and the second
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`compression chamber).
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`q.
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`Regarding claim 13, Tana be discloses an inverter operates to arbitrarily cha nge a
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`rotation number of the compressor ([0044]; additionally the action of changing speed is
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`considered to be a functional limitation).
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`7.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections
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`Claim Rejections - 35 USC § 103
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`set forth in this Office action:
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`A pa tent for a claimed invention may not be obtained, notwithstanding that the claimed invention is
`not identically disclosed as set forth in section 102, ifthe differences between the claimed inve ntion
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`

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`Application/Control Number: 15/538,118
`Art Unit: 3763
`
`Page 5
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`a nd the prior a rt are such that the claimed invention as a whole would have been obvious before the
`effective filingdate ofthe claimed invention to a person having ordinarys kill i n the art to which the
`claimed invention pertains. Pa tentabilityshall not be negated bythe manner in which the invention
`was made.
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`8.
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`The factual inquiries set forth in Graham v. John Deere C0,, 383 US. 1, 148 USPQ 459 (1966),
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`that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are
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`summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
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`9.
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`Claims 10 and 12 is/are rejected under 35 U.S.C.103 as being unpatentable over Tanabe et al (JP
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`05-149634).
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`r.
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`Regarding claim 10, Tana be discloses the device of claim 1, but does not show, in the
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`embodiment of figure 1, that the compression chambervolumes are equal. However Ta nabe
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`does show that it is known to set compression chambers to be a same volume ([0063]). It would
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`have been obvious to one of ordinary skill
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`in the art to have provided equal volume compression
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`chambers as selection compression chamber volume is routine to one of ordinary skill as volume
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`relatesto a compressing capacity of a compressor.
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`5.
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`Regarding claim 12, in an alternative interpretation, tothe extent that the generally
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`schematic view of figure 1 does not instruct on gradient. It would have been obvious to one of
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`ordinary skill
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`in the art to provide an upward gradient as during installation refrigerant lines are
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`generally not provided with a perfectly horizontal position. Therefore it would have been
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`obvious to one of ordinary skill
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`in the art to have provided an upward gradient in order to
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`enable the connection of elements positioned at different heights.
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`

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`Application/Control Number: 15/538,118
`Art Unit: 3763
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`Page 6
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`Response to Arguments
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`10.
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`Applicant's arguments filed 12/17/2018 have been fully considered but they are not persuasive.
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`Applicant arguesthat the switch 18 and 23 are not configured to accomplish the features required by
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`the switch as recited in the claim. Howeverfrom figure 1 of Ta nabe in a condition where 23 is open and
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`18 is in connection with 19 the evaporator will be in communication with the second suction path and
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`the communication passage (17) will be blocked from the section suction path 20 (which connects to 7).
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`Further when 23 is in the closed condition and 18 is open to path 20 the communication passage 17 will
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`be in communication with the second suction path 20 and the eva poratorwill be blocked from the
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`second suction path. Since it has been shown that the switch (18 and 23) of Ta nabe accomplishes (or is
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`at least capable of accomplishing) each and every feature ofthe claimed switch, the feature is met.
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`Conclusion
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`11.
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`The prior art made of record and not relied upon is considered pertinent to applicant's
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`disclosure.
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`12.
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`THIS ACTION IS MADE FINAL. Applicant is reminded ofthe extension of time policy as set forth
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`in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE MONTHSfrom
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`the mailing date of this action.
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`In the event a first reply is filed within TWO MONTHSof the mailing date
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`of this final action and the advisory action is not mailed until after the end of the THREE-MONTH
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`shortened statutory period, then the shortened statutory period will expire on the date the advisory
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`action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing
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`date of the advisory action.
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`In no event, however, will the statutory period for reply expire laterthan
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`SIX MONTHSfrom the mailing date ofthis final action.
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`

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`Application/Control Number: 15/538,118
`Art Unit: 3763
`
`Page 7
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`13.
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`Any inquiry concerning this communication or ea rliercommunications from the examiner
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`should be directed to CHRISTOPHER RZERPH EY whose telephone number is (571)272-5965. The
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`examiner can normally be reached on M-F 7:00-4:00 PM.
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`Examiner interviews are available via telephone, in-person, and video conferencing using a
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`USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use
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`the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
`
`Ifattemptsto reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
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`Jianying Atkisson can be reached on 5712707740. The fax phone number for the organization where
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`this application or proceeding is assigned is 571-273-8300.
`
`Information regardingthe status of an application may be obtained from the Patent Application
`
`Information Retrieval (PAIR) system. Status information for published applications may be obtained
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`from either Private PAIR or Public PAIR. Status information for unpublished applications is available
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`CANADA) or 571-272-1000.
`
`/CHR|STOPHER RZERPHEY/
`
`Primary Examiner, Art Unit 3763
`
`