www.uspto.gov
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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
`
`15/757,620
`
`03/05/2018
`
`YOShinOl‘i ISHIDA
`
`20240.0057USWO
`
`9784
`
`53148
`
`759°
`
`01/24/2020
`
`HAMRE, SCHUMANN, MUELLER & LARSON RC.
`45 South Seventh Street
`Suite 2700
`
`MINNEAPOLIS, MN 55402-1683
`
`FREAY' CHARLES GRANT
`
`ART UNIT
`3746
`
`PAPER NUMBER
`
`NOTIFICATION DATE
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`DELIVERY MODE
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`01/24/2020
`
`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
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`following e—mail address(es):
`PTOMail@hsml.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`017/09 A0170” Summary
`
`Application No.
`15/757,620
`Examiner
`CHARLES G FREAY
`
`Applicant(s)
`ISHIDA et al.
`Art Unit
`3746
`
`AIA (FITF) 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)C] Responsive to communication(s) filed on
`C] A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)Cj This action is FINAL.
`
`2b)
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`This action is non-final.
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`3)C] 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 Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)
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`Claim(s)
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`flis/are pending in the application.
`
`5a) Of the above Claim(s)
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`is/are withdrawn from consideration.
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`
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`E] Claim(ss)_is/are allowed.
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`CIaim(s)—1_—12is/are rejected.
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`E] Claim(ss_) is/are objected to.
`
`) ) ) )
`
`S)
`are subject to restriction and/or election requirement
`E] 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
`
`httpfiwww.”smogovmatentsflnit_events[pph[index.'§p or send an inquiry to PPeredhack@gsptg.ggv.
`
`Application Papers
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`10):] The specification is objected to by the Examiner.
`
`is/are: a)D accepted or b)lj objected to by the Examiner.
`11):] The drawing(s) filed on
`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).
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`Priority under 35 U.S.C. § 119
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`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). All
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`b)C] Some**
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`c)l:] None of the:
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`1.. Certified copies of the priority documents have been received.
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`2C] Certified copies of the priority documents have been received in Application No.
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`SD 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)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
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`Part of Paper No./Mai| Date 20200120
`
`

`

`Application/Control Number:15/757,620
`Art Unit:3746
`
`Page2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`Information Disclosure Statement
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`With regards to the Information Disclosure Statement of July 16, 2018 it is noted
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`that the Non-Patent Literature Documents included “English Synopsis” but the size and
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`quality of these synopsis made the documents illegible.
`
`Claim Rejections - 35 USC § 1 12
`
`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.
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`Claims 8, 9 and 10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-
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`AIA), second paragraph, as being indefinite for failing to particularly point out and
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`distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA
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`the applicant regards as the invention.
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`Regarding claims 8-10, the phrase "such as" in line 3 of each of the claims
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`renders the claim indefinite because it is unclear whether the limitations following the
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`phrase are part of the claimed invention. See MPEP § 2173.05(d).
`
`

`

`Application/Control Number:15/757,620
`Art Unit:3746
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`Page3
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`Claim Rejections - 35 USC § 103
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`In the event the determination of the status of the application as subject to AIA 35
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`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`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.
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
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`USPQ 459 (1966), that are applied for establishing a background for determining
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`obviousness under 35 U.S.C. 103 are summarized as follows:
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`1. Determining the scope and contents of the prior art.
`
`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
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`obviousness or nonobviousness.
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`This application currently names joint inventors. In considering patentability of the
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`claims the examiner presumes that the subject matter of the various claims was
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`commonly owned as of the effective filing date of the claimed invention(s) absent any
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`evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
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`

`

`Application/Control Number:15/757,620
`Art Unit:3746
`
`Page4
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`point out the inventor and effective filing dates of each claim that was not commonly
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`owned as of the effective filing date of the later invention in order for the examiner to
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`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
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`prior art against the later invention.
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`Claims 1 and 3-11 is/are rejected under 35 U.S.C. 103 as being unpatentable
`
`over lshida et al (EP 2818716, cited by the Applicant) in view of Takeda et al (EP
`
`2113580)
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`lshida et al disclose a refrigerant compressor (see Fig. 1) which reserves
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`lubricating oil 103 with a viscosity of VG2 to VG100 ([0055]) in a sealed container, and
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`accommodates therein an electric component 110 and a compression component 120
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`which is driven by the electric component and compresses a refrigerant, the
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`compression component 120 including at least one slide member comprising (see
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`[0020]) a base material made of an iron-based material and an oxide coating (see
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`[0020], [0027], & [0144]) film provided on a surface of the base material, and the oxide
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`coating film including: and a portion containing diiron trioxide (Fe203), in a region which
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`is closer to an outermost surface of the oxide coating film. lshida et al do not disclose a
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`silicon containing portion containing silicon (Si) which is more in quantity than silicon
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`(Si) of the base material, in a region which is closer to the base material. Takeda et al
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`disclose a similar coating on a sliding member comprising an iron base allow having a
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`layer of Si02 at an interface between the base member and an iron oxide layer Fe203.
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`

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`Application/Control Number:15/757,620
`Art Unit:3746
`
`Page5
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`At the time of the effective filing date of the application it would have been
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`obvious to one of ordinary skill in the art to include a silicon containing portion, as taught
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`by Takeda et al in order to enhance the adhesion properties of the coating.
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`With regards to claims 3 and 4paragraph [0020] teaches the layers of diiron
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`tetraoxide, triiron tetraoxide arranged as claimed.
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`With regards to claim 5 paragraph [0046] discloses the claimed thickness of the
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`oxide coating.
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`With regards to claims 6 and 7 it is noted that [0085] discloses that the base
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`material is cast iron. Furthermore, it is noted that cast iron typically contains silicon in
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`the noted percentages.
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`With regards to claims 8-10 the noted refrigerants and lubricating oils are set
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`forth in paragraphs [0061], [0070], [0088] and [0091].
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`With regards to claim 11 [0157] discloses that an inverter may be used to drive
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`the motor/compressor at various operating frequencies/speeds.
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`Claim 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over lshida
`
`et al in view of Takeda et al as applied to claim 1 above, and further in view of
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`Schlotterbeck et al (USPN 3,698,204).
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`As set forth above lshida et al in view of Takeda et al discloses the invention
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`substantially as claimed but does not disclose the refrigerant circuit having a heat
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`radiator, a pressure reducing unit and a heat absorber coupled by pipe. Schlotterbeck et
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`al discloses a typical refrigeration circuit as claimed in Fig. 1. At the time of the effective
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`filing date of the application it would have been obvious to one of ordinary skill in the art
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`

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`Application/Control Number:15/757,620
`Art Unit:3746
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`Page6
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`to utilize a well-known circuit as taught by Schlotterbeck et al in order to provide the
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`refrigeration function discussed by Ishida et al.
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`Double Parenting
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`The nonstatutory double patenting rejection is based on a judicially created
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`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
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`unjustified or improper timewise extension of the “right to exclude” granted by a patent
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`and to prevent possible harassment by multiple assignees. A nonstatutory double
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`patenting rejection is appropriate where the conflicting claims are not identical, but at
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`least one examined application claim is not patentably distinct from the reference
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`claim(s) because the examined application claim is either anticipated by, or would have
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`been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46
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`USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed.
`
`Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum,
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`686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
`
`(CCPA 1970); In re Thoringfon, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) or 1.321 (d)
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`may be used to overcome an actual or provisional rejection based on nonstatutory
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`double patenting provided the reference application or patent either is shown to be
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`commonly owned with the examined application, or claims an invention made as a
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`result of activities undertaken within the scope of a joint research agreement. See
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`MPEP § 717.02 for applications subject to examination under the first inventor to file
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`provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) -
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`

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`Application/Control Number:15/757,620
`Art Unit:3746
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`Page7
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`706.02(l)(3) for applications not subject to examination under the first inventor to file
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`provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR
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`1.321 (b).
`
`The USPTO Internet website contains terminal disclaimer forms which may be
`
`used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application
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`in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26,
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`PTO/AlA/25, or PTO/AlA/26) should be used. A web-based eTerminal Disclaimer may
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`be filled out completely online using web-screens. An eTerminal Disclaimer that meets
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`all requirements is auto-processed and approved immediately upon submission. For
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`more information about eTerminal Disclaimers, refer to
`
`
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`Claims 1-12 are provisionally rejected on the ground of nonstatutory double
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`patenting as being unpatentable over claim 1-4 and 18-21 of copending Application No.
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`15/757616 in view of lshida et al.
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`Claims 1-4, and 18-21 disclose a coating as claimed to be used with a device
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`having a sliding member. ‘61 6 does not disclose that the device is a refrigerant
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`compressor having a refrigerant and lubricating oil as claimed. As set forth above lshida
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`et al disclose the invention substantially as claimed including a similar coating being
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`used on a sliding component of a refrigerant compressor having a refrigerant and
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`lubricating oil as claimed, see the above rejections. At the time of the effective filing date
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`of the application it would have been obvious to apply the coating of ‘61 6 as the coating
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`of lshida et al in order to provide the compressor with wear resistance and to enhance
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`

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`Application/Control Number:15/757,620
`Art Unit:3746
`
`Page8
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`the adhesion properties of the coating. Furthermore, it would have been obvious to
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`provide a well-known refrigeration circuit in order to provide the refrigeration function.
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`This is a provisional nonstatutory double patenting rejection.
`
`Claims 1-12 are provisionally rejected on the ground of nonstatutory double
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`patenting as being unpatentable over claim 1-12 of copending Application No.
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`15/757934 in view of lshida et al.
`
`Claims 1-12 disclose a coating as claimed to be used with a device having a
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`sliding member. ‘934 does not disclose that the device is a refrigerant compressor
`
`having a refrigerant and lubricating oil as claimed. As set forth above lshida et al
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`disclose the invention substantially as claimed including a similar coating being used on
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`a sliding component of a refrigerant compressor having a refrigerant and lubricating oil
`
`as claimed, see the above rejections. At the time of the effective filing date of the
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`application it would have been obvious to apply the coating of ‘934 as the coating of
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`lshida et al in order to provide the compressor with wear resistance and to enhance the
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`adhesion properties of the coating. Furthermore, it would have been obvious to provide
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`a well-known refrigeration circuit in order to provide the refrigeration function.
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`This is a provisional nonstatutory double patenting rejection.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to CHARLES G FREAY whose telephone number is
`
`(571)272-4827. The examiner can normally be reached on Mon - Fri: 8:00 - 5:00.
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`

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`Application/Control Number:15/757,620
`Art Unit:3746
`
`Page9
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`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, Devon Kramer can be reached on (571)272—7118. The fax phone number
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`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 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.
`
`/CHARLES G FREAY/
`
`Primary Examiner, Art Unit 3746
`
`CGF
`
`January 20, 2020
`
`