UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`15/790,657
`
`10/23/2017
`
`Hiroyuki SATO
`
`065933-0736
`
`7083
`
`MCDERMOTT WILL & EMERY LLP
`
`THE MCDERMOTT BUILDING
`500 NORTH CAPITAL STREET, NW.
`WASHINGTON, DC 20001
`
`PETTITT~ JOHN F
`
`3763
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`03/04/2020
`
`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
`
`following e—mail address(es):
`
`ipdoeketmwe @ mwe. com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`017/09 A0170” Summary
`
`Application No.
`15/790,657
`Examiner
`JOHN F PETTITT
`
`Applicant(s)
`SATO et al.
`Art Unit
`3763
`
`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
`
`1). Responsive to communication(s) filed on 11/21/19.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a). This action is FINAL.
`
`2b) D 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 Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)
`
`Claim(s)
`
`1 and 6 is/are pending in the application.
`
`5a) Of the above claim(s)
`
`is/are withdrawn from consideration.
`
`
`
`[:1 Claim(ss)
`
`is/are allowed.
`
`Claim(ss) 1—and 6 is/are rejected.
`
`D Claim(ss_) is/are objected to
`
`) ) ) )
`
`S)
`are subject to restriction and/or election requirement
`[:1 Claim(s
`* If any claims have been determined atowabte. 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)|:l The specification is objected to by the Examiner.
`
`is/are: a)[] accepted or b)l:] 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).
`
`Priority under 35 U.S.C. § 119
`
`12)D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)I:l All
`
`b)|:] Some**
`
`c)l:i None of the:
`
`1C] Certified copies of the priority documents have been received.
`
`2C] Certified copies of the priority documents have been received in Application No.
`
`3D 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) C] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`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-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20200221
`
`

`

`Application/Control Number:15/790,657
`Art Unit:3763
`
`Page2
`
`DETAILED ACTION
`
`The present application, filed on or after March 16, 2013, is being examined under the
`
`first inventor to file provisions of the AIA.
`
`Priority
`
`Acknowledgment is made of applicant's claim for foreign priority based on an application
`
`filed in Japan on May 14, 2015. It is noted, however, that applicant has not filed a
`
`certified copy of the 2015/099398 application as required by 37 CFR 1.55.
`
`Examiner Request
`
`The applicant is requested to provide line numbers to each claim in all future claim
`
`submissions to aide in examination and communication with the applicant about claim
`
`recitations. The applicant is thanked for aiding examination.
`
`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.
`
`Claims 1, 6 is/are 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 regard to claim 1, the recitation, “a refrigerant” repeated in claim 1 creates
`
`uncertainty if this is the same or different refrigerant.
`
`

`

`Application/Control Number:15/790,657
`Art Unit:3763
`
`Page3
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`The recitation, “the refrigerant in the condenser” lacks proper antecedent basis
`
`and it is unclear what stream is being recited.
`
`For examination, --a refrigerant-- refers to the refrigerant in the refrigerant circuit.
`
`--a first refrigerant-- refers to the fluid in the first thermosiphon and --a second
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`refrigerant-- refers to the fluid in the second thermosiphon.
`
`All of the claims have been evaluated under the three-prong test set forth in
`
`MPEP § 2181, subsection l, and it is considered that none of the claim recitations
`
`should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
`
`Claim Rejections - 35 USC § 103
`
`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.
`
`The factual inquiries set forth in Graham v. John Deere Co., 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:
`
`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.
`
`Claim(s) 1, 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tipton
`
`(US 5142872) in View of JP5222494 and JP5323023.
`
`

`

`Application/Control Number:15/790,657
`Art Unit:3763
`
`Page4
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`Tipton teaches a refrigeration device (see figures) comprising:
`
`a regenerative refrigerator (20, Stirling refrigerator, column 4, line 67) including a
`
`heat dissipation portion (34, 36) that compresses a working fluid (of the Stirling
`
`refrigerator) enclosed in a chamber (portion of compressor) and dissipates heat
`
`produced by compression (from 34 to 22 to be rejected to environment), and a heat
`
`absorption portion (32) in which the working fluid compressed in the heat dissipation
`
`portion is expanded (column 15, line 30-40),
`
`a first thermal siphon (60 and associated structure, column 7, line 60) including a
`
`first condensation unit (84, 90) and a first evaporation unit (60); and
`
`a storage chamber (10) cooled by the first evaporation unit (60);
`
`wherein a first refrigerant (column 6, line 35-45, heat transfer fluid) in the first
`
`condensation unit (84, 90) is cooled and condensed (column 7, line 45-50) by heat
`
`exchange between the first condensation unit (84, 90) and the heat absorption portion
`
`(32), and the storage chamber (10) is cooled by evaporation of the first refrigerant (heat
`
`transfer fluid) in the first evaporation unit (60).
`
`Tipton does not explicitly teach a refrigeration circuit having a refrigerant flow in
`
`order to a compressor, a condenser, a decompressor, and an evaporator; the
`
`evaporator cooling the storage chamber; and also Tipton does not teach a second
`
`thermal siphon including a second refrigerant flowing between a second condensation
`
`unit and a second evaporation unit, the second evaporation unit cooling the condenser
`
`and the second condensation unit rejecting heat to the heat absorption portion (32).
`
`However, JP5222494 teaches that it is well known to cool to storage chambers (13) with
`
`a refrigeration circuit (11) having a refrigerant flowing in order through a compressor
`
`

`

`Application/Control Number:15/790,657
`Art Unit:3763
`
`Page5
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`(21), a condenser (55), a decompressor (23), and an evaporator (24) cooling the
`
`storage chamber (13); and further JP5222494 teaches cooling the condenser (55) with
`
`a top cycle (12); JP5222494 further teaches that there are many operational
`
`advantages (para. 42, 44) to providing cooling to the storage chamber (13) with the top
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`cycle and at other times provide cascade cooling through the cooling of the condenser
`
`(55). In addition to this evidence, JP5323023 teaches it is well known to employ a
`
`second thermal siphon (31) having a second refrigerant flowing between a second
`
`condensation unit (24) and a second evaporation unit (12), the second evaporation unit
`
`(12) cooling the condenser (of lower cycle 10), and the second condensation unit (24)
`
`rejecting heat to a heat absorption portion of top cycle (20) to enable thermal buffering
`
`and thermal capacity and pressure control for cascade cooling. Therefore it would have
`
`been obvious to a person of ordinary skill in the art to modify the Stirling refrigerator of
`
`Tipton with cascade cycle cooling to a lower temperature refrigeration circuit having a
`
`compressor, condenser, decompressor, and evaporator as taught by JP5222494 for the
`
`purpose of providing operational flexibilities and advantages (para. 42, 44) and to
`
`provide the second thermal siphon of JP5323023 between the stirling refrigerator and
`
`the condenser of the refrigeration circuit for the purpose of providing thermal buffering
`
`and thermal capacity management between the cycles.
`
`Claim(s) 1, 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tipton
`
`(US 5142872) in view of Hinde (US 2012/0117996) and JP5323023.
`
`Tipton teaches a refrigeration device (see figures) comprising:
`
`

`

`Application/Control Number:15/790,657
`Art Unit:3763
`
`Page6
`
`a regenerative refrigerator (20, Stirling refrigerator, column 4, line 67) including a
`
`heat dissipation portion (34, 36) that compresses a working fluid (of the Stirling
`
`refrigerator) enclosed in a chamber (portion of compressor) and dissipates heat
`
`produced by compression (from 34 to 22 to be rejected to environment), and a heat
`
`absorption portion (32) in which the working fluid compressed in the heat dissipation
`
`portion is expanded (column 15, line 30-40),
`
`a first thermal siphon (60 and associated structure, column 7, line 60) including a
`
`first condensation unit (84, 90) and a first evaporation unit (60); and
`
`a storage chamber (10) cooled by the first evaporation unit (60);
`
`wherein a first refrigerant (column 6, line 35-45, heat transfer fluid) in the first
`
`condensation unit (84, 90) is cooled and condensed (column 7, line 45-50) by heat
`
`exchange between the first condensation unit (84, 90) and the heat absorption portion
`
`(32), and the storage chamber (10) is cooled by evaporation of the first refrigerant (heat
`
`transfer fluid) in the first evaporation unit (60).
`
`Tipton does not explicitly teach a refrigeration circuit having a refrigerant flow in
`
`order to a compressor, a condenser, a decompressor, and an evaporator; the
`
`evaporator cooling the storage chamber; and also Tipton does not teach a second
`
`thermal siphon including a second refrigerant flowing between a second condensation
`
`unit and a second evaporation unit, the second evaporation unit cooling the condenser
`
`and the second condensation unit rejecting heat to the heat absorption portion (32).
`
`However, Hinde teaches that it is well known to cool to storage chambers (18;
`
`para. 3) with a refrigeration circuit (60 having components identified herein) having a
`
`refrigerant flowing in order through a compressor (64), a condenser (part of 22), a
`
`

`

`Application/Control Number:15/790,657
`Art Unit:3763
`
`Page7
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`decompressor (70), and an evaporator (62) cooling the storage chamber (18); and
`
`further Hinde teaches cooling the condenser (part of 22) with a top cycle (14); Hinde
`
`further teaches that providing the refrigeration circuit provides a variety of temperature
`
`capabilities (para. 16, 19, 20) and modularity benefits (para. 24) to providing cooling to
`
`the storage chamber (18).
`
`In addition to this evidence, JP5323023 teaches it is well
`
`known to employ a second thermal siphon (31) having a second refrigerant flowing
`
`between a second condensation unit (24) and a second evaporation unit (12), the
`
`second evaporation unit (12) cooling the condenser (of lower cycle 10), and the second
`
`condensation unit (24) rejecting heat to a heat absorption portion of top cycle (20) to
`
`enable thermal buffering and thermal capacity and pressure control for cascade cooling.
`
`Therefore it would have been obvious to a person of ordinary skill in the art to modify
`
`the Stirling refrigerator of Tipton with cascade cycle cooling to a lower temperature
`
`refrigeration circuit having a compressor, condenser, decompressor, and evaporator as
`
`taught by Hinde for the purpose of providing operational flexibilities and advantages
`
`(para. 42, 44) and to provide the second thermal siphon of JP5323023 between the
`
`absorption portion of the Stirling refrigerator of Tipton and the condenser of the
`
`refrigeration circuit for the purpose of providing thermal buffering and thermal capacity
`
`management between the cycles.
`
`Claim(s) 1, 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tipton
`
`(US 5142872) in View of Hinde (US 2012/0117996).
`
`Tipton teaches a refrigeration device (see figures) comprising:
`
`

`

`Application/Control Number:15/790,657
`Art Unit:3763
`
`Page8
`
`a regenerative refrigerator (20, Stirling refrigerator, column 4, line 67) including a
`
`heat dissipation portion (34, 36) that compresses a working fluid (of the Stirling
`
`refrigerator) enclosed in a chamber (portion of compressor) and dissipates heat
`
`produced by compression (from 34 to 22 to be rejected to environment), and a heat
`
`absorption portion (32) in which the working fluid compressed in the heat dissipation
`
`portion is expanded (column 15, line 30-40),
`
`a first thermal siphon (60 and associated structure, column 7, line 60) including a
`
`first condensation unit (84, 90) and a first evaporation unit (60); and
`
`a storage chamber (10) cooled by the first evaporation unit (60);
`
`wherein a first refrigerant (column 6, line 35-45, heat transfer fluid) in the first
`
`condensation unit (84, 90) is cooled and condensed (column 7, line 45-50) by heat
`
`exchange between the first condensation unit (84, 90) and the heat absorption portion
`
`(32), and the storage chamber (10) is cooled by evaporation of the first refrigerant (heat
`
`transfer fluid) in the first evaporation unit (60).
`
`Tipton does not explicitly teach a refrigeration circuit having a refrigerant flow in
`
`order to a compressor, a condenser, a decompressor, and an evaporator; the
`
`evaporator cooling the storage chamber; and also Tipton does not teach a second
`
`thermal siphon including a second refrigerant flowing between a second condensation
`
`unit and a second evaporation unit, the second evaporation unit cooling the condenser
`
`and the second condensation unit rejecting heat to the heat absorption portion (32).
`
`However, Hinde teaches that it is well known to cool to storage chambers (18;
`
`para. 3) with a refrigeration circuit (60 having components identified herein) having a
`
`refrigerant flowing in order through a compressor (64), a condenser (part of 22), a
`
`

`

`Application/Control Number:15/790,657
`Art Unit:3763
`
`Page9
`
`decompressor (70), and an evaporator (62) cooling the storage chamber (18); and
`
`further Hinde teaches cooling the condenser (part of 22) with a top cycle (14); Hinde
`
`further teaches that providing the refrigeration circuit provides a variety of temperature
`
`capabilities (para. 16, 19, 20) and modularity benefits (para. 24) to providing cooling to
`
`the storage chamber (18).
`
`In addition, Hinde teaches it is well known to employ a
`
`second thermal siphon (20) having a second refrigerant flowing between a second
`
`condensation unit (part of 26) and a second evaporation unit (other part of 22), the
`
`second evaporation unit (other part of 22) cooling the condenser (part of 22), and the
`
`second condensation unit (part of 26) rejecting heat to a heat absorption portion (other
`
`part of 26) of the top cycle (14) to enable cascade benefits with modular capacity (para.
`
`23) and maintenance advantages (para. 24-25). Therefore it would have been obvious
`
`to a person of ordinary skill in the art to modify the Stirling refrigerator of Tipton with
`
`cascade cycle cooling with a lower temperature refrigeration circuit having a
`
`compressor, condenser, decompressor, and evaporator to cool the storage chamber
`
`(10) and to provide a second thermal siphon between condenser of the lower
`
`temperature refrigeration circuit and the heat absorption portion of the Stirling
`
`refrigerator for the purpose of providing a variety of temperature capabilities, modularity
`
`benefits, and maintenance benefits.
`
`Response to Arguments
`
`Applicant's arguments filed 11/21/19 have been fully considered but they are not
`
`persuasive. Applicant's argument is an allegation that the prior art does not teach the
`
`newly amended limitations.
`
`In response, the allegations are not persuasive in view of
`
`

`

`Application/Control Number:15/790,657
`Art Unit:3763
`
`Page10
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`rejections above showing that the claims are obvious in view of the prior art as detailed
`
`above.
`
`Conclusion
`
`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.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to JOHN F PETTITT whose telephone number is (571)
`
`272-0771. The examiner can normally be reached on M-F, 9-5p. 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): http://www.uspto.gov/interviewpractice.
`
`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
`
`

`

`Application/Control Number:15/790,657
`Art Unit:3763
`
`Page11
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`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.
`
`/JOHN F PETTITT, Ill/
`
`Primary Examiner, Art Unit 3763
`
`JFPIII
`
`February 21, 2020
`
`