UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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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
`www.uspto.gov
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`15/790,657
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`10/23/2017
`
`Hiroyuki SATO
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`065933-0736
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`7083
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`MCDERMOTT WILL & EMERY LLP
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`THE MCDERMOTT BUILDING
`500 NORTH CAPITAL STREET, NW.
`WASHINGTON, DC 20001
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`PETTITT~ JOHN F
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`3763
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`08/21/2019
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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):
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`ipdoeketmwe @ mwe. com
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`PTOL-90A (Rev. 04/07)
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`

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`0/7709 A0170” Summary
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`Application No.
`15/790,657
`Examiner
`JOHN F PETTITT
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`Applicant(s)
`SATO et al.
`Art Unit
`3763
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`AIA (FITF) Status
`Yes
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`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`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).
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`Status
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`1). Responsive to communication(s) filed on 7/24/19.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`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*
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`5)
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`Claim(s) fl is/are pending in the application.
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`5a) Of the above claim(s) 3 and 5 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) 1—2,4 and 6 is/are rejected.
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`E] 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
`[:1 Claim(s)
`9
`* If any claims have been determined allowable, 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.'sp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
`10):] The specification is objected to by the Examiner.
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`11). The drawing(s) filed on 10/23/17 is/are: a). accepted or b)[:] objected to by the Examiner.
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`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
`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)I:] All
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`b)|:] Some**
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`0). None of the:
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`1.. Certified copies of the priority documents have been received.
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`21:] Certified copies of the priority documents have been received in Application No.
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`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)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1)
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`Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
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`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 20190814
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`

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`Application/Control Number: 15/790,657
`Art Unit: 3763
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`Page 2
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`DETAILED ACTION
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`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
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`Election/Restrictions
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`Applicant’s election of species A (Fig. 1, 3) in the reply on 7/24/19 without traverse is
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`acknowledged. Claims 3, 5, are withdrawn from further consideration pursuant to 37
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`CFR 1.142(b), as being drawn to a nonelected species, there being no allowable
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`generic or linking claim.
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`Priority
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`Acknowledgment is made of applicant's claim for foreign priority based on an application
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`filed in Japan on May 14, 2015. It is noted, however, that applicant has not filed a
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`certified copy of the 2015/099398 application as required by 37 CFR 1.55.
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`Examiner Request
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`The applicant is requested to provide line numbers to each claim in all future claim
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`submissions to aide in examination and communication with the applicant about claim
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`recitations. The applicant is thanked for aiding examination.
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`Claim Rejections - 35 USC § 1 12
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`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.
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`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 1, 2, 4, 6 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA),
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`second paragraph, as being indefinite for failing to particularly point out and distinctly
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`

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`Application/Control Number: 15/790,657
`Art Unit: 3763
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`Page 3
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`claim the subject matter which the inventor or a joint inventor, or for pre-AIA the
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`applicant regards as the invention.
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`In regard to claim 1, the recitation, “are connected circularly in the stated order” is
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`indefinite as there is no antecedent basis for “the stated order” and it is not clear what is
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`required of a circular connection.
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`The recitation, “dissipates heat produced by compression,” is indefinite as
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`compression has already been recited and it is unclear why it is being reintroduced.
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`In regard to claim 4, the recitation, “the refrigerant in the condenser is cooled by
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`heat exchange between the second evaporation unit and the condenser” creates
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`confusion as it is unclear how this heat exchange and the heat exchange recited in
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`claim 1 relative to the same refrigerant are related and the recitation creates ambiguity.
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`All of the claims have been evaluated under the three-prong test set forth in
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`MPEP § 2181, subsection 1, and it is considered that none of the claim recitations
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`should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness
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`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.
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`

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`Application/Control Number: 15/790,657
`Art Unit: 3763
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`Page 4
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`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459
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`(1966), that are applied for establishing a background for determining obviousness
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`under 35 U.S.C. 103 are 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.
`4. Considering objective evidence present in the application indicating
`obviousness or nonobviousness.
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`Claim 1, 2, 4, 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tipton
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`(US 5142872) in view of JP5323023 and JP5222494.
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`Tipton teaches a refrigeration device (see figures) comprising:
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`a regenerative refrigerator (20, Stirling refrigerator, column 4, line 67) including a
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`heat dissipation portion (34, 36) that compresses a working fluid (of the Stirling
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`refrigerator) enclosed in a chamber (portion of compressor) and dissipates heat
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`produced by compression (from 34 to 22 to be rejected to environment), and a heat
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`absorption portion (32) in which the working fluid compressed in the heat dissipation
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`portion is expanded (column 15, line 30-40),
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`a first thermal siphon (60 and associated structure, column 7, line 60) including a
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`first condensation unit (84, 90) and a first evaporation unit (60); and
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`a storage chamber (10); the storage chamber (10) cooled by the first evaporation
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`unit (60);
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`wherein a refrigerant (column 6, line 35-45, heat transfer fluid) in the first
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`condensation unit (84, 90) is cooled and condensed (column 7, line 45-50) by heat
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`exchange between the first condensation unit (84, 90) and the heat absorption portion
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`

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`Application/Control Number: 15/790,657
`Art Unit: 3763
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`Page 5
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`(32), and the storage chamber (10) is cooled by evaporation of the refrigerant (heat
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`transfer fluid) in the first evaporation unit (60).
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`Tipton does not explicitly teach a refrigeration circuit having a compressor, a
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`condenser, a decompressor, and an evaporator cooling the storage chamber; and a
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`second thermal siphon having a second condensation unit and a second evaporation
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`unit, the second evaporation unit cooling the condenser and the second condensation
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`unit rejecting heat to the heat absorption portion. However, JP5222494 teaches that it
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`is well known to cool to storage chambers (13) with a refrigeration circuit (11) having a
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`compressor (21 ), a condenser (55), a decompressor (23), and an evaporator (24)
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`cooling the storage chamber (13); and to cool the condenser (55) with a top cycle (12);
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`JP5222494 further teaches that there are many operational advantages (para. 42, 44)
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`to providing cooling to the storage chamber (13) with the top cycle and at other times
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`provide cascade cooling through the cooling of the condenser (55). In addition to this
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`evidence, JP5323023 teaches it is well known to employ a second thermal siphon (31)
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`having a second condensation unit (24) and a second evaporation unit (12), the second
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`evaporation unit (12) cooling the condenser (of lower cycle (10) and the second
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`condensation unit (24) rejecting heat to a heat absorption portion of top cycle (20) to
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`enable thermal buffering and thermal capacity and pressure control for cascade cooling.
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`Therefore it would have been obvious to a person of ordinary skill in the art to modify
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`the Stirling refrigerator to provide cascade cycle cooling to a lower temperature
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`refrigeration circuit (11) having a compressor, condenser, decompressor, and
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`evaporator as taught by JP5222494 for the purpose of providing operational flexibilities
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`and advantages (para. 42, 44) and to provide the thermal siphon of JP5323023
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`

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`Application/Control Number: 15/790,657
`Art Unit: 3763
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`Page 6
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`between the stirling refrigerator and the refrigeration circuit (11) for the purpose of
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`providing thermal buffering and thermal capacity management between the cycles.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to JOHN F PETTITT whose telephone number is (571)
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`272-0771. The examiner can normally be reached on M-F, 9-5p. Examiner interviews
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`are available via telephone, in-person, and video conferencing using a USPTO supplied
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`web-based collaboration tool. To schedule an interview, applicant is encouraged to use
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`the USPTO Automated Interview Request (AIR): http://www.uspto.gov/interviewpractice.
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`The examiner’s supervisor, Frantz Jules can be reached on 571 272-6681. The fax
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`phone number for the organization where this application or proceeding is assigned is
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`571-273-8300.
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`Information regarding the status of an application may be obtained from
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`the Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/JOHN F PETTITT, Ill/
`Primary Examiner, Art Unit 3763
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`JFPIII
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`August 14, 2019
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