www.uspto.gov
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/641,534
`
`02/24/2020
`
`Daisuke FUNAKOSHI
`
`20296.0136USWO
`
`1014
`
`HAY
`
`M
`
`TLER!
`
`HAMRE, SCHUMANN, MUELLER & LARSON P.C.
`45 South Seventh Street
`Suite 2700
`MINNEAPOLIS, MN 55402-1683
`
`HU, XIAOTING
`
`3746
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/16/2021
`
`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):
`PTOMail @hsml.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Office Action Summary
`
`Application No.
`16/641,534
`Examiner
`XIAOTING HU
`
`Applicant(s)
`FUNAKOSHI etal.
`Art Unit
`AIA (FITF) Status
`3746
`Yes
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s)filed on 24 February 2020.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) 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 Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-8 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s) 1-8 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible 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 PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)¥] The specification is objected to by the Examiner.
`11) The drawing(s) filed on 02/24/2020 is/are: a)[¥) accepted or b)(.) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.2 Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.4 Copies of the certified copies of the priority documents have been receivedin 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) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210709
`
`

`

`Application/Control Number: 16/641,534
`Art Unit: 3746
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined underthe
`
`first inventor to file provisions of the AJA.
`
`Response to Amendment
`
`2.
`
`Receipt and entry of Applicant’s Preliminary Amendmentfiled on 02/24/2020is
`
`acknowledged. Claims 4-7 have been amended. Claims 1-8 are pending in this application.
`
`3.
`
`The disclosure is objected to because of the following informalities: throughout the
`
`Specification
`
`specification, “lead valve” should be “reed valve”.
`
`Appropriate correction is required.
`
`4,
`
`Claims 1 and 5 are objected to because of the following informalities:
`
`Claim Objections
`
`a.
`
`In claim 1, “the compression chamber moving while changing a volumeofthe
`
`compressor” should read “the compression chamber moving while changing a volume of
`
`the cempresser compression chamber”(see publication paras. [0010] [0046]).
`
`b.
`
`In claim 5, “lead valve” should be “reed valve”.
`
`Appropriate correction is required.
`
`

`

`Application/Control Number: 16/641,534
`Art Unit: 3746
`
`Page 3
`
`Claim Rejections - 35 USC § 112
`
`5.
`
`The following is a quotation of 35 U.S.C. 112(b):
`
`(b) CONCLUSION.—Thespecification shall conclude with one or more claims particularly pointing
`out anddistinctly 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 claimsparticularly pointing out and distinctly
`claiming the subject matter which the applicant regardsas his invention.
`
`6.
`
`Claim 6 is 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 applications subject to pre-AIA 35 U.S.C.
`
`112, the applicant), regards as the invention.
`
`7.
`
`Regarding claim 6, the phrase "such as" renders the claim indefinite becauseit is unclear
`
`whetherthe limitations following the phrase are part of the claimed invention. See MPEP
`
`§ 2173.05(d). For examination purposes, it is interpreted as not required.
`
`Claim Rejections - 35 USC § 102
`
`8.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
`
`basis for the rejections under this section madein this Office action:
`
`A personshall be entitled to a patent unless —
`
`(a)(1) the claimed invention waspatented, described in a printed publication, or in public use, on sale,
`or otherwise available to the public before the effective filing date of the claimed invention.
`
`9.
`
`Claim(s) 1-3 and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
`
`Iguchi et al. US 2005/0169787.
`
`10.
`
`Regarding claim 1, Iguchi discloses:
`
`A compressor comprising (see Figs. 4-6):
`
`

`

`Application/Control Number: 16/641,534
`Art Unit: 3746
`
`Page 4
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`a fixed scroll 36 (see Figs. 1-2 for reference numeral 36 missing in Figs. 4-5) and a
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`revolving scroll 42 configuring a compression mechanism;
`
`a compression chamber 47 formed betweenthe fixed scroll and the revolving scroll;
`
`an intake chamber48 provided on an outer circumferential side of the fixed scroll 36;
`
`a discharge port 37a provided in a central part of the fixed scroll 36;
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`a muffler 82 provided to cover the discharge port 37a at an upperpart of the fixed scroll
`
`36; and
`
`a heat-insulating member 81 [0064] [0044] provided between thefixed scroll 36 and a
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`muffler space 68 formed by the muffler 82,
`
`wherein after a refrigerant gas taken into the intake chamber 48 is compressed by the
`
`revolving scroll 42 revolving and the compression chamber 47 moving while changing a volume
`
`of the compressor, the refrigerant gas is discharged from the discharge port 37a, and
`
`the refrigerant gas discharged from the discharge port 37a is discharged into the muffler
`
`space 68.
`
`11.
`
`Regarding claims 2 and 3, Iguchi discloses:
`
`wherein the heat-insulating member81 includes a recess 87 provided between the muffler
`
`space 68 and the intake chamber48.
`
`wherein the recess 87 is also provided in an area (radially inner area not above intake
`
`chamber48) other than an area (radially outer area above intake chamber 48) between the
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`muffler space 68 and the intake chamber48 (see Fig. 5).
`
`12.
`
`Regarding claim 5, Iguchi discloses:
`
`

`

`Application/Control Number: 16/641,534
`Art Unit: 3746
`
`Page 5
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`wherein the heat-insulating member81 further includes a lead valve 52 that opens and
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`closes the discharge port 37a and an opening 85a that serves as a relief section of the lead valve,
`
`and
`
`in the heat-insulating member 81, at least one of a rim of the opening 85a and an opening
`
`edge of the recess 87 has a protruding shape most protruding towardaside of the fixed scroll 36
`
`(see Figs. 5 and 6).
`
`Claim Rejections - 35 USC § 103
`
`13.
`
`The following is a quotation of 35 U.S.C. 103 which formsthe basis for all obviousness
`
`rejectionsset forth in this Office action:
`
`A patent for a claimed invention maynot 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 obviousbefore 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 mannerin which the invention was made.
`
`14.
`
`Claim 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Iguchiet al. US
`
`2005/0169787 in view of Tsujino JP HO5-033784 (03/26/2020 IDS).
`
`15.
`
`Regarding claim 4, Iguchiis silent regarding:
`
`wherein a portion close to the muffler space of the heat-insulating memberisfixed to the
`
`fixed scroll by a bolt.
`
`Tsujino teaches (see Fig. 1):
`
`wherein a portion close to the muffler space 4 of the heat-insulating member20 is fixed
`
`to the fixed scroll 8 by a bolt 21.
`
`Therefore, it would have been obvious to a person having ordinary skill at the time the
`
`invention wasfiled to combinethe teachings of Iguchi with that of Tsujino for the advantage of
`
`securely fastening the heat-insulating member.
`
`

`

`Application/Control Number: 16/641,534
`Art Unit: 3746
`
`Page 6
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`16.
`
`Claim 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Iguchiet al. US
`
`2005/0169787 in view of Karino et al. EP 2873863.
`
`17.
`
`Regarding claim 6, Iguchiis silent regarding:
`
`wherein the heat-insulating memberis formed of a porous material such as sintered
`
`metal.
`
`Karino teaches:
`
`wherein a heat-insulating member is formed of a porous material such as sintered metal
`
`(“Further, the sintered material has a large numberoffine cavities therein, and the heat-
`
`insulating effect of the sintered material itself and the heat insulating configuration of the present
`
`invention can form a synergetic effect” [0015]).
`
`Therefore, it would have been obvious to a person having ordinaryskill at the time the
`
`invention wasfiled to have selected a porous material such as sintered metal for the heat-
`
`insulating memberin Iguchi as taught by Karino, since it has been held to be within the general
`
`skill of a worker in the art to select a known material on the basis ofits suitability for the
`
`intended use; MPEP 2144.07.
`
`
`
`18. Claims 7 and8is/are rejected under 35 U.S.C. 103 as being unpatentable over Iguchi et
`
`al. US 2005/0169787 in view of Mahureet al. US 2016/0305430.
`
`19.
`
`Regarding claim 7, Iguchiis silent regarding:
`
`wherein a plurality of plates is laminated to form the heat-insulating member.
`
`Mahureteaches(see Figs. 3-4):
`
`wherein a plurality of plates 120, 130, 122 is laminated to form a heat-insulating member
`
`110 [0079].
`
`

`

`Application/Control Number: 16/641,534
`Art Unit: 3746
`
`Page 7
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`Therefore, it would have been obvious to a person having ordinaryskill at the time the
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`invention wasfiled to modify the heat-insulating memberof Iguchi to be formed of a plurality of
`
`plates as taught by Mahure for the advantage of providing both a low thermal conductivity and
`
`high strength and robustness (Mahure [0066] [0072)).
`
`20.
`
`Regarding claim 8, the combination of Iguchi and Mahure teaches:
`
`wherein the plurality of plates (heat-insulating member 81 of Iguchi formed from plural
`
`plates as taught by Mahure) includesplates having the recess 87 (Iguchi Fig. 5).
`
`Double Patenting
`
`21.
`
`The nonstatutory double patenting rejection is based on a judicially created doctrine
`
`grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or
`
`improper timewise extension of the “right to exclude” granted by a patent and to prevent possible
`
`harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where
`
`the conflicting claimsare not identical, but at least one examined application claim is not
`
`patentably distinct from the reference claim(s) because the examined application claim is either
`
`anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg,
`
`140 F.3d 1428, 46 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, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
`
`(CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
`
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may
`
`be used to overcome an actual or provisional rejection based on nonstatutory double patenting
`
`

`

`Application/Control Number: 16/641,534
`Art Unit: 3746
`
`Page 8
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`provided the reference application or patent either is shown to be commonly owned with the
`
`examinedapplication, or claims an invention madeasa result of activities undertaken within the
`
`scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination
`
`underthe first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §
`
`2146 et seq. for applications not subject to examination underthe first inventorto file provisions
`
`of the AJA.A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
`
`The USPTOInternet website contains terminal disclaimer forms which maybeused.
`
`Please visit www.uspto.gov/patent/patents-forms. Thefiling date of the application in which the
`
`form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or
`
`PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may befilled out completely
`
`online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-
`
`processed and approved immediately upon submission. For more information about eTerminal
`
`Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-Ljsp.
`
`22.
`
`Claims 1, 2, 4, and 6-8 are provisionally rejected on the ground of nonstatutory double
`
`patenting as being unpatentable over claims 1 and 3-6 of copending Application No. 16/641,523
`
`(reference application). Although the claimsat issue are not identical, they are not patentably
`
`distinct from each other because claims 1, 2, 4, 6, 7, and 8 of the instant application are
`
`respectively anticipated by claims 1, 1, 3, 4, 5, and 6 of the reference application.
`
`This is a provisional nonstatutory double patenting rejection because the patentably
`
`indistinct claims have not in fact been patented.
`
`

`

`Application/Control Number: 16/641,534
`Art Unit: 3746
`
`Page 9
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`Pertinent Prior Art
`
`23.
`
`Theprior art made of record and notrelied upon is considered pertinent to applicant's
`
`disclosure. In particular, Futagamiet al. JP 2016-094824 (03/26/2020 IDS) discloses a heat
`
`insulating member 39 anda heat insulating recess 38 formedin the fixed scroll 12. Forming a
`
`heat insulating recess in the heat insulating member 81 instead is known from Iguchiet al. US
`
`2005/0169787.
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to XIAOTING HU whosetelephone numberis (571)272-9222. The
`
`examiner can normally be reached on M-F 9am-S5pm EST.
`
`Examinerinterviews are available via telephone, in-person, and video conferencing using
`
`a USPTO supplied web-based collaboration tool. To schedule an interview, applicantis
`
`encouraged to use the USPTO Automated Interview Request (AIR)at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examinerby telephone are unsuccessful, the examiner’s
`
`supervisor, MARK LAURENZI can be reached on (571)270-7878. The fax phone numberfor
`
`the organization wherethis 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
`
`maybe 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
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`

`

`Application/Control Number: 16/641,534
`Art Unit: 3746
`
`Page 10
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`the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-
`
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`1000.
`
`/XIAOTING HU/
`Examiner, Art Unit 3746
`07/13/2021
`
`