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
`
`16/074,670
`
`08/01/2018
`
`Yoshinori ISHIDA
`
`20296.0119USWO
`
`1499
`
`HAMRE, SCHUMANN, MUELLER & LARSON RC.
`45 South Seventh Street
`Suite 2700
`
`MINNEAPOLIS, MN 55402-1683
`
`BABAA' NAELN
`
`PAPER NUMBER
`
`ART UNIT
`3763
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/02/2019
`
`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):
`PTOMai1@hsm1.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`0/7709 A0170” Summary
`
`Application No.
`16/074,670
`Examiner
`NAEL N BABAA
`
`Applicant(s)
`ISHIDA etal.
`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 8/1/2018.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a)[:] This action is FINAL.
`
`2b)
`
`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) fl is/are pending in the application.
`
`5a) Of the above Claim(s)
`
`is/are withdrawn from consideration.
`
`
`
`[:1 Claim(ss)
`
`is/are allowed.
`
`8)
`Claim(s 110Is/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 aflowable. 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.
`
`11). The drawing(s) filed on 8/1/2018 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:
`
`a). All
`
`b)C] Some**
`
`c)C] None of the:
`
`1.[:] Certified copies of the priority documents have been received.
`
`2C] Certified copies of the priority documents have been received in Application No.
`
`3.. Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`
`** 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-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20191105
`
`

`

`Application/Control Number: 16/074,670
`Art Unit: 3763
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`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 under 35 U.S.C. 119 (a)-(d).
`
`Information Disclosure Statement
`
`The information disclosure statement (IDS) submitted on 8/1/2018, 1/25/2019, 7/15/2019 was
`
`filed on or after the mailing date of the application. The submission is in compliance with the provisions
`
`of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
`
`Claim Interpretation
`
`The following is a quotation of 35 U.S.C. 112(f):
`
`(f) Element in Claim for a Combination. — An element in a claim for a combination may be expressed as
`a means or step for performing a specified function without the recital of structure, material, or acts
`in support thereof, and such claim shall be construed to cover the corresponding structure, material,
`or acts described in the specification and equivalents thereof.
`
`The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
`
`

`

`Application/Control Number: 16/074,670
`Art Unit: 3763
`
`Page 3
`
`An element in a claim for a combination may be expressed as a means or step for performing a
`specified function without the recital of structure, material, or acts in support thereof, and such claim
`shall be construed to cover the corresponding structure, material, or acts described in the
`specification and equivalents thereof.
`
`This application includes one or more claim limitations that do not use the word ”means,” but
`
`are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph,
`
`because the claim limitation(s) uses a generic placeholder that is coupled with functional language
`
`without reciting sufficient structure to perform the recited function and the generic placeholder is not
`
`preceded by a structural modifier. Such claim limitation(s) is/are:
`
`Electromotive element in claim 1;
`
`Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA
`
`35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure
`
`described in the specification as performing the claimed function, and equivalents thereof.
`
`If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or
`
`pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may:
`
`(1) amend the claim limitation(s) to avoid it/them
`
`being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting
`
`sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim
`
`limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being
`
`interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
`
`The claims in this application are given their broadest reasonable interpretation using the plain
`
`meaning of the claim language in light of the specification as it would be understood by one of ordinary
`
`skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as
`
`a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35
`
`U.S.C. 112, sixth paragraph, is invoked.
`
`

`

`Application/Control Number: 16/074,670
`Art Unit: 3763
`
`Page 4
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`As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong
`
`test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
`
`(A)
`
`the claim limitation uses the term ”means” or ”step” or a term used as a substitute for ”means”
`
`that is a generic placeholder (also called a nonce term or a non-structural term having no
`
`specific structural meaning) for performing the claimed function;
`
`(B)
`
`the term ”means” or ”step” or the generic placeholder is modified by functional language,
`
`typically, but not always linked by the transition word ”for” (e.g., ”means for”) or another linking
`
`word or phrase, such as ”configured to” or ”so that”; and
`
`(C)
`
`the term ”means” or ”step” or the generic placeholder is not modified by sufficient structure,
`
`material, or acts for performing the claimed function.
`
`Use of the word ”means” (or ”step”) in a claim with functional language creates a rebuttable
`
`presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35
`
`U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C.
`
`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient
`
`structure, material, or acts to entirely perform the recited function.
`
`Absence of the word ”means” (or ”step”) in a claim creates a rebuttable presumption that the
`
`claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
`
`paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-
`
`AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without
`
`reciting sufficient structure, material or acts to entirely perform the recited function.
`
`Claim limitations in this application that use the word ”means” (or ”step”) are being interpreted
`
`under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an
`
`Office action. Conversely, claim limitations in this application that do not use the word ”means” (or
`
`

`

`Application/Control Number: 16/074,670
`Art Unit: 3763
`
`Page 5
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`”step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph,
`
`except as otherwise indicated in an Office action.
`
`After reviewing the specification, the electromotive element is configured by a stator and a
`
`rotor (paragraph [0022]).
`
`Claim Rejections - 35 USC § 112
`
`112 2”” Statement
`
`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.
`
`Claim 4 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 pre-AIA the applicant regards as the invention.
`
`Regarding claim 4, the claim recites " wherein an additive amount of the fullerene is less than or
`
`In
`equal to a saturating amount of dissolution with respect to the freezer oi which renders the claim
`
`indefinite as it is unclear what is meant by ”a saturating amount of dissolution” and constitutes a
`
`saturating amount of fullerene. For the purposes of examination, the Examiner will interpret the claim
`
`to mean an optimal amount of fullerene is added, as paragraph [0103] notes that coefficients of friction
`
`are the smallest in the case of a saturated solution.
`
`

`

`Application/Control Number: 16/074,670
`Art Unit: 3763
`
`Page 6
`
`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 C0,, 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
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`nonobviousness.
`
`This application currently names joint inventors. In considering patentability of the claims the
`
`examiner presumes that the subject matter of the various claims was commonly owned as of the
`
`effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised
`
`of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that
`
`was not commonly owned as of the effective filing date of the later invention in order for the examiner
`
`to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art
`
`against the later invention.
`
`

`

`Application/Control Number: 16/074,670
`Art Unit: 3763
`
`Page 7
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`Claim 1-3, 5, 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over lshida (US
`
`2013/0167580) in view of lwanami (US 2006/0001002 — provided by Applicant in the IDS dated
`
`8/1/2018).
`
`Regarding claim 1, lshida teaches a refrigerant compressor (see Title) comprising:
`
`an electromotive element (102, Fig. 2, see paragraph [0053]); and
`
`a compression element (at least the assembly of the piston 109, shaft 104, Fig. 2, see paragraph
`
`[0053]) that is driven by the electromotive element (see paragraph [0053] which notes the motor 102
`
`drives the compressor 120), includes a slider (110, Fig. 2, see paragraph [0059]), and compresses a
`
`refrigerant (see paragraph [0011]).
`
`lshida does not teach wherein a freezer oil that lubricates the slider is added with a fullerene
`
`having a diameter that ranges from 100 pm to 10 nm.
`
`lwanami teaches a refrigerating cycle (lwanami, Title) that features a compressor (Inawami, 1,
`
`paragraph [0043]) which has a sliding portion that is lubricated by a refrigerating oil (see Inawami,
`
`paragraph [0047]), wherein the refrigerating oil contains a fullerene that has a cross section of several
`
`hundred pm to 100 nm (lwanami, paragraph [0048]).
`
`It would have been obvious to one of ordinary skill in the art, prior to the effective filing date, to
`
`provide lshida with the teaching of oil that has a fullerene having a diameter of 100pm to 10nm, as
`
`taught by lwanami, in order to decrease the coefficient of friction on the slider (lwanami, Abstract).
`
`Regarding claim 2, lshida as modified teaches the refrigerant compressor according to claim 1,
`
`wherein the fullerene is:
`
`one of a C60 fullerene (see lwanami, paragraph [0048]; where the limitations appear to be
`
`claimed in the alternative),
`
`

`

`Application/Control Number: 16/074,670
`Art Unit: 3763
`
`Page 8
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`a C70fullerene, and a higher-orderfullerene including a larger number of carbons than a
`
`number of carbons of the C70 fullerene; or a mixed fullerene obtained by mixing at least two of the C60
`
`fullerene, the C70 fullerene, and the higher-orderfullerene.
`
`Regarding claim 3, Ishida as modified teaches the refrigerant compressor according to claim 1,
`
`wherein a shape of the fullerene is spherical or elliptic (see lwanami, paragraph [0048]; where the
`
`limitations appear to be claimed in the alternative).
`
`Regarding claim 5, Ishida as modified teaches the refrigerant compressor according to claim 1,
`
`wherein the refrigerant compressed by the compression element is a hydrofluorocarbon (HFC)
`
`refrigerant or a mixed refrigerant including the HFC refrigerant (see Ishida, paragraph [0006]; where the
`
`limitations appear to be claimed in the alternative), and
`
`the freezer oil is:
`
`one of ester oil, alkylbenzene oil, polyvinyl ether, and polyalkylene glycol; or mixed oil of at
`
`least two of the ester oil, the alkylbenzene oil, the polyvinyl ether, and the polyalkylene glycol (Ishida,
`
`paragraph [0006]; where the limitations appear to be claimed in the alternative).
`
`Regarding claim 7, Ishida as modified teaches the refrigerant compressor according to claim 1,
`
`wherein the refrigerant compressed by the compression element is a hydrofluoroolefin (HFO)
`
`refrigerant or a mixed refrigerant including the HFO refrigerant (see Ishida, paragraph [0054]; where the
`
`limitations appear to be claimed in the alternative), and
`
`the freezer oil is: one of ester oil, alkylbenzene oil, polyvinyl ether, and polyalkylene glycol; or
`
`mixed oil of at least two of the ester oil, the alkylbenzene oil, the polyvinyl ether, and the polyalkylene
`
`

`

`Application/Control Number: 16/074,670
`Art Unit: 3763
`
`Page 9
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`glycol (|shida, paragraph [0006]which notes using polyol ester or polyvinyl ether; where the limitations
`
`appear to be claimed in the alternative).
`
`Regarding claim 8, |shida as modified teaches the refrigerant compressor according to claim 1,
`
`wherein the electromotive element is configured to be driven by an inverter at a plurality of operation
`
`frequencies (see |shida, paragraph [0058]).
`
`Regarding claim 9, |shida as modified teaches the refrigerant compressor according to claim 1,
`
`wherein the compression element includes:
`
`a crankshaft that includes a main shaft (|shida, 4, Fig. 7, see paragraph [0005]);
`
`a cylinder block that includes a bearing (|shida, 8, see paragraph [0005]) that rotatably supports
`
`the main shaft, the cylinder block forming a bore (|shida, 6, Fig. 7, see paragraph [0005]); and
`
`a piston that is loosely fitted into the bore (|shida, 9, Fig. 7, see paragraph [0005]), and
`
`the slider (|wanami, 16, 14, Fig. 3, see paragraph [0046]) is formed at least between the main
`
`shaft (|wanami, 13, Fig. 3, see paragraph [0045]) and the bearing and between the piston and the bore
`
`(|wanami, 15, Fig. 3, see paragraph [0046] which shows the slider being formed between the shaft and
`
`the piston).
`
`Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over |shida in view of lwanami,
`
`as applied to claim 1, further in view of Hwang (US 2008/0265203).
`
`Regarding claim 4, |shida as modified teaches the refrigerant compressor according to claim 1,
`
`but does not teach an additive amount of the fullerene is less than or equal to a saturating amount of
`
`dissolution with respect to the freezer oil. However, per the 112b rejection of the claim above, the
`
`

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`Application/Control Number: 16/074,670
`Art Unit: 3763
`
`Page 10
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`Examiner is taking the interpretation that the saturating amount of dissolution is referring to an optimal
`
`amount of fullerene being added to the oil.
`
`Hwang teaches a compressor (Hwang, Title) that teaches adding a fullerene by weight of below
`
`1.0% into an oil an optimal performance can be realized (see Hwang, paragraph [0014]). Therefore, it
`
`would have been obvious to one of ordinary skill in the art, prior to the effective filing date, to provide
`
`|shida as modified, with teachings of Hwang regarding adding a specific amount of fullerene to oil in
`
`order to achieve an optimal performance, as the resultant in oil would operate optimally and thereby
`
`increase the performance of the refrigerating cycle as a whole as the compressor is operating optimally
`
`(see Hwang, paragraph [0015]).
`
`Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over |shida in view of lwanami,
`
`as applied to claim 1, further in view of lwata (US 2009/0136375).
`
`Regarding claim 6, |shida as modified teaches the refrigerant compressor according to claim 1,
`
`the freezer oil is:
`
`one of mineral oil, ester oil, alkylbenzene oil, polyvinyl ether, and polyalkylene glycol; or mixed
`
`oil of at least two of the mineral oil, the ester oil, the alkylbenzene oil, the polyvinyl ether, and the
`
`polyalkylene glycol (|shida, paragraph [0006]which notes using polyol ester or polyvinyl ether, where the
`
`limitations appear to be claimed in the alternative).
`
`|shida as modified does not teach wherein the refrigerant compressed by the compression
`
`element is:
`
`one natural refrigerant of R600a, R290, and R744; or a mixed refrigerant that includes at least
`
`one of the R600a, the R290, and the R744.
`
`

`

`Application/Control Number: 16/074,670
`Art Unit: 3763
`
`Page 11
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`Iwata teaches a refrigerant compressor (Iwata, Title) that uses R600a as the refrigerant (see
`
`Iwata, paragraph [0051]).
`
`It would have been obvious to one of ordinary skill in the art, prior to the effective filing date, to
`
`provide |shida as modified with the use of R600a as the refrigerant as taught by Iwata, as it would be
`
`obvious to one of ordinary skill to try the use of this refrigerant in order to assess how it effects the
`
`efficiency of the compressor.
`
`Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over |shida in view of lwanami,
`
`as applied to claim 1, further in view of ltsuki (US 2006/0137386).
`
`Regarding claim 10, |shida as modified teaches a freezing apparatus (see |shida, paragraph
`
`[0104]) comprising: the refrigerant compressor according to claim 1 (see the rejection of claim 1 above).
`
`|shida as modified does not teach a refrigerant circuit, wherein the refrigerant compressor, a
`
`radiator, a decompressor, and a heat absorber are annularly connected to each other by piping.
`
`ltsuki teaches a refrigerating apparatus that has a freezer (see ltsuki, paragraph [0004] with a
`
`compressor, radiator, decompressor and heat absorber connected by piping (ltsuki, paragraphs [0034]
`
`and [0036] further see Fig. 4).
`
`It would have been obvious to one of ordinary skill in the art, prior to the effective filing date, to
`
`provide |shida as modified with the particulars of the freezing apparatus, as taught by ltsuki, as |shida as
`
`modified teaches the compressor of claim 1 can be used in a freezer but only lacks the structural
`
`components thereof, and ltsuki teaches that these components are known in the art.
`
`

`

`Application/Control Number: 16/074,670
`Art Unit: 3763
`
`Page 12
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`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to NAEL N BABAA whose telephone number is (571)270-3272. The examiner can
`
`normally be reached on M-F, 9-5 EST.
`
`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,
`
`Edward Landrum can be reached on 571-272-5567. 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 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-
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`direct.uspto.gov. Should 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 USPTO Customer
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`Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR
`
`CANADA) or 571-272-1000.
`
`/LARRY L FURDGE/
`
`Primary Examiner, Art Unit 3763
`
`/NAEL N BABAA/
`Examiner, Art Unit 3763
`
`