`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`www.uspto.gov
`
`APPLICATION NO.
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`12/909,581
`
`38834
`
`
`
`
` F ING DATE
`
`10/21/2010
`
`7590
`
`07/19/2013
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`CONF {MATION NO.
`
`Susumu Kobayashi
`
`101178
`
`6191
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`1250 CONNECTICUT AVENUE, NW
`SUITE 700
`
`MENDOZA-WILKENFEL, ERIK
`
`3744
`
`
`
`
`
`07/19/2013
`
`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):
`
`patentmail @ whda.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 12/909,581 KOBAYASHI ET AL.
`
`
`AIA (First Inventorto File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`3744ERIK MENDOZA-WILKENFELD first“
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, 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 () MONTHS from 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) 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)IXI Responsive to communication(s) filed on 24 June 2013.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)lX| This action is non-final.
`a)I:| This action is FINAL.
`3)I:I 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)|:I 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 EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims
`5)|XI Claim(s) 1-19is/are pending in the application.
`5a) Of the above claim(s) 2-5,8-15 and 17—19is/are withdrawn from consideration.
`6)|:l Claim(s) _ is/are allowed.
`7)I:l Claim(s) 1,6,7and 16is/are rejected.
`8)I:I Claim(s) _ is/are objected to.
`
`9)|:l Claim((s)
`are subject to restriction and/or election requirement.
`* 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
`htt
`://www.usoto. ov/ atentS/init events"
`
`
`
`h/index.‘s or send an inquiry to PRI-Ifeedback{<‘buspto.qov.
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`11)|Z| The drawing(s) filed on 21 October 2010 is/are: a)lZl accepted or b)I:I 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)IZI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §119(a)-(d) or (f).
`Certified copies:
`
`b)I:I Some * c)I:I None of the:
`a)le All
`1.IZI Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`3.|:I 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) E Notice of References Cited (PTO-892)
`
`3) I] Interview Summary (PTO-413)
`
`Paper NOISI/Ma” Date —
`PTO/SB/08
`t
`St t
`I
`D'
`t'
`f
`2 IXI I
`
`)
`4) I:I Other:
`a emen (s)(
`Isc osure
`n orma Ion
`)
`Paper No(s)/Mai| Date 6/23/2011 10/21/2010.
`
`US. Patent and Trademark Office
`PTOL-326 (Rev. 05-13)
`
`Part of Paper No./Mai| Date 20130712
`
`Office Action Summary
`
`

`

`Application/Control Number: 12/909,581
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`Page 2
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`Art Unit: 3744
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`Election/Restrictions
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`1.
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`Applicant’s election without traverse of species 1 (Figure 2) in the reply filed on
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`6/24/2013, drawn to claims 1, 6, 7 and 16. However, the applicant mistakenly did not
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`withdraw claims 2-5, 8-15 and 17-19.
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`Accordingly, claims 2-5, 8-15 and 17-19 are withdrawn from consideration as being
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`directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
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`Claim Rejections - 35 USC § 103
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`2.
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
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`for all obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102 of this title, if the differences between the subject matter sought to
`be patented and the prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains. Patentability shall not be negatived by the manner in which the
`invention was made.
`
`3.
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`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 pre-AIA 35 U.S.C. 103(a) 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.
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`4. Considering objective evidence present in the application indicating
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`obviousness or nonobviousness.
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`

`

`Application/Control Number: 12/909,581
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`Page 3
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`Art Unit: 3744
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`4.
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`This application currently names joint inventors. In considering patentability of the
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`claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter
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`of the various claims was commonly owned at the time any inventions covered therein
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`were made absent any evidence to the contrary. Applicant is advised of the obligation
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`under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was
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`not commonly owned at the time a later invention was made in order for the examiner to
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`consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C.
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`102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
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`5.
`
`Claim 1
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`is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
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`Borghi (EP 1,362,140) in view of Rouf (5,497,824).
`
`Regarding claim 1, Borghi teaches a refrigerating apparatus (Fig. 1) which condenses a
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`refrigerant (implicit, by means of condenser 4) discharged from a compressor (Fig. 1, 3),
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`reduces a pressure (implicit there is a pressure; reduced by capillary tube 5 of Fig. 1) of
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`the refrigerant by a capillary tube (Fig. 1, 5), and evaporates the refrigerant by an
`
`evaporator (Fig. 1, 1) to exert a cooling function (implicit of evaporator if used for cooling
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`air), wherein the capillary tube is passed through a suction piping line (Fig. 1, See Fig.
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`5, 5 and 2) through which the refrigerant returning from the evaporator to the
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`compressor flows, to constitute a double tube structure (5 and 2 of Fig.
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`1 shown better
`
`in Fig. 2 and 3)
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`

`

`Application/Control Number: 12/909,581
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`Page 4
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`Art Unit: 3744
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`Borghi does not explicitly teach wherein the double tube structure is spirally wound
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`(notice section 26 of Fig. 1).
`
`Rouf teaches the general concept of a spirally wound heat exchanger tube (Fig. 1, 1)
`
`that is spirally wound in a double tube structure (See Figure 1 combination of 3 and 1)
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`wherein there is a fluid that flows through the spirally wound inner tube (1) and
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`surrounded by a flow of fluid encased by tube structure (3).
`
`It would have been obvious to one of ordinary skill in the art at the time of the invention
`
`to have modified the capillary tube of Borghi with the general concept of sprirally
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`winding a tube carrying a heat exchange fluid in order to have produced the typical
`
`result of increasing the overall heat transfer while keeping the overall length of the
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`double tube structure relatively short, wherein the spiraled configuration will increase
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`the overall surface area to improve heat transfer.
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`Regarding claim 7, Borghi teaches wherein a flow (Fig. 2, F2) of the refrigerant through
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`the capillary tube and a flow (Fig. 2, F1) of the refrigerant through the suction piping line
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`outside the capillary tube form a counter flow (See Fig. 2)
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`6.
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`Claims 6 and 16 are rejected under pre-AIA 35 U.S.C. 103(a) as being
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`unpatentable over Borghi and Rouf as applied to claim 1, in view of Jung (US
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`2005/0217309 A1).
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`

`

`Application/Control Number: 12/909,581
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`Page 5
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`Art Unit: 3744
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`Regarding claim 6, Borghi does not explicitly teach wherein the suction piping line
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`formed in the double tube structure by passing the capillary tube therethrough is
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`surrounded by an insulating material.
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`Jung teaches the general practice of insulating a capillary tube to thermally isolate the
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`capillary tube in order to prevent the capillary pipe from being affected by heat
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`generated by heat producing components of the refrigeration system.
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`It would have been obvious to one of ordinary skill in the art at the time of the invention
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`to have combined the double tube structure of Borghi including the capillary tube with
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`the thermal insulation as taught by Jung in order to provide the predictable result of
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`insulating the double tube structure from heat generated by components of the
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`refrigeration system and to prevent condensed water from being generated (see
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`paragraph 009, lines 1-10)
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`Regarding claim 16, Borghi teaches wherein a flow (Fig. 2, F2) of the refrigerant through
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`the capillary tube and a flow (Fig. 2, F1) of the refrigerant through the suction piping line
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`outside the capillary tube form a counter flow (See Fig. 2)
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`The following references are considered pertinent art:
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`

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`Application/Control Number: 12/909,581
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`Page 6
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`Art Unit: 3744
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`Byczynski (5,065,584):
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`in reference to capillary tube 27 passing through suction line 22
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`of the compressor. Furthermore, there is a spirally wound part of the capillary tube (26)
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`spirally wound around the outside of the suction line to promote heat transfer.
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`7.
`
`Claim 1
`
`is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
`
`Byczynski et al. (5,065,584) in view of Borghi (EP 1,362,140)
`
`Regarding claim 1, Byczynski teaches a refrigerating apparatus (Fig. 1) which
`
`condenses a refrigerant (abstract regarding a refrigerant; refrigerant passes through
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`condenser 15 of Fig. 1 to be condensed) discharged from a compressor (Fig. 1, 10),
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`reduces a pressure (implicit pressure of refrigerant exiting condenser 15 entering the
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`dryer and capillary tube of Fig. 1) of the refrigerant by a capillary tube (Fig. 1,
`
`comprising 20, 26 and 27) and evaporates the refrigerant by an evaporator (Fig. 1, 25)
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`to exert a cooling function (implicit that a fluid (air) in thermal communication with the
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`evaporator will be cooled), wherein the capillary tube is passed through a suction piping
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`(Fig. 1, 22) line through which the refrigerant returning from the evaporator to the
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`compressor flows, to constitute a double tube structure (See section 27 of capillary tube
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`in side of suction piping 22 of Fig. 1).
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`Byczynski teaches of the capillary tube being spirally wound (See Fig. 1, 26) and in
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`thermal communication with the suction piping of the compressor, but Byczynski does
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`

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`Application/Control Number: 12/909,581
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`Page 7
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`Art Unit: 3744
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`not teach wherein the spirally wound section of the capillary tube is inside of the suction
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`piping to be constituted part of the double tube structure.
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`Rouf teaches the general concept of a spirally wound heat exchanger tube (Fig. 1, 1)
`
`that is spirally wound in a double tube structure (See Figure 1 combination of 3 and 1)
`
`wherein there is a fluid that flows through the spirally wound inner tube (1) and
`
`surrounded by a flow of fluid encased by tube structure (3).
`
`It would have been obvious to one of ordinary skill in the art at the time of the invention
`
`to have modified the double tube structure of Byczynski with the general concept of the
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`double tube structure of Rouf wherein the spirally wound section of a tube to be used in
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`promoting heat transfer is on the inside of a separate tube to constitute a double tube
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`structure with fluid flowing around the spirally wound section in order to produce the
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`similar and predictable result of transferring heat between fluid inside of the spirally
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`wound section of tubing and fluid surrounding the outer surface area of the spirally
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`wound section using convection as an alternative mode of heat transfer as compared to
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`conduction. By placing the spirally wound section of the capillary tube of Byczynski
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`inside of the suction line of the compressor, heat transfer between the spirally wound
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`section and the suction tubing will still be apparent as desired for providing heat
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`recovery for the respective refrigerants therein (column 4, lines 51 -54).
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`

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`Application/Control Number: 12/909,581
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`Page 8
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`Art Unit: 3744
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to ERIK MENDOZA-WILKENFELD whose telephone
`
`number is (571 )272—9674. The examiner can normally be reached on M-F: 8:00AM-
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`5:OOPM EST.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Frantz Jules can be reached on (571) 270 6681. The fax phone number for
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`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
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`
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`
`/ER|K MENDOZA-WILKENFELD/
`
`

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`Application/Control Number: 12/909,581
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`Page 9
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`Art Unit: 3744
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`Examiner, Art Unit 3744
`
`/Frantz F. Jules/
`
`Supervisory Patent Examiner, Art Unit 3744
`
`