vs! “111%
`\.\_:
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`wwwusptogov
`
`
`
`
`
`14/388,136
`
`09/25/2014
`
`Yoshifumi Abe
`
`20286.0023USWO
`
`7096
`
`07’1“)” —HAMRE, SCHUMANN,MUELLER&LARSONP.C. m
`7590
`53148
`45 South Seventh Street
`KASTURE’ DNYANESH G
`Suite 2700
`MINNEAPOLIS, MN 55402- 1683
`
`PAPER NUMBER
`
`ART UNIT
`3746
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/13/2017
`
`ELECTRONIC
`
`Please find below and/0r 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)
`
`

`

`
`
`Applicant(s)
`Application No.
` 14/388,136 ABE ET AL
`
`Office ACtion summary
`Examiner
`Art Unit
`AIA (First Inventor to File)
`
`
`StatusNo DNYANESH KASTURE 3746
`-- 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 g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`after SIX (6) 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).
`
`In no event, however, may a reply be timely filed
`
`-
`-
`
`Status
`
`1)IXI Responsive to communication(s) filed on 06 June 2017.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|:| This action is non-final.
`2a)IZ| 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.
`
`3) D Interview Summary (PT0_413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`—
`4) I:I Other'
`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`
`Paper No(s)/Mai| Date .
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20170619
`
`Disposition of Claims*
`5)|XI Claim(s) flis/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`s E is/are rejected.
`
`is/are objected to.
`
`) )
`
`_
`
`
`are subject to restriction and/or election requirement.
`9)|:l Claim(s
`)
`* 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
`hit
`://www.usnto. ov/ atents/init events"
`h/index.‘s
`
`
`
`
`
`, or send an inquiry to PF"l-ifeedback{<‘bLJsr),to.qov.
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`11)|Z| The drawing(s) filed on 25 Sthember 2014 is/are: a)IXI 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.I:I Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`3le 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)
`
`
`
`

`

`Application/Control Number: 14/388,136
`
`Page 2
`
`Art Unit: 3746
`
`FINAL REJECTION
`
`1.
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions. This office action is in response to the amendments to the claims filed on 06
`
`June 2017. Claims 1-3 are pending and currently being examined.
`
`Claim Rejections - 35 USC § 1 12
`
`2.
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`IN GENERAL—The specification shall contain a written description of the
`(a)
`invention, and of the manner and process of making and using it, in such full, clear, concise,
`and exact terms as to enable any person skilled in the art to which it pertains, or with which it
`is most nearly connected, to make and use the same, and shall set forth the best mode
`contemplated by the inventor orjoint inventor of carrying out the invention.
`
`The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention, and of the
`manner and process of making and using it, in such full, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or with which it is most nearly
`connected, to make and use the same, and shall set forth the best mode contemplated by the
`inventor of carrying out his invention.
`
`3.
`
`Claims 1 — 3 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first
`
`paragraph, as failing to comply with the written description requirement. The claim(s)
`
`contains subject matter which was not described in the specification in such a way as to
`
`reasonably convey to one skilled in the relevant art that the inventor or a joint inventor,
`
`or for pre-AIA the inventor(s), at the time the application was filed, had possession of
`
`the claimed invention.
`
`4.
`
`In Re Claim 1, the phrase “the impact portion is provided on a portion
`
`
`corresponding to a location of the compressing mechanism in the main container, or the
`
`

`

`Application/Control Number: 14/388,136
`
`Page 3
`
`Art Unit: 3746
`
`impact portion is provided on the discharge auxiliary container” at the end of the claim
`
`constitutes new matter because the underlined portion is not supported by the originally
`
`filed specification.
`
`It is possible that the applicant is referring to the discharge port (15)
`
`on the discharge auxiliary container as the impact portion, however that would
`
`contradict the limitation that the impact portion is not provided in the suction auxiliary
`
`container because the suction auxiliary container has suction port (14) which would also
`
`read on an impact portion.
`
`5.
`
`Additionally, the phrases “the impact portion is not provided on a portion
`
`corresponding to a location of the electric motor portion in the main container;” and “the
`
`impact portion is not provided on the suction auxiliary container” at the end of the claim
`
`constitute new matter because MPEP 2173.05 (i) states that “The mere absence of a
`
`positive recitation is not basis for an exclusion. Any ciairn containing a negative
`
`limitation which does not have basis in the originai disclosure siioiiid be rejeoied”. The
`
`applicant’s drawings in fact contradict the limitation of the impact portion is not provided
`
`on the suction auxiliary container, because the suction port (14) reads on an impact
`
`portion that is clearly on the suction auxiliary container.
`
`Claim Rejections - 35 USC § 1 12
`
`6.
`
`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.
`
`

`

`Application/Control Number: 14/388,136
`
`Page 4
`
`Art Unit: 3746
`
`7.
`
`Claims 1 — 3 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA),
`
`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-AlA the
`
`applicant regards as the invention.
`
`8.
`
`In Re Claim 1, the phrase “the impact portion is not provided on the suction
`
`auxiliary container” at the end of the claim contradicts the drawings because the suction
`
`port (14) reads on an impact portion, and the port is clearly on the suction auxiliary
`
`container. A careful examination of the motor portion of the casing reveals a portion of
`
`increased diameter to the left as compared to a small portion on the right, therefore the
`
`portion on the left reads on an impact portion which also contradicts the limitation “the
`
`impact portion is not provided on a portion corresponding to a location of the electric
`
`motor portion in the main container".
`
`Claim Rejections - 35 USC § 103
`
`9.
`
`The following is a quotation of pre-AlA 35 U.S.C. 103(a) which forms the basis
`
`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, 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.
`
`10.
`
`Claims 1 — 3 are rejected under pre-AlA 35 U.S.C. 103(a) as being unpatentable
`
`over Ogawa (WIPO Publication WO 2012035767 A1 published on 22 March 2012,
`
`PG Pub US 20120308414 A1 is being used as an English Translation) in view of
`
`

`

`Application/Control Number: 14/388,136
`
`Page 5
`
`Art Unit: 3746
`
`Watanabe (Japanese Patent JP 2009103100 A provided with applicant’s IDS, Full
`
`machine translation provided with this office action)
`
`11.
`
`In Re Claim 1, the Figure 11 embodiment of Ogawa discloses an electric
`
`compressor comprising a casing (4, 5, 141) in which a compressing mechanism (4), an
`
`electric motor portion (5a, 5b) for driving the compressing mechanism, and an inverter
`
`portion (141) for driving the electric motor portion are incorporated,
`
`wherein the electric compressor is oriented laterally in use by a mounting leg (2) on a
`
`periphery of a barrel of the casing;
`
`the casing comprises a main container (4, 5a, 5b; note that the discharge portion of the
`
`housing that has the discharge port 9 has been shown as a separate piece - even
`
`though it shares the common label 5), a suction auxiliary container (141) providing a
`
`suction port (8), and a discharge auxiliary container (the discharge portion of the
`
`housing that has the discharge port 9 which has been shown as a separate piece - even
`
`though it shares the common label 5) providing a discharge port (9);
`
`a first end of the main container (to the left) constitutes a compressing mechanism-side
`
`opening;
`
`a second end of the main container (to the right) constitutes an electric motor-side
`
`opening;
`
`the] suction auxiliary container is attached to the compressing mechanism-side
`
`opening such that the suction auxiliary container is opposed to the compressing
`
`mechanism-side opening (as depicted);
`
`

`

`Application/Control Number: 14/388,136
`
`Page 6
`
`Art Unit: 3746
`
`the discharge auxiliary container is attached to the electric motor-side opening such that
`
`the discharge auxiliary container is opposed to the electric motor-side opening (as
`
`depicted);
`
`the compressing mechanism and the electric motor portion are incorporated in the main
`
`container (as depicted);
`
`the inverter portion is incorporated in the suction auxiliary container (as depicted)
`
`12.
`
`The examiner contends that Ogawa discloses the impact portion (see 112
`
`rejections above). Alternatively, if Ogawa does not disclose an impact portion (not
`
`admitted to):
`
`13.
`
`Nevertheless, the Figure 3 embodiment of Watanabe discloses an electric
`
`compressor comprising a casing (11) in which a compressing mechanism (400), an
`
`electric motor portion (300) for driving the compressing mechanism, and an inverter
`
`portion (20) for driving the electric motor portion are incorporated,
`
`wherein the electric compressor is oriented laterally in use by a mounting leg (12a or
`
`12b) on a periphery of a barrel of the casing;
`
`an impact portion (210) projects from a surface of the casing and receives an impact
`
`from outside of the surface of the casing;
`
`the impact portion is not provided on a portion corresponding to a location of the electric
`
`motor portion in the main container (because it is formed in the portion of the casing to
`
`the left of the motor and away from it);
`
`the impact portion is not provided on the suction auxiliary container (because it is
`
`formed in a portion of the casing to the left of the suction port 11a and inverter 20 and
`
`

`

`Application/Control Number: 14/388,136
`
`Page 7
`
`Art Unit: 3746
`
`away from them); and the impact portion is provided on a portion corresponding to a
`
`location of the compressing mechanism in the main container (adjacent to compression
`
`mechanism 400), or the impact portion is provided on the discharge auxiliary container
`
`(adjacent to discharge port 11b).
`
`1M,
`
`«««««««««««« ¢¢¢¢¢¢¢,,,¢¢4§vveeeeeeeeveevveeveeveeeeewh
`
`14.
`
`It would have been obvious to a person having ordinary skill in the art at the time
`
`of the invention to incorporate the impact portion of Watanabe on the casing portion
`
`adjacent to the compressor of Ogawa OR to incorporate the impact portion of Watanabe
`
`on the casing portion adjacent to the discharge port of Ogawa for the purpose of
`
`absorbing the impact of a broken member in the event of vehicle collision.
`
`15.
`
`In Re Claim 2, both the outlet (9) of Ogawa reads on an impact portion that has a
`
`boss shape.
`
`

`

`Application/Control Number: 14/388,136
`
`Page 8
`
`Art Unit: 3746
`
`16.
`
`In Re Claim 3, the cross section of the main container (4) of Ogawa is clearly a
`
`ring shape and it forms part of the impact portion (it projects from the right end of portion
`
`5b).
`
`Response to Arguments
`
`17.
`
`Applicant’s arguments are moot in view of new grounds of rejection in this office
`
`action that were necessitated by the amendments to the claims.
`
`Conclusion
`
`THIS ACTION IS MADE FINAL. 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 mailing date of this final action.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to DNYANESH KASTU RE whose telephone number is
`
`

`

`Application/Control Number: 14/388,136
`
`Page 9
`
`Art Unit: 3746
`
`(571)270-3928. The examiner can normally be reached on Mon-Thu, 7:30 AM to 6:00
`
`PM.
`
`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, Devon Kramer can be reached on (571) 272 - 7118. 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-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—1000.
`
`/D. K./
`
`Examiner, Art Unit 3746
`
`/PETER J BERTHEAUD/
`
`Primary Examiner, Art Unit 3746
`
`