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`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
`
`03’06’20” —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
`
`03/06/2017
`
`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 25 Sthember 2014.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)lX| This action is non-final.
`2a)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.
`
`3) D Interview Summary (PT0_413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`—
`4) I:I Other'
`2) E 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 20170218
`
`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
`
`The present application is being examined under the pre-AIA first to invent provisions.
`
`DETAILED ACTION
`
`This is the first office action on the merits with reference to the above identified patent
`application filed on 25 September 2014. The preliminary amendments to the claims
`filed on the same date (25 September 2014) has also been entered. Claims 1-3 are
`pending and currently being examined. With reference to Section 112 (f),
`it will be
`assumed that presence of the phrase “means for” in any of the claims invokes Section
`112 (f)/old 112 6th paragraph unless explicitly specified otherwise in this office action.
`Further, it will be assumed that absence of the phrase “means for” in any of the claims
`does not invoke Section 112 (f)/old 112 6th paragraph unless explicitly specified
`otherwise in this office action.
`
`Claim Objections
`
`1.
`
`2.
`
`Claims 1 — 3 are objected to because of the following informalities:
`
`In Re Claim 1, the phrase “collided portion” is not in proper idiomatic English, the
`
`phrase — impact portion — is suggested instead.
`
`3.
`
`Appropriate correction is required.
`
`Claim Rejections - 35 USC § 1 12
`
`4.
`
`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.
`
`5.
`
`Claims 1 — 3 are 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
`
`

`

`Application/Control Number: 14/388,136
`
`Page 3
`
`Art Unit: 3746
`
`claim the subject matter which the inventor or a joint inventor, or for pre-AIA the
`
`applicant regards as the invention.
`
`6.
`
`In Re Claim 1, the phrase “incorporated other than a portion” in Line 14 is not
`
`clear because it is not known what else (“other than a portion of the suction auxiliary
`
`container”) is being incorporated. The language appears to claim the rest of the
`
`universe (other than the portion), making it indefinite. Further, the phrase "is
`
`incorporated and other than a portion of the main container" is indefinite for the same
`
`reason.
`
`7.
`
`Claims 1 — 3 are generally narrative and indefinite, failing to conform with current
`
`U.S. practice. They appear to be a literal translation into English from a foreign
`
`document and are replete with grammatical and idiomatic errors.
`
`8.
`
`The following is a quotation of 35 U.S.C. 112(d):
`
`(d) REFERENCE IN DEPENDENT FORMS—Subject to subsection (e), a claim in dependent
`form shall contain a reference to a claim previously set forth and then specify a further
`limitation of the subject matter claimed. A claim in dependent form shall be construed to
`incorporate by reference all the limitations of the claim to which it refers.
`
`The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
`
`Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim
`in dependent form shall contain a reference to a claim previously set forth and then specify a
`further limitation of the subject matter claimed. A claim in dependent form shall be construed
`to incorporate by reference all the limitations of the claim to which it refers.
`
`9.
`
`Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th
`
`paragraph, as being of improper dependent form for failing to further limit the subject
`
`matter of the claim upon which it depends, or for failing to include all the limitations of
`
`

`

`Application/Control Number: 14/388,136
`
`Page 4
`
`Art Unit: 3746
`
`the claim upon which it depends. The limitation of the casing comprising the main
`
`container and auxiliary container are anticipated by the limitation: "casing in which a
`
`compressing mechanism, an electric motor ..
`
`.. and an inverter ..
`
`.. are incorporated" in
`
`Claim 1.
`
`10.
`
`Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in
`
`proper dependent form, rewrite the claim(s) in independent form, or present a sufficient
`
`showing that the dependent claim(s) complies with the statutory requirements.
`
`Claim Rejections - 35 USC § 102
`
`11.
`
`The following is a quotation of the appropriate paragraphs of pre-AlA 35 U.S.C.
`
`102 that form the basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless —
`
`(b) the invention was patented or described in a printed publication in this or a foreign country
`or in public use or on sale in this country, more than one year prior to the date of application
`for patent in the United States.
`
`12.
`
`Claims 1
`
`- 3 are rejected under pre-AlA 35 U.S.C. 102(b) / 103 {see MPEP 2112,
`
`Section III} as being anticipated by Martin (US Patent 5,605,448 A) and as extrinsically
`
`evidenced by Kelley (US Patent 3,940,925 A)
`
`

`

`Application/Control Number: 14/388,136
`
`Page 5
`
`Art Unit: 3746
`
`/
`
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`
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`
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`
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`

`Application/Control Number: 14/388,136
`
`Page 6
`
`Art Unit: 3746
`
`13.
`
`In Re Claim 1, Martin discloses an electric compressor (52, 54 — a gear pump is
`
`inherently also a compressor as extrinsically evidenced by Kelly which describes a
`
`similar setup {1,4,5} as a gear compressor) comprising a casing (14, 16, 18 in Figure 1)
`
`in which a compressing mechanism (52, 54), an electric motor portion (annotated
`
`above) for driving the compressing mechanism, and an inverter portion (20) for driving
`
`the electric motor portion are incorporated, in which the electric compressor is laterally
`
`placed by a mounting leg (12) existing around a barrel of the casing, wherein
`
`the compressing mechanism and the electric motor portion are incorporated in a main
`
`container (housing 16 and 14 combined),
`
`a suction auxiliary container (18) is attached to a compressing mechanism-side opening
`
`(holes for screws 70) of the main container such that the suction auxiliary container is
`
`opposed to the opening,
`
`the inverter portion (20, see annotated Figure 4 above) is incorporated in the suction
`
`auxiliary container, and a surface around the barrel of the casing is provided with a
`
`collided portion (annotated above in Figure 1), the collided portion is provided only on a
`
`portion of the main container (the collided portion is exclusive to the compressor portion
`
`of the casing only as apparent from annotated Figure 4 above) in which
`
`the compressing mechanism is incorporated other than a portion of the suction
`
`auxiliary container in which the inverter portion is incorporated (the collided portion is
`
`outside the region of the inverter) and other than a portion of the main container in
`
`which the electric motor portion is incorporated (the collided portion is outside the region
`
`of the motor).
`
`

`

`Application/Control Number: 14/388,136
`
`Page 7
`
`Art Unit: 3746
`
`14.
`
`In Re Claim 2, the shaded portion annotated above also reads on a boss as
`
`claimed.
`
`15.
`
`In Re Claim 3, the casing (14, 16, 18) comprises a main container (14, 16) and a
`
`suction auxiliary container (18).
`
`Claim Rejections - 35 USC § 103
`
`16.
`
`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.
`
`17.
`
`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 Martin (US
`
`Patent 5,605,448 A)
`
`

`

`Application/Control Number: 14/388,136
`
`Page 8
`
`Art Unit: 3746
`
`
`
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`
`18.
`
`In Re Claim 1, Ogawa discloses an electric compressor comprising a casing (4,
`
`5, 101) in which a compressing mechanism (4), an electric motor portion (5) for driving
`
`the compressing mechanism, and an inverter portion (1 01) for driving the electric motor
`
`portion are incorporated, in which the electric compressor is laterally placed by a
`
`mounting leg (2) existing around a barrel of the casing, wherein
`
`the compressing mechanism and the electric motor portion are incorporated in a main
`
`container (3),
`
`a suction auxiliary container (102) is attached to a compressing mechanism-side
`
`opening of the main container such that the suction auxiliary container is opposed to
`
`the opening,
`
`the inverter portion is incorporated in the suction auxiliary container, and a surface
`
`around the barrel of the casing is provided with a collided portion (in the region of the
`
`compressor)
`
`

`

`Application/Control Number: 14/388,136
`
`Page 9
`
`Art Unit: 3746
`
`19.
`
`However, it is not clear that the collided portion is provided only on a portion of
`
`the main container in which the compressing mechanism is incorporated.
`
`20.
`
`Nevertheless, Martin discloses that the collided portion (shaded region in
`
`annotated figure above) is provided only on a portion of the main container in which
`
`the compressing mechanism is incorporated.
`
`21.
`
`It would have been obvious to a person having ordinary skill in the art at the time
`
`of the invention to modify the surface of the main container of Ogawa in the
`
`compressing mechanism portion only, such that it has a collided portion as taught by
`
`Martin for the purpose of strengthening the casing in a region that faces the maximum
`
`lateral load due to gear rotation/scroll rotation reaction forces.
`
`22.
`
`In Re Claim 2, the shaded portion of Martin annotated above also reads on a
`
`boss as claimed.
`
`23.
`
`In Re Claim 3, the casing (4, 5, 101) of Ogawa comprises a main container (4, 5)
`
`and a suction auxiliary container (101).
`
`Conclusion
`
`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 10
`
`Art Unit: 3746
`
`(571)270-3928. The examiner can normally be reached on Mon-Thu, 7:30 AM to 6:00
`
`PM.
`
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`
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`
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`
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`
`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.
`
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`
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`
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`
`/D. K./
`
`Examiner, Art Unit 3746
`
`/PETER J BERTHEAUD/
`
`Primary Examiner, Art Unit 3746
`
`