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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
`www.uspto.gov
`
`
`
`
`
`14/441,709
`
`05/08/2015
`
`Yoshitoshi Noda
`
`WASHB—54470
`
`1045
`
`pEARNE&G0RD0N LLP m
`
`ZERPHEY, CHRISTOPHER R
`1 801 EAST 9TH STREET
`S UITE 1 200
`
`3744
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/10/2017
`
`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):
`
`patdocket @ pearne.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 14/441,709 NODA, YOSHITOSHI
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`3744CHRISTOPHER R. ZERPHEY 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 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 6/22/2017.
`[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.
`
`Disposition of Claims*
`
`5)|XI C|aim(s) 1-4 6 and 8-10 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`
`1-4 6 and 8- 10 is/are rejected.
`
`is/are objected to.
`
`
`
`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
` S
`htt
`://www.usoto. ov/ atents/init events) .h/index.‘
`
`
`
`
`
`, or send an inquiry to PPI-Ifeedback{<‘buspto.qov.
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`11)|:I The drawing(s) filed on _ is/are: a)I:I 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)I:I 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)|:l 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.
`3.I: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)
`
`
`
`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 .
`US. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20170703
`
`

`

`Application/Control Number: 14/441 ,709
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`Page 2
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`Art Unit: 3744
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`DETAILED ACTION
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`1.
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions.
`
`CLAIM INTERPRETA TION
`
`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:
`
`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.
`
`Use of the word “means” (or “step for”) in a claim with functional language
`
`creates a rebuttable presumption that the claim element is to be treated in accordance
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`with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that
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`§ 112(f) (pre-AIA § 112, sixth paragraph) is invoked is rebutted when the function is
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`recited with sufficient structure, material, or acts within the claim itself to entirely perform
`
`the recited function.
`
`Absence of the word “means” (or “step for”) in a claim creates a rebuttable
`
`presumption that the claim element is not to be treated in accordance with 35 U.S.C. §
`
`112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA
`
`§ 112, sixth paragraph) is not invoked is rebutted when the claim element recites
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`function but fails to recite sufficiently definite structure, material or acts to perform that
`
`function.
`
`

`

`Application/Control Number: 14/441 ,709
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`Page 3
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`Art Unit: 3744
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`Claim elements in this application that use the word “means” (or “step for”) are
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`presumed to invoke § 112(f) except as otherwise indicated in an Office action.
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`Similarly, claim elements that do not use the word “means” (or “step for”) are presumed
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`not to invoke § 112(f) except as otherwise indicated in an Office action.
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`2.
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`Claim 2 is objected to because of the following informalities: Claim 2 recites
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`Claim Objections
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`“introdu1ction”. Appropriate correction is required.
`
`Claim Rejections - 35 USC § 112
`
`3.
`
`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.
`
`4.
`
`Claim 7 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first
`
`paragraph, as failing to comply with the enablement requirement. The claim(s) contains
`
`subject matter which was not described in the specification in such a way as to enable
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`one skilled in the art to which it pertains, or with which it is most nearly connected, to
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`make and/or use the invention. Claim 7 recites “being partially replaced with a part”
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`however while the instant invention discloses different modes of operation, the action of
`
`

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`Application/Control Number: 14/441 ,709
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`Page 4
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`Art Unit: 3744
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`replacing parts is not. One of ordinary skill is not enabled to make or use the invention
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`and further does not recognize what parts are suggested to be replaced.
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`5.
`
`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.
`
`6.
`
`Claims 9 and 10 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
`
`claim the subject matter which the inventor or a joint inventor, or for pre-AIA the
`
`applicant regards as the invention.
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`7.
`
`Throughout the claims the terms “high” and “low” are used to refer to the
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`temperature and pressure of refrigerant or water. The terms are understood to be
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`relative and not limited to a specific value, such that for example the high-pressure
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`refrigerant merely has a higher pressure than the low-pressure refrigerant. Applicant
`
`may further clarify the definition of high/low in response to this action.
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`8.
`
`Claim 9 recites “an expansion valve delivers a high-pressure refrigerant to the
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`evaporator” however the purpose of an expansion valve is to reduce refrigerant
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`pressure. Thus it is unclear how a high-pressure refrigerant is delivered to the
`
`evaporator where claim 1 recites that low-pressure refrigerant is introduced to the
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`compressor, which is downstream of the evaporator.
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`

`

`Application/Control Number: 14/441 ,709
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`Page 5
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`Art Unit: 3744
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`Claim Rejections - 35 USC § 103
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`9.
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`In the event the determination of the status of the application as subject to AIA 35
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`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
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`10.
`
`The following is a quotation of pre-AIA 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.
`
`11.
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
`
`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:
`
`1. Determining the scope and contents of the prior art.
`
`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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`12.
`
`Claims 1-4, 6, and 8-10 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being
`
`unpatentable over ltoh et al (US 7,520,320), in view of Frohling et al (US
`
`2011/0036117), and in View of Suzuki et al (US 6,047,770).
`
`

`

`Application/Control Number: 14/441 ,709
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`Page 6
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`Art Unit: 3744
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`a.
`
`Regarding claim 1, ltoh discloses (numerals refer to figure 7 unless
`
`otherwise indicated) a vehicle heat pump apparatus comprising:
`
`b.
`
`an electric compressor (27) that compresses a suctioned refrigerant and
`
`that discharges a compressed refrigerant (col 22, lines 59-65, refrigerant may be
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`transcritical or traditional);
`
`c.
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`a cooling water-to-refrigerant heat exchanger (20) that is capable of
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`releasing heat to cooling water from a high-temperature and high-pressure
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`refrigerant discharged from the electric compressor (27);
`
`d.
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`a cooling water introduction section (entrance to 20b) that allows the
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`cooling water to be introduced into the cooling water-to-refrigerant heat
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`exchanger (20);
`
`e.
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`a cooling water outlet section (exit of 20b) that allows the cooling water to
`
`flow to outside from the cooling water-to-refrigerant heat exchanger (20);
`
`f.
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`a single refrigerant outlet (exit of 20a) that allows the refrigerant which has
`
`passed through the cooling water-to-refrigerant heat exchanger (20);
`
`g.
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`a first refrigerant introduction section and a second refrigerant introduction
`
`section (the three way junction upstream of accumulator 33 includes first and
`
`second introduction sections) through which a low-pressure refrigerant is
`
`introduced and delivered to the electric compressor (27), wherein
`
`h.
`
`refrigerant returned to the first refrigerant introduction section and
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`refrigerant returned to the second refrigerant introduction section are both the
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`refrigerant flowing from the refrigerant outlet section (the refrigerant cycle is a
`
`

`

`Application/Control Number: 14/441 ,709
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`Page 7
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`Art Unit: 3744
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`closed circuit, where any refrigerant entering from upstream of the accumulator
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`33 must have come from the discharge of heat exchanger section 20a).
`
`i.
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`ltoh lacks a housing. Frohling discloses a vehicle heat pump (shown in
`
`figure 11) wherein the accumulator (16), compressor (14), and condenser (12,36)
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`are positioned with a housing (5). Thus the components correspond to the
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`accumulator, compressor and water-to-refrigerant heat exchanger (condenser) of
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`ltoh. Further Frohling teaches that it is an improvement to organize separate
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`components (pOOO3-OOO7) into housings for simpler installation (p0022). It would
`
`have been obvious to one of ordinary skill in the art at the time of effective filing
`
`to have provided ltoh with the housing as taught by Frohling in order to and
`
`provide for simple installation (p0022). As some components are within a housing
`
`it is understood that components connecting to other components outside the
`
`housing require connection through the housing wall.
`
`j.
`
`ltoh discloses the cooling water-to-refrigerant heat exchanger (20) but
`
`lacks a cooling-water flow switching valve. Suzuki discloses a cooling-water flow
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`switching valve (45) that is capable of switching between delivering cooling water
`
`introduced from a cooling water introduction section to the cooling water outlet
`
`section via a cooling water to refrigerant heat exchanger (31 ), and delivering the
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`cooling water to the cooling water outlet section without intervention of the
`
`cooling water to refrigerant heat exchanger (31), the cooling-water flow switching
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`valve (45) switches, during a heating operation, to delivering the cooling water
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`introduced from the cooling water introduction section to the cooling water outlet
`
`

`

`Application/Control Number: 14/441 ,709
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`Page 8
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`Art Unit: 3744
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`section via the cooling water to refrigerant heat exchanger, and switching, during
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`a cooling operation, to delivering the cooling water to the cooling water outlet
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`section without intervention of the cooling water-to-refrigerant heat exchanger
`
`(figure 3 shows the flow ratio of valve 45 thus in both the heating and cooling
`
`modes some water is passed through the water to refrigerant heat exchanger
`
`and some bypasses without intervention). It would have been obvious to one of
`
`ordinary skill in the art at the time of effective filing to have provided a bypass of
`
`heat exchanger 20b in order to reduce coolant temperature at a time of high
`
`coolant temperature so as to avoid component damage.
`
`k.
`
`Regarding claim 2, ltoh discloses a switching valve (62) that switches an
`
`introduction path of the low-pressure refrigerant between the first refrigerant
`
`introduction section and the second refrigerant introduction section.
`
`|.
`
`Regarding claim 3, ltoh discloses an opening and closing valve having
`
`an expansion valve function (valve 29/61 ), the valve being capable of switching
`
`between delivering the high-pressure refrigerant that has passed through the
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`cooling water-to-refrigerant heat exchanger (20) to the refrigerant outlet section
`
`while causing the refrigerant to expand, and delivering the high-pressure
`
`refrigerant while keeping the refrigerant in a high pressure state. Alternatively,
`
`although ltoh shows two valves 29 and 61 it is well known to combine an
`
`expansion valve with an open/close valve. It would have been obvious to one of
`
`ordinary skill in the art at the time of effective filing to have combined valves 29
`
`

`

`Application/Control Number: 14/441 ,709
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`Page 9
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`Art Unit: 3744
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`and 61 into a single valve in order to reduce the number of parts of the system
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`and simplify manufacture.
`
`m.
`
`Regarding claim 4, ltoh does not show the switching valve or open/close
`
`valve within the housing. However as taught by Frohling, placing components
`
`within the housing ultimately simplifies installation. Thus as suggested by the
`
`teaching it would also have been obvious to have provided the valves within the
`
`housing in order to simplify installation and reduce error.
`
`n.
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`Regarding claim 6, ltoh discloses an accumulator (33) that is disposed in
`
`a refrigerant suction side of the electric compressor (27), wherein the housing
`
`accommodates the accumulator (Frohling discloses the accumulator 16 within
`
`the housing).
`
`0.
`
`Regarding claim 8, ltoh discloses an internal combustion engine cooler
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`(figure 7 of ltoh shows 3 “FC” 10 where “FC” stands for fuel cell; however as
`
`disclosed at col 2, lines 9-10 this refrigerant circuit also applies to the driving
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`engine of hybrid vehicles, which are internal combustion engines as is well
`
`understood) that causes cooling water to absorb heat from an internal
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`combustion engine of a vehicle;
`
`p.
`
`a heat exchanger (12) for heating that causes heat to be released from a
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`high-temperature cooling water to air which is delivered to a vehicle interior;
`
`q.
`
`an evaporator (31) that causes a low-temperature refrigerant to absorb
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`heat from air which is delivered to the vehicle interior;
`
`

`

`Application/Control Number: 14/441 ,709
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`Page 10
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`Art Unit: 3744
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`r.
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`an outside heat exchanger (18) that allows the refrigerant to exchange
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`heat with air outside the vehicle interior; and
`
`s.
`
`t.
`
`the vehicle heat pump according to claim 1, wherein
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`the internal combustion engine cooler (10) and the heat exchanger for
`
`heating (12) are connected to each other in series between the cooling water
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`outlet section (exit of 20b) and the cooling water introduction section (inlet of 20b)
`
`of the vehicle heat pump apparatus,
`
`u.
`
`the outside heat exchanger (18) and the evaporator (31) are connected to
`
`each other in series between the refrigerant outlet section of the vehicle heat
`
`pump apparatus and the first refrigerant introduction section (upstream of
`
`accumulator 33), and
`
`v.
`
`a refrigerant path between the outside heat exchanger (18) and the
`
`evaporator branches out by way of valve 62) and is connected to the second
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`refrigerant introduction section (upstream of accumulator 33 is a second entrance
`
`defined at the "T" coupling).
`
`w.
`
`Regarding claim 9, ltoh discloses an expansion valve (30) that allows a
`
`high-pressure refrigerant to expand to a low-temperature and low-pressure state
`
`and delivers the low-temperature and low-pressure refrigerant to the evaporator
`
`while causing the high pressure refrigerant to expand, wherein the expansion
`
`valve is disposed outside the vehicle heat pump apparatus and on an upstream
`
`side of the evaporator (as shown in figure 2 the expansion valve 15 of Frohling
`
`may be outside the housing).
`
`

`

`Application/Control Number: 14/441 ,709
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`Page 11
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`Art Unit: 3744
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`x.
`
`Regarding claim 10, ltoh discloses the vehicle air-conditioning apparatus,
`
`but lacks an open/close valve between the outside heat exchanger (18) and the
`
`evaporator (31 ).
`
`|toh utilizes a short circuit open and close valve 62 to reduce
`
`flow to the evaporator. However it is also well known to utilize an open and close
`
`valve to preclude flow from a heat exchanger. It would have been obvious to one
`
`of ordinary skill in the art at the time of effective filing to have provided |toh with
`
`an open and close valve (at the path containing expansion valve 30) in order to
`
`preclude refrigerant leakage to the evaporator at a time of heating.
`
`Response to Arguments
`
`13.
`
`Applicant's arguments filed 6/22/2017 have been fully considered but they are
`
`not persuasive. Applicant introduces a cooling-water flow switching valve to claim 1.
`
`Suzuki discloses a cooling-water flow switching (45) that selectively allows full or partial
`
`bypass of water-to-refrigerant heat exchanger 31.
`
`Conclusion
`
`14.
`
`The prior art made of record and not relied upon is considered pertinent to
`
`applicant's disclosure. Noda (US 2015/0314669); ltoh et al (US 2011/0167850); Sakai et
`
`al (US 7,823,799) housing to improve efficiency; Yakumaru (US 2005/0061011);
`
`Watanabe et al (US 2003/0010488); Taniguchi et al (US 2015/0338134); Garimella (US
`
`5,289,698); Hara (US 7,055,590).
`
`15.
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in
`
`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
`
`

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`Application/Control Number: 14/441 ,709
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`Page 12
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`Art Unit: 3744
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`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
`
`CFR1.136(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
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`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
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`than SIX MONTHS from the date of this final action.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to CHRISTOPHER R. ZERPHEY whose telephone
`
`number is (571 )272-5965. The examiner can normally be reached on Monday-Friday,
`
`alt Friday 7:30-5:00 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, Judy Swann can be reached on 5712727075. The fax phone number for
`
`the organization where this application or proceeding is assigned is 571-273-8300.
`
`

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`Application/Control Number: 14/441 ,709
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`Page 13
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`Art Unit: 3744
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`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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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571 -272—1 000.
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`/CHRISTOPHER R ZERPHEY/
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`Examiner, Art Unit 3744
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`