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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
`
`
`
`
`
`14/649,115
`
`06/02/2015
`
`Yoshiyuki FUTAGAMI
`
`20240.0041USWO
`
`4095
`
`05/03/2017 —HAMRE, SCHUMANN,MUELLER&LARSONP.C. m
`7590
`53148
`45 South Seventh Street
`HANSEN, KENNETH I
`Suite 2700
`MINNEAPOLIS, MN 55402- 1683
`
`PAPER NUMBER
`
`ART UNIT
`3746
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/03/2017
`
`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.
` 14/649,115 FUTAGAMI ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office Action Summary
`
`KENNETH J. HANSEN $2215 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 CFR1. 136( a).
`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).
`
`In no event, however, may a reply be timely filed
`
`Status
`
`1)IZI Responsive to communication(s) filed on 2Jun 2015.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|ZI This action is non-final.
`2a)|:l 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
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`; 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
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)IZI Claim(s) 1-12is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`is/are allowed.
`6)I:I Claim(s)
`7)|Z| Claim(s)_1-12 is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
`
`are subject to restriction and/or election requirement.
`9)I:I 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
`:/'I’vaIW.usnI‘.0. ovI’ atentS/init events/
`
`
`
`iindex.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)|Xl The drawing(s) filed on 2 Jun 2015 is/are: a)IZI 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)IXI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)IZl All
`
`b)|:l Some” c)I:l None of the:
`
`1.I:I Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`SIXI 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 (PTO-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
`
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20170417
`
`

`

`Application/Control Number: 14/649,115
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`Page 2
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`Art Unit: 3746
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
`
`Application Status
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`Acknowledgement is made to the Preliminary Amendment filed 2 June 2015.
`
`Claims 1-12 are pending in the application. Claims 1 and 4-9 have been amended.
`
`Claims 11 and 12 are new.
`
`Claim Rejections - 35 USC § 102
`
`In the event the determination of the status of the application as subject to AIA 35
`
`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.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
`
`(a)(1) the claimed invention was patented, described in a printed publication, or in public use,
`on sale or otherwise available to the public before the effective filing date of the claimed
`invention.
`
`

`

`Application/Control Number: 14/649,115
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`Page 3
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`Art Unit: 3746
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`Claims 2 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated
`
`by Airhart (U. S Patent No. 3994319).
`
`Regarding claim 2, Airhart discloses a compressor (FIG. 4, col. 2, line 16)
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`comprising:
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`a cylinder 15 (FIG. 4, col. 3, line 1) which accommodates a reciprocatable
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`piston 13 (FIG. 4, col. 3, line 9) therein;
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`a valve plate 21 (FIG. 2, col. 2, lines 63-65, “disc member 21 having
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`suction and discharge ports therein” — interpreted as forming recited valve plate)
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`placed at an opening end of the cylinder 15 and includes a suction valve seat 45,
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`47 (FIG. 3, col. 3, lines 25-26, “valve 11 seats against edges 45 and an edge 47")
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`provided to surround a suction hole 41 (FIG. 3, col. 3, lines 22-23, “port holes
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`41”);
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`and a suction valve 11 (FIG.’s 1-4, col. 2, lines 52-54) which opens and
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`closes the suction hole (col. 3, lines 25-31, describing valve operation to open
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`and close suction port),
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`wherein at least one of the suction valve seat 45, 47 and a portion of the
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`suction valve 11 which portion contacts the suction valve seat 45, 47 is provided
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`with a surface treatment film 51’ 53’ 55' (FIG.’s 7 & 8, col. 4, lines 38-40, as
`
`shown — at least one of these sheet Iayer(s) that makes up valve 11 is interpreted
`
`as the recited surface treatment film) including synthetic resin (col. 4, lines 16-
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`22, “[b]y forming the reed valve 11 from a plurality of plies of the composite
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`material in tape or sheet form, ...[t]he sheet form used was an epoxy resin
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`

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`Application/Control Number: 14/649,115
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`Page 4
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`Art Unit: 3746
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`reinforced with carbon fibers....” — interpreted as forming recited synthetic resin
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`film under a broadest reasonable interpretation).
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`As to claim 12, Airhart discloses the synthetic resin comprising at least one resin
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`selected from a resin group consisting of polyamide resin, epoxy resin, and phenol resin
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`(col. 4, lines 16-22, epoxy resin).
`
`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.
`
`Claim 1, 3 and 8 are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Airhart (U. S Patent No. 3994319).
`
`As to claim 1, Airhart is discussed above and discloses the compressor having
`
`the recited valve and valve plate arrangement. Basically, claim 1
`
`is essentially identical
`
`to claim 2 except that it recites a discharge valve and valve seats which opens and
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`closes a discharge hole whereas Airhart’s main embodiment for valve 11 is disclosed as
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`a suction valve which opens and closes the suction hole. However, Airhart teaches
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`that its valve 11 arrangement may be deployed as a suction and/or as a discharge valve
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`(col. 2, line 8-11). Therefore with this in mind, it would have been obvious to one having
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`ordinary skill in the art before the effective filing date of the instant application to arrange
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`the valve as a discharge valve. Once modified, the valve would be arranged in the
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`

`

`Application/Control Number: 14/649,115
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`Page 5
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`Art Unit: 3746
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`manner recited in claim 1. The motivation would be to apply a known technique used
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`for a suction valve to improve a discharge valve since operation as either type of
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`compressor valve would be known to predictively provide suitable valve functionality as
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`either a suction of discharge valve as indicated by Airhart (ld.).
`
`As to claim 3, Airhart discloses a suction valve 11 which opens and closes a
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`suction hole 41, wherein the valve plate 21 further includes a suction valve seat 45, 47
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`provided to surround the suction hole 41, and wherein at least one of the suction valve
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`seat 45, 47 and a portion of the suction valve 11 which portion contacts the suction
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`valve seat 45, 47 is provided with a surface treatment film including synthetic resin (as
`
`set forth in the rejection of claim 2 above).
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`As to claim 8, Airhart discloses the synthetic resin comprising at least one resin
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`selected from a resin group consisting of polyamide resin, epoxy resin, and phenol resin
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`(col. 4, lines 16-22, epoxy resin).
`
`Claim 4, 7, 9, 10 and 11 are rejected under 35 U.S.C. 103 as being
`
`unpatentable over Airhart (U. S Patent No. 3994319) in view of lwata et al. (U. 8.
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`Patent Application Publication No. 2004/0166341).
`
`As to claims 4, 9 and 10, Airhart is discussed above but is silent as to the
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`surface treatment film including a solid lubricant. lwata et al. teaches a sliding member
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`surface treatment for compressor components including a solid lubricant using PTFE
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`(polytetrafluoroethylene) or M082 (molybdenum disulfide) (FlG.'s 2 & 3, para. 0040,
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`lines 1-3) arranged to be used on a swash-plate compressor (FIG. 4, para. 0043). With
`
`

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`Application/Control Number: 14/649,115
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`Page 6
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`Art Unit: 3746
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`this in mind then, it would have been obvious to one having ordinary skill in the art
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`before the effective filing date of the instant application to apply a solid lubricant in the
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`surface treatment film of Airhart so as to improve wear-ability over longer periods of
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`time in order to prevent damage due to heat as taught by lwata (para. 0021, lines 3-6).
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`As to claims 7 and 11, Airhart is discussed above but is silent as to the surface
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`treatment film having a thickness of 1 pm to 20 pm.
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`In this regard, lwata teaches
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`providing a surface treatment film having a thickness of between 0.1 pm to 20 um (para.
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`0017, lines 4-7). Therefore, it would have been obvious to one having ordinary skill in
`
`the art before the effective filing date of the instant application to prevent an adverse
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`influence on surface shape as taught by lwata (ld.).
`
`Claim 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over
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`Airhart (U. 8 Patent No. 3994319) in view of Kobayashi (Japanese Patent
`
`Publication No. 9-280167).
`
`As to claims 5 and 6, Airhart is discussed above but is silent as to each of the
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`discharge or suction valve seat(s) and the portion(s) of the discharge or suction valve(s)
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`which portion(s) contacts the discharge or suction valve seat(s) is provided with the
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`surface treatment film.
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`In this regard, Kobayashi teaches a valve plate assembly for a
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`compressor having a valve seat surface that contacts the valve formed of a resin (FIG.
`
`1, Abstract — Derwent). With this in mind then, it would have been obvious to one
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`having ordinary skill in the art before the effective filing date of the instant application to
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`form the valve seat and the portion of the valve that contacts the seat with the same
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`

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`Application/Control Number: 14/649,115
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`Page 7
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`Art Unit: 3746
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`resin material surface treatment in order to advantageously reduce noise and vibration
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`and improve sealing as taught by Kobayashi (ld.).
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to KENNETH J. HANSEN whose telephone number is
`
`(571 )272—6780. The examiner can normally be reached on Monday-Friday between the
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`hours of 8:00 AM - 4:30 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
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`for the organization where this application or proceeding is assigned is 571 -273-8300.
`
`

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`Application/Control Number: 14/649,115
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`Page 8
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`Art Unit: 3746
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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.
`
`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.
`
`/CHARLES FREAY/
`
`Primary Examiner, Art Unit 3746
`
`/KENNETH J. HANSEN/
`
`Examiner, Art Unit 3746
`
`