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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
`
`
`
`
`
`14/668,974
`
`03/25/2015
`
`Susumu KOBAYASHI
`
`095306—0013
`
`4302
`
`20277
`7590
`””0””
`MCDERMOTT WILL&EMERY LLP —
`The McDermott Building
`TANENBAUM’ TZVI SAMUEL
`500 North Capitol Street, NW.
`
`3744
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`10/30/2017
`
`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):
`
`ipdocketmwe @ mwe.com
`
`PTOL—90A (Rev. 04/07)
`
`

`

`Advisory Action
`Before the Filing of an Appeal Brief
`
`Application No.
`14/668,974
`Examiner
`STEVE TAN ENBAUM
`
`Applicant(s)
`KOBAYASHI ET AL.
`Art Unit
`A|A(First Inventor to File) Status
`3744
`No
`
`--The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`THE REPLY FILED 26 September 2017 FAILS TO PLACE THIS APPLICATION IN CONDITION FOR ALLOWANCE.
`NO NOTICE OF APPEAL FILED
`
`1. E The reply was filed after a final rejection. No Notice of Appeal has been filed. To avoid abandonment of this application, applicant must timely file one
`of the following replies: (1) an amendment, affidavit, or other evidence, which places the application in condition for allowance;
`(2) a Notice of Appeal (with appeal fee) in compliance with 37 CFR 41.31 ; or (3) a Request for Continued Examination (RCE) in compliance with 37
`CFR 1.114 if this is a utility or plant application. Note that RCEs are not permitted in design applications. The reply must be filed within one of the
`following time periods:
`months from the mailing date of the final rejection.
`The period for reply expires
`The period for reply expires on: (1) the mailing date of this Advisory Action; or (2) the date set forth in the final rejection, whichever is later.
`no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of the final rejection.
`A prior Advisory Action was mailed more than 3 months after the mailing date of the final rejection in response to a first after-final reply filed
`within 2 months of the mailing date of the final rejection. The current period for reply expires
`months from the mailing date of
`the prior Advisory Action or SIX MONTHS from the mailing date of the final rejection, whichever is earlier.
`Examiner Note: If box 1 is checked, check either box (
`), (b) or (c). ONLY CHECK BOX (b) WHEN THIS ADVISORY ACTION IS THE
`FIRST RESPONSE TO APPLICANT‘S FIRST AFTER-FINAL REPLY WHICH WAS FILED WITHIN TWO MONTHS OF THE FINAL
`REJECTION. ONLY CHECK BOX (c) IN THE LIMITED SITUATION SET FORTH UNDER BOX (c). See MPEP 706.07(f).
`Extensions of time may be obtained under 37 CFR 1.136(a). The date on which the petition under 37 CFR 1.136(a) and the appropriate extension
`fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. The appropriate
`extension fee under 37 CFR 1.17(a) is calculated from: (1) the expiration date of the shortened statutory period for reply originally set in the final
`Office action; or (2) as set forth in (b) or (0) above, if checked. Any reply received by the Office later than three months after the mailing date of the
`final rejection, even if timely filed, may reduce any earned patent term adjustment. See 37 CFR 1.704(b).
`NOTICE OF APPEAL
`
`In
`
`. A brief in compliance with 37 CFR 41.37 must be filed within two months of the date of filing the
`2. D The Notice of Appeal was filed on
`Notice of Appeal (37 CFR 41 .37(a)), or any extension thereof (37 CFR 41 .37(e)), to avoid dismissal of the appeal. Since a Notice of Appeal
`has been filed, any reply must be filed within the time period set forth in 37 CFR 41 .37( ).
`AMENDMENTS
`
`3. D The proposed amendments filed after a final rejection, but prior to the date of filing a brief, will n_ot be entered because
`a) D They raise new issues that would require further consideration and/or search (see NOTE below);
`b) D They raise the issue of new matter (see NOTE below);
`c) D They are not deemed to place the application in better form for appeal by materially reducing or simplifying the issues for
`appeal; and/or
`d) D They present additional claims without canceling a corresponding number of finally rejected claims.
`NOTE:
`. (See 37 CFR 1.116 and 41 .33( )).
`4. D The amendments are not in compliance with 37 CFR 1.121. See attached Notice of Non-Compliant Amendment (PTOL-324).
`5. D Applicant’s reply has overcome the following rejection(s):
`6. D Newly proposed or amended claim(s) _would be allowable if submitted in a separate, timely filed amendment canceling the non-
`allowable claim( ).
`7. D For purposes of appeal, the proposed amendment(s): (a) [I will not be entered, or (b) [I will be entered, and an explanation of how the
`new or amended claims would be rejected is provided below or appended.
`AFFIDAVIT OR OTHER EVIDENCE
`
`8. D A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`9. [I The affidavit or other evidence filed after final action, but before or on the date of filing a Notice of Appeal will n_ot be entered because
`applicant failed to provide a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier
`presented. See 37 CFR 1.116( ).
`10. [I The affidavit or other evidence filed after the date of filing the Notice of Appeal, but prior to the date of filing a brief, will n_ot be entered
`because the affidavit or other evidence failed to overcome a_|| rejections under appeal and/or appellant fails to provide a showing of good and
`sufficient reasons why it is necessary and was not earlier presented. See 37 CFR 41 .33(d)(1).
`1 1. [I The affidavit or other evidence is entered. An explanation of the status of the claims after entry is below or attached.
`REQUEST FOR RECONSIDERATION/OTHER
`
`12. IX The request for reconsideration has been considered but does NOT place the application in condition for allowance because:
`See Continuation Sheet.
`
`
`
`13. El Note the attached Information Disclosure Statement(s). (PTO/SB/08) Paper No( ).
`14. El Other:
`.
`STATUS OF CLAIMS
`
`15. The status of the claim(s) is (or will be) as follows:
`Claim(s) allowed:
`Claim(s) objected to:
`Claim(s) rejected: 1-3.
`Claim(s) withdrawn from consideration: 4-7.
`
`/FRANTZ JULES/
`Supervisory Patent Examiner, Art Unit 3744
`US. Patent and Trademark Office
`PTOL-303 (Rev. 08-2013)
`
`/S. T./
`Examiner, Art Unit 3744
`
`Advisory Action Before the Filing of an Appeal Brief
`
`Part of Paper No. 20171017
`
`

`

`Continuation Sheet (PTOL-303)
`
`Application No. 14/668,974
`
`Continuation of 12. does NOT place the application in condition for allowance because: Applicant argues that the specifications support
`that the refrigerant is ethane only and thus "the oil return agent is contained in an amount of from 0.1 to 14 mass% with respect to the
`ethane" is supported by the originally filed specifications. However, specifications recite that the oil return agent is contained in an amount
`from 0.1. to 14 mass% with respect to the refrigerant (see pars. 13, 16, 26), wherein the refrigerant is defined as comprising three separate
`components; a hydrocarbon (e.g. ethane); a refrigerator oil; and an oil return agent (see at least originally filed claim 1). Accordingly, by
`applicant‘s own definitions of a refrigerant, and by the originally filed specifications, the oil return agent is contained in an amount of from
`0.1. to 14 mass% with respect to the refrigerant wherein the refrigerant comprises more than ethane.
`
`Applicant further submits that even if alleged new matter is added to the claim, the examiner should still consider the subject matter added
`to the claim since the new matter rejection may be overcome by the applicant; if the claims are still rejected, the next office action should
`not be an advisory action. However, applicant has not overcome the new matter rejection. Indeed, it appears that applicant tacitly
`acknowledges that newly added claims 4-7 added new matter to the claims. Therefore there is no need or requirement to reopen
`prosecution on the merits of claims 4-7.
`Applicant argues that Takasugi fails to disclose that the hydrocarbon of the refrigerant consists of ethane. However, referring to par. 47,
`Takasugi teaches that low temperature refrigeration cycle is filled with a refrigerant such as ethane.
`Applicant further argues that none of the cited references disclose or suggest the amount of the oil return agent with *respect to ethane*.
`However, claims 1-3 were interpreted such that the amount of return agent is contained in an amount with respect to the refrigerant (see
`par. 2, pages 3-4 of the final office action mailed 8/17/2017).
`
`