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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`
`14/779,472
`
`09/23/2015
`
`Masanori KOBAYASHI
`
`20759.0013USWO
`
`2118
`
`53148
`
`759°
`
`(Mg/2°”
`
`HAMRE, SCHUMANN, MUELLER & LARSON RC.
`45 South Seventh Street
`Suite 2700
`
`MINNEAPOLIS, MN 55402-1683
`
`BRUNJES' CHRISTOPHER]
`
`ART UNIT
`3746
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/18/2019
`
`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
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`following e—mail address(es):
`PTOMail@hsml.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`0/7709 A0170” Summary
`
`Application No.
`14/779,472
`Examiner
`CHRISTOPHER J BRUNJES
`
`Applicant(s)
`KOBAYASHI, Masanori
`Art Unit
`AIA (FITF) Status
`3746
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 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). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f 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).
`
`Status
`
`1). Responsive to communication(s) filed on November 08,2018.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a). This action is FINAL.
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`2b) C] This action is non-final.
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`3)[:] 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)[:] 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 Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)
`Claim(s)
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`1—2 and 5—6 is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
`
`E] Claim(s)
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`is/are allowed.
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`Claim(s) 1—2 and 5—6 is/are rejected.
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`[:1 Claim(s) _ is/are objected to.
`
`) ) ) )
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`6 7
`
`8
`
`
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`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabie. 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
`
`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10)[:] The specification is objected to by the Examiner.
`
`11)[:] The drawing(s) filed on
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`is/are: a)D accepted or b)l:] 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). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a). All
`
`b)I:I Some**
`
`c)CI None of the:
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`1.. Certified copies of the priority documents have been received.
`
`2.[:] Certified copies of the priority documents have been received in Application No.
`
`3.[:] 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)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20190302
`
`

`

`Application/Control Number: 14/779,472
`Art Unit: 3746
`
`Page 2
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`DETAILED ACTION
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`1.
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`The present application is being examined under the pre—AIA first to invent provisions.
`
`Response to Amendment
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`2.
`
`The amendment filed on November 08, 2018 has been entered. Claims 3 & 4 have been
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`cancelled. Claims 1, 2, 5 & 6 remain pending in the application.
`
`Claim Rejections - 35 USC § 112
`
`3.
`
`The following is a quotation of 35 U.S.C. ll2(b):
`
`(b) CONCLUSION.7The 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. ll2 (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.
`
`4.
`
`Claims 1, 2, 5 & 6 are rejected under 35 U.S.C. ll2(b) or 35 U.S.C. ll2 (pre—AIA), second
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`paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject
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`matter which the inventor or a joint inventor, or for pre—AIA the applicant regards as the invention.
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`5.
`
`Claim 1 discloses in Line 35 how “passage areas of the plurality of discharge passages are
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`different from each other”. This renders the claim indefinite because it is not clear HOW the
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`discharge passages are different from each other. It is not clear if the claim was meant to refer to
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`a specific different (i.e. size, shape, location) OR the claim was meant to be broad and say that the
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`passage areas are different “in some way”.
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`6.
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`To expedite prosecution, this limitation will be given its broadest reasonable interpretation
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`that the passage areas are different “in some way”.
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`

`

`Application/Control Number: 14/779,472
`Art Unit: 3746
`
`Page 3
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`Claim Rejections - 35 USC § 103
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`7.
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`In the event the determination of the status of the application as subject to AIA 35 U.S.C.
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`102 and 103 (or as subject to pre—AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the
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`statutory basis for the rejection will not be considered a new ground of rejection if the prior art
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`relied upon, and the rationale supporting the rejection, would be the same under either status.
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`8.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness
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`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.
`
`9.
`
`Claims 1, 2 & 6 are rejected under 35 U.S.C. 103 as being unpatentable over Park et
`
`al (US 2009/0175746 A1) (Park hereinafter) in further View of Kinjo (US 2014/0169998 A1)
`
`(Kinjo hereinafter).
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`10.
`
`Regarding Claim 1, Park teaches: A sealed compressor (Figure 4) comprising:
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`a sealed container (C) having a sealed space inside thereof (Figure 4);
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`an electric component (M) accommodated in the sealed container (Figure 4); and
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`a compression component (100) accommodated in the sealed container and driven by
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`the electric component (Figure 4) to compress a refrigerant gas (Paragraph 2),
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`wherein the compression component includes:
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`a cylinder block (300) formed with a compression chamber inside thereof (Figure l);
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`a piston (100) reciprocatingly inserted into the compression chamber through one end
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`of the cylinder block (Figure 4); and
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`a valve plate (210) which closes the other end of the cylinder block (Fig. 11),
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`

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`Application/Control Number: 14/779,472
`Art Unit: 3746
`
`Page 4
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`wherein the valve plate has a suction hole (212) through which the refrigerant gas is
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`suctioned into the compression chamber (Figure 6), and a plurality of discharge holes (21 1)
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`through which the refrigerant gas is discharged from an interior of the compression chamber
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`(Figure 6),
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`the valve plate being provided With a plurality of discharge valves (230) Which open
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`and close the plurality of discharge holes, respectively (Figure 6),
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`each discharge hole of the plurality of discharge holes having a different diameter
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`(Paragraph 42),
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`wherein the discharge holes (21 l) have an opening shape (Figure 13) configured such
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`that opening areas of the discharge holes are gradually decreased (Cl) and then gradually
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`increased (C2) in the direction from the compression chamber toward a discharge side of the
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`valve plate, (Figure 13),
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`wherein the piston (100) is provided with a plurality of convex portions (101; Figure 7)
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`on a tip end surface thereof (CS), at least tip end portions of the plurality of convex portions
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`being located inside of the plurality of discharge holes, respectively, in a state in Which the
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`piston is located at a top dead center (Paragraph 83 — Lines 1—6),
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`wherein the plurality of convex portions is sized relative to the plurality of discharge
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`holes such that (Paragraph 44) when a plurality of discharge passages of the refrigerant gas
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`are defined as spaces formed between outer peripheral surfaces of the plurality of convex
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`portions and inner peripheral surfaces of the plurality of discharge holes, respectively, in a
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`state in Which the plurality of convex portions are located inside of the plurality of discharge
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`holes, respectively (Paragraphs 47—48; The compressor can be designed such that the outer surface
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`of the protrusion and the inner surface of the discharge hole can have different inclination angles
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`

`

`Application/Control Number: 14/779,472
`Art Unit: 3746
`
`Page 5
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`from each other. This would result in a space being formed between these two components when
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`the protrusion is inserted into the discharge hole at top dead center), and
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`when passage spacings of the plurality of discharge passages are defined as a distance
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`between the outer peripheral surfaces of the plurality of convex portions and the inner
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`peripheral surfaces of the plurality of discharge holes (Paragraphs 47—48; Figure 8),
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`each of the plurality of discharge passages has the same passage spacing (see the
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`annotation of Figure 9 below; The passage spacing is defined as a distance between the outer
`
`peripheral surface of the plurality of convex portions and the inner peripheral surfaces of the
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`plurality of discharge holes (Claim 1 — Lines 31—33). As shown in the annotation of Figure 9 below,
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`when the convex protrusion of the piston has the same inclination angle as the discharge hole
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`(Paragraph 48), when the protrusion closes the discharge hole, the distance between the outer
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`peripheral surface of the convex portion and the inner peripheral surface of the discharge hole is
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`zero in at least the first chamfer (Cl) for both of the discharge holes.), and
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`passage areas of the plurality of discharge passages are different form each other (the
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`passage areas would be different from each other AT LEAST in size if the discharge passages had
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`different diameters, see the annotation of Figure 9 below).
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`

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`Application/Control Number: 14/779,472
`Art Unit: 3746
`
`Page 6
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`
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`kmmwxm \\ '“
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`11.
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`Park fails to teach wherein the discharge holes have an opening shape which is a bell mouth
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`section, and the opening areas of the discharge holes are smallest in locations nearer to the
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`compression chamber than to a center of the valve plate.
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`12.
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`However, Kinjo does teach how an actuating piston (125) can have a protrusion (155)
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`that mates with a discharge opening (139), this discharge opening is a bell mouth section
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`configured such that opening areas of the discharge holes are gradually decreased and then
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`gradually increased in the direction form the compression chamber toward a discharge side
`
`of the valve plate (Figure 3); and the opening areas of the discharge holes are smallest in
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`locations nearer to the compression chamber than to a center of the valve plate (Please note
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`that the claim does not state that opening areas of the discharge holes are smallest ONLY in
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`locations nearer to the compression chamber, just that they ARE smallest in an area that is nearer
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`to the compression chamber than to a center of the valve plate, see the annotation of Figure 3
`
`below).
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`

`

`Application/Control Number: 14/779,472
`Art Unit: 3746
`
`Page 7
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`Valve Plate
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`Center Line 3"
`
`
`
`
`
`
` ; ,_ :5;
`
`Locations Where Qpening
`Areas Are Smaiiest
`
`13.
`
`Having the discharge opening having a curved, bell—shaped mouth would have been well
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`within the capabilities of a person having ordinary skill in the art at the effective filing date of the
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`claimed invention. The smoother surface would provide a smoother fluid flow and minimize the
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`amount of turbulence generated.
`
`14.
`
`Therefore, to one of ordinary skill in the art at the effective filing date of the claimed
`
`invention desiring a compressor that has a discharge opening with smoother walls to reduce
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`turbulence, it would have been obvious to utilize the techniques disclosed in Park in combination
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`with those seen in Kinjo in order to obtain such a result.
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`15.
`
`Regarding Claim 2, Park in view of Kinjo teaches the invention as disclosed above in
`
`Claim 1, wherein Park further teaches: wherein the passage areas of the plurality of discharge
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`passages are made different from each other, by making at least one of volumes of the
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`plurality of convex portions, shapes of the plurality of convex portions, and sizes of the
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`plurality of discharge holes, different from each other (Abstract — Lines 9—10; Paragraph 48;
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`Paragraph 86 — Lines 5—19; Figure 7).
`
`

`

`Application/Control Number: 14/779,472
`Art Unit: 3746
`
`Page 8
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`16.
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`Regarding Claim 6, Park in view of Kinjo teaches the invention as disclosed above in
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`Claim 1, wherein Park in view of Kinjo further teaches: A refrigeration device (Park: Paragraph
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`3) comprising: the sealed compressor as recited in claim 1 (see the rejection of Claim 1 above).
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`17.
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`Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Park et al (US
`
`2009/0175746 A1) (Park hereinafter) in further View of Kinjo (US 2014/0169998 A1) (Kinjo
`
`hereinafter) & Tsuboi (US 2009/0116982 A1) (Tsuboi hereinafter).
`
`18.
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`Regarding Claim 5, Park in view of Kinjo teaches the invention as disclosed above in
`
`Claim 1, wherein Park & Kinjo fails to teach: wherein the electric component is inverter—driven
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`at one of a plurality of operating frequencies.
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`19.
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`However, Tsuboi does teach a hermetic piston compressor (Figure 1) wherein the electric
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`component is inverter-driven at one of a plurality of operating frequencies (Paragraph 64 —
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`Lines 4—5).
`
`20.
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`It is noted that a simple substitution of one known element (in this case, the standard driving
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`element of Park) for another (in this case, the inverter—driven electric element, as taught by Tsuboi)
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`to obtain predictable results (in this case, a compressor assembly that is capable of operating at
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`various frequencies to vary the flow of the compressed gas) was an obvious extension of prior art
`
`teachings, KSR, 550 US. at _, 82 USPQ2d at 1396, MPEP 2141 III B.
`
`21.
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`Therefore, to one of ordinary skill in the art at the effective filing date of the claimed
`
`invention desiring a compressor that is capable of operating at a variety of operating frequencies,
`
`it would have been obvious to utilize the techniques disclosed in Park in combination with those
`
`seen in Kinjo Tsuboi in order to obtain such a result.
`
`

`

`Application/Control Number: 14/779,472
`Art Unit: 3746
`
`Page 9
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`Response to Arguments
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`22.
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`The applicants arguments/remarks entered on November 08, 2018 have been fully
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`considered, but are not found to be persuasive.
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`23.
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`The applicant has argued that Park does not teach or suggest the relative sizes of passage
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`spacings OR the effect of having different passage areas.
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`24.
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`First, the applicant should note that While features of an apparatus may be recited either
`
`structurally or functionally, claims directed to an apparatus must be distinguished from the prior
`
`art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477—78, 44 USPQ2d
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`1429, 1431—32 (Fed. Cir. 1997) A claim containing a “recitation with respect to the manner in
`
`which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus
`
`from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the
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`claim. Ex parte Masham, 2 USPQ2d 1647 (Ed. Pat. App. & Inter. 1987) (MPEP 2114).
`
`In the
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`instant case, Park discloses all the structural limitations of the claimed invention, including
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`designing the discharge holes to have different diameters and having the protrusions formed to
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`correspond to the relative size of the discharge holes. Therefore, the fact that Park doesn’t teach
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`the “effect” of having different or uniform passage areas is irrelevant.
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`25. With respect to the applicants arguments that Park fails to teach the relative sizes of the
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`passages spacings OR passage areas, the examiner respectfully disagrees. As outlined in the
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`rejection of Claim 1 above, Park discloses how the discharge holes can have different diameters
`
`(Paragraph 42), the sizes of the piston protrusions are shaped to correspond to the shape of their
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`respective discharge hole (Paragraph 44) AND the inclination angles of the outer peripheral
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`surface of the protrusion and the inner peripheral surface of the discharge hole can be the same OR
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`different from each other (Paragraph 48). The modification of these different parameters would
`
`

`

`Application/Control Number: 14/779,472
`Art Unit: 3746
`
`Page 10
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`define the sizes of the passage spacings and the passage areas (see the rejection of Claim 1 above
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`for a more detailed explanation).
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`26.
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`The applicant has asserted that Hamada does not remedy these deficiencies in Park. But,
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`as noted above, it is the examiners opinion that Park does not have the deficiencies as cited by the
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`applicant.
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`27.
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`The applicant as argued against the rejections of Claims 2, 5 & 6 based on the arguments
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`against the rejection of Claim 1.
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`28.
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`For these reasons, the applicant did not find the applicants arguments to be persuasive.
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`Conclusion
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`Applicant's amendment necessitated the new ground(s) of rejection presented in this Office
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`action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is
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`reminded of the extension of time policy as set forth in 37 CFR l.l36(a).
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`A shortened statutory period for reply to this final action is set to expire THREE MONTHS
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`from the mailing date of this action.
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`In the event a first reply is filed Within TWO MONTHS of
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`the mailing date of this final action and the advisory action is not mailed until after the end of the
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`THREE—MONTH shortened statutory period, then the shortened statutory period will expire on
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`the date the advisory action is mailed, and any extension fee pursuant to 37 CFR l.l36(a) will be
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`calculated from the mailing date of the advisory action.
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`In no event, however, will the statutory
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`period for reply expire later than SIX MONTHS from the date of this final action.
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to CHRISTOPHER J BRUNJES Whose telephone number is (571)272—2083.
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`The examiner can normally be reached on M—F: 9am—5pm.
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`

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`Application/Control Number: 14/779,472
`Art Unit: 3746
`
`Page ll
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`Examiner interviews are available via telephone, in—person, and video conferencing using
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`
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`encouraged
`
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`
`use
`
`the
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`USPTO
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`
`(AIR)
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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
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`
`/CHRISTOPHER J BR UNJES/
`
`Examiner, Art Unit 3746
`/DE VON C KRAMER/
`
`Supervisory Patent Examiner, Art Unit 3746
`
`