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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
`
`
`
`
`
`15/120,673
`
`08/22/2016
`
`Shingo OYAGI
`
`20759.0015USWO
`
`9202
`
`06mm —HAMRE, SCHUMANN,MUELLER&LARSONP.C. m
`7590
`53148
`45 South Seventh Street
`NICHOLS, CHARLES w
`Suite 2700
`MINNEAPOLIS, MN 55402- 1683
`
`PAPER NUMBER
`
`ART UNIT
`3746
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/27/2018
`
`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.
` 15/120,673 OYAGI ET AL.
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`CHARLES W. NICHOLS $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 08/22/2016.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|ZI This action is non-final.
`a)|:l This action is FINAL.
`3)IZI An election was made by the applicant in response to a restriction requirement set forth during the interview on
`May 30th 2018 ; 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 Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)IZI Claim(s) 1-20 is/are pending in the application.
`5a) Of the above claim(s) 2-7,10-12 and 15-20 is/are withdrawn from consideration.
`
`6)I:I Claim(s)
`is/are allowed.
`
`7)|Z| Claim(s) 1 8 9 13 and 14 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
`:/'/\W¢W.LISI>I‘.0. ovI’ atentS/init events/
`
`
`
`hI/index.‘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 08/22/2016 is/are: a)IXI 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)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 20180501
`
`

`

`Application/Control Number: 15/120,673
`
`Art Unit: 3746
`
`Page 2
`
`The present application, filed on or after March 16, 2013, is being examined under the first
`
`inventor to file provisions of the AIA.
`
`DETAILED ACTION
`
`1.
`
`This is the first office action in response to the above identified patent application filed on
`
`08/22/2016. Claims 1-20 are currently pending and being examined.
`
`2.
`
`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 correction of the statutory basis for
`
`the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale
`
`supporting the rejection, would be the same under either status.
`
`Election/Restrictions
`
`3.
`
`During a telephone conversation with Douglas P. Mueller on May 30th 2018 a provisional election
`
`was made without traverse to prosecute the invention of species 1, claims 1, 8, 9, 13, and 14. Affirmation
`
`of this election must be made by applicant in replying to this Office action. Claims 2-7, 10-12, and 15-20
`
`are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-
`
`elected invention.
`
`4.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for
`
`Claim Rejections - 35 USC § 102
`
`the rejections under this section made in this Office action:
`
`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.
`
`5.
`
`Claims 1 and 8 are rejected under 35 U.S.C. 102(a) as being anticipated by Lilie (USPN
`
`5,192,200).
`
`6.
`
`In reference to independent claim 1, Lilie teaches a refrigerant compressor (col 1, 6-9
`
`specifically discloses “This invention relates to a hermetic compressor for small refrigerating machines
`
`and, more specifically, a reed valve to be used as a suction valve and/or a discharge valve in refrigeration
`
`hermetic compressors.”) comprising, inside a sealed container (hermetic compressors are known to be in
`
`
`sealed containers, htt
`
`://www.dictionarv.com/browse/h
`
`
`ermetic defines hermetic as “made airtight by
`
`

`

`Application/Control Number: 15/120,673
`
`Art Unit: 3746
`
`Page 3
`
`fusion or sealing.”): a cylinder (1) which houses a piston (2) movable in a reciprocating manner; a valve
`
`plate (3) which is disposed on an opening end of the cylinder (seen in fig 1) and has a suction valve seat
`
`(portion of 3 that 10a sets on, fig 1) formed so as to surround a suction hole (6); and a suction valve (10a)
`
`configured to open and close the suction hole (6), wherein the suction valve includes an opening and
`
`closing portion (free end of 10a), and an arm portion to be operated along with opening and closing of the
`
`opening and closing portion (portion between the distal free end and the fixed proximal end of 10a), and
`
`7.
`
`the refrigerant compressor further comprises a synthetic resin film in at least a region of the valve
`
`plate which is brought into contact with the arm portion of the suction valve (col 3, 42-47 specifically
`
`discloses “According to the present invention, each flexible blade element has a body preferably made of
`
`a plastic resin, reinforced with fiber filaments that are arranged spaced apart from each other, according
`
`to at least one direction relative to the longitudinal axis of the blade or the blade element.” the “plastic
`
`resin” is interpreted to be the synthetic resin and since the valve can be interpreted to be fiber filaments
`
`with an interlocking film the claim language is met).
`
`8.
`
`In reference to dependent claim 8, Lillie teaches the refrigerant compressor according to claim
`
`1, wherein the synthetic resin film is disposed in either one of a region of the valve plate which opposes
`
`opening and closing portion of the suction valve or the opening and closing portion of the suction valve
`
`(the resin film is on the entirety of the blade).
`
`Claim Rejections - 35 USC § 103
`
`9.
`
`The following is a quotation of 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 of this title, 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.
`
`10.
`
`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 obviousness under 35 U.S.C. 103(a) are
`
`summarized as follows:
`
`

`

`Application/Control Number: 15/120,673
`
`Art Unit: 3746
`
`Page 4
`
`99°F)?
`
`Determining the scope and contents of the prior art.
`Ascertaining the differences between the prior art and the claims at issue.
`Resolving the level of ordinary skill in the pertinent art.
`Considering objective evidence present in the application indicating obviousness or
`nonobviousness.
`
`11.
`
`Claim 9 rejected under 35 U.S.C. 103(a) as being unpatentable over Lilie (USPN 5,192,200)
`
`in view of Oki (USPN 5,208,293).
`
`12.
`
`In reference to dependent claim 9, Lilie teaches the refrigerant compressor according to claim 1,
`
`however Lilie is silent to the type of plastic. However Oki, teaches a material meant for valves (col 1, 10)
`
`wherein the synthetic resin film contains fluororubber as a binder, and a fluororesin as a solid lubricant
`
`(col 1, 52-57 specifically discloses “Other conventional methods include applying a liquid prepared by
`
`dissolving a film-forming polymer in an organic solvent and dispersing a solid lubricant such as a
`
`fluororesin therein (application method), and mixing a solid lubricant such as a fluororesin”). It would have
`
`been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to
`
`utilize the material in Oki in the valve of Lilie to create a valve that has “excellent lubricating properties
`
`and capable of effectively damping the vibration applied to these devices” col 1, 25-27; Oki.
`
`13.
`
`Claim 13 rejected under 35 U.S.C. 103(a) as being unpatentable over Lilie (USPN 5,192,200)
`
`in view Murase (USPAP 2007/0225177).
`
`14.
`
`In reference to dependent claim 13, Lilie teaches the refrigerant compressor according to claim
`
`1, however Lilie does not teaches a total film thickness of the synthetic resin film is set to a value which
`
`falls within a range of 1 pm to 100 um. Murase, a similar resin film, teaches a total film thickness of the
`
`synthetic resin film is set to a value which falls within a range of 1 um to 100 um (para 0028 specifically
`
`discloses “The sliding layer is such that its layer thickness is not limited in particular, but can preferably be
`
`3-500 um, especially preferably be 6-50 um”).
`
`It would have been obvious to one of ordinary skill in the
`
`art before the effective filing date of the claimed invention to make the film thickness of Uehara the size of
`
`Murase so the film “has satisfactory adhesiveness and sliding characteristics” para 0028, Murase.
`
`Furthermore the MPEP specifically states “PRIOR ART WHICH TEACHES A RANGE OVERLAPPING,
`
`

`

`Application/Control Number: 15/120,673
`
`Art Unit: 3746
`
`Page 5
`
`APPROACHING, OR TOUCHING THE CLAIMED RANGE ANTICIPATES IF THE PRIOR ART RANGE
`
`DISCLOSES THE CLAIMED RANGE WITH "SUFFICIENT SPECIFICITY"” MPEP 2131.03, II
`
`15.
`
`"[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim
`
`is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227
`
`USPQ 773 (Fed. Cir. 1985).
`
`16.
`
`Furthermore, a change in size is generally recognized as being within the level of ordinary skill in
`
`the art.
`
`In re Rose, 105 USPQ 237, (CCPA 1955). Furthermore, the Federal Circuit held that, where the
`
`only difference between the prior art and the claims was a recitation of relative dimensions of the claimed
`
`device and a device having the claimed relative dimensions would not perform differently than the prior
`
`art device, the claimed device was not patentably distinct from the prior art device.
`
`In Gardner v. TEC
`
`Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232
`
`(1984).
`
`17.
`
`Claim 14 rejected under 35 U.S.C. 103(a) as being unpatentable over Lilie (USPN 5,192,200)
`
`in view of Hirooka (USPAP 2005/0175492).
`
`18.
`
`In reference to independent claim 14, Lilie teaches a refrigerant compressor (col 1, 6-9
`
`specifically discloses “This invention relates to a hermetic compressor for small refrigerating machines
`
`and, more specifically, a reed valve to be used as a suction valve and/or a discharge valve in refrigeration
`
`hermetic compressors.”) comprising, inside a sealed container (hermetic compressors are known to be in
`
`
`sealed containers, htt
`://www.dictionar .com/browse/hermetic defines hermetic as “made airtight by
`
`fusion or sealing.”): a cylinder (1) which houses a piston (2) movable in a reciprocating manner; a valve
`
`plate (3) which is disposed on an opening end of the cylinder (seen in fig 1) and has a suction valve seat
`
`(portion of 3 that 10a sets on, fig 1) formed so as to surround a suction hole (6); and a suction valve (10a)
`
`configured to open and close the suction hole (6), wherein the suction valve includes an opening and
`
`closing portion (free end of 10a), and an arm portion to be operated along with opening and closing of the
`
`opening and closing portion (portion between the distal free end and the fixed proximal end of 10a), and
`
`

`

`Application/Control Number: 15/120,673
`
`Art Unit: 3746
`
`Page 6
`
`19.
`
`the refrigerant compressor further comprises a synthetic resin film in at least a region of the valve
`
`plate which is brought into contact with the arm portion of the suction valve (col 3, 42-47 specifically
`
`discloses “According to the present invention, each flexible blade element has a body preferably made of
`
`a plastic resin, reinforced with fiber filaments that are arranged spaced apart from each other, according
`
`to at least one direction relative to the longitudinal axis of the blade or the blade element.” the “plastic
`
`resin” is interpreted to be the synthetic resin and since the valve can be interpreted to be fiber filaments
`
`with a interlocking film the claim language is met). Lillie does not teach a refrigeration circuit which is
`
`formed by annularly connecting a refrigerant compressor, a radiator, a pressure reduction device, and a
`
`heat absorber, by a pipe. Hirooka teaches a refrigeration appliance (refrigerator 1, fig 1), with a similar
`
`compressor, comprising a refrigerant circuit (1 O of fig 1) which is formed by annularly (examiner takes
`
`"annularly" to mean a ring or circuit that material flows in, all the components together to form a circuit)
`
`connecting the refrigerant compressor (11), a radiator (12), a pressure reduction device (13), and a heat
`
`absorber (14), by a pipe (pipes between the components). It would have been obvious to one of ordinary
`
`skill in the art before the effective filing date of the claimed invention to use the compressor of Lilie in the
`
`refrigeration circuit of Hirooka in order to provide reliable and efficient refrigeration. Furthermore using
`
`the compressor of Lilie in the refrigeration circuit of Hirooka increases refrigeration circuit efficiency by
`
`increasing efficiency of the compressor that uses a more efficient valve structure (col 2, 55-68; Lilie).
`
`Conclusion
`
`20.
`
`Examiner has cited particular columns and line and/or paragraph numbers in the references
`
`applied to the claims above for the convenience of the applicant. Although the specified citations are
`
`representative of the teachings of the art and are applied to specific limitations within the individual claim,
`
`other passages and figures may apply as well. It is respectfully requested from the applicant in preparing
`
`responses, to fully consider the references in entirety as potentially teaching all or part of the claimed
`
`invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
`
`21.
`
`The examiner requests, in response to this Office action, support be shown for language added to
`
`any original claims on amendment and any new claims. That is, indicate support for newly added claim
`
`

`

`Application/Control Number: 15/120,673
`
`Art Unit: 3746
`
`Page 7
`
`language by specifically pointing to page(s) and line no(s) in the specification and/or drawing figure(s).
`
`This will assist the examiner in prosecuting the application.
`
`22.
`
`When responding to this office action, Applicant is advised to clearly point out the patentable
`
`novelty which he or she thinks the claims present, in view of the state of the art disclosed by the
`
`references cited or the objections made. He or she must also show how the amendments avoid such
`
`references or objections See 37 CFR 1.1 1 1 (c).
`
`23.
`
`The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
`
`i. Baba (USPN 7,390,178) discloses a valve for a compressor.
`
`ii. Yoshida (USPN 4,089,348) discloses a valve seat.
`
`iii. Uehara (USPAP 2006/0280617) discloses a valve structure.
`
`24.
`
`Any inquiry concerning this communication or earlier communications from the examiner should
`
`be directed to CHARLES W. NICHOLS whose telephone number is (571 )272-6492. The examiner can
`
`normally be reached on Monday-Friday, off Friday, 7:30-5 EDT.
`
`25.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Essama Omgba can be reached on 571 -272-4532. The fax phone number for the organization where
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`this application or proceeding is assigned is 571-273-8300.
`
`26.
`
`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.
`
`/C. W. N./
`
`Examiner, Art Unit 3746
`
`/BRYAN LETTMAN/
`
`Primary Examiner, Art Unit 3746
`
`