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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
`
`15/120,871
`
`53148
`
`08/23/2016
`
`Sadayuki YAMADA
`
`20296.0067USWO
`
`1439
`
`759°
`
`04/22/20”
`
`HAMRE, SCHUMANN, MUELLER & LARSON RC.
`45 South Seventh Street
`Suite 2700
`
`MINNEAPOLIS, MN 55402-1683
`
`WAN'DEMING
`
`PAPER NUMBER
`
`ART UNIT
`3748
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/22/2019
`
`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
`
`following e—mail address(es):
`PTOMail@hsml.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`0/7709 A0170” Summary
`
`Application No.
`15/120,871
`Examiner
`DEMING WAN
`
`Applicant(s)
`YAMADA et al.
`Art Unit
`3748
`
`AIA (FITF) Status
`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 1/16/2019.
`[: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.
`
`2b) C] This action is non-final.
`
`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) fl is/are pending in the application.
`
`5a) Of the above claim(s)
`
`is/are withdrawn from consideration.
`
`E] Claim(s)
`
`is/are allowed.
`
`Claim(s) fl is/are rejected.
`
`[:1 Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
`
`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 8/23/2016 is/are: a). accepted or b)E] 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)D Some**
`
`C)D None of the:
`
`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 20190411
`
`

`

`Application/Control Number: 15/120,871
`Art Unit: 3748
`
`Page 2
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`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined under the first
`
`inventor to file provisions of the AIA.
`
`2.
`
`The amendment filed on 1/16/2019 has been entered. Claims 1-4 are pending and under
`
`consideration.
`
`Claim Rejections - 35 USC § 112
`
`3.
`
`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.
`
`4.
`
`Claims 1-4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as
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`being indefinite for failing to particularly point out and distinctly claim the subject matter which the
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`inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
`
`In Reference to Claim 1
`
`The metes and bounds of claim 1 cannot be ascertained since ”a bypass check valve capable of
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`blocking the bypass port” is indefinite and renders claim 1 ambiguous.
`
`If the Applicant considers that
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`the recited function is a required limitation, is should be positively recited.
`
`In Reference to Claims 2-3
`
`Claims 2-3 are rejected by their virtue dependency to Claim 1.
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`Claim Rejections - 35 USC § 103
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`5.
`
`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
`
`

`

`Application/Control Number: 15/120,871
`Art Unit: 3748
`
`Page 3
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`basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and
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`the rationale supporting the rejection, would be the same under either status.
`
`6.
`
`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.
`
`7.
`
`Claims 1, 2 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over the Applicant
`
`provide prior art US Patent Publication 2013/0078128 to Akei in view of JP63235681 to Sato (The Art
`
`rejection is made based on the Espacenet translation), and further in view of US Patent 6,056,523 to
`
`Won et al (Won).
`
`In Reference to Claim 1
`
`Akei discloses a scroll compressor comprising:
`
`a partition plate (Fig. 1, 37) for partitioning a hermetic container into a high pressure
`
`space (Fig. 1, 42) and a low pressure space (Fig. 1, 20);
`
`a stationary scroll (Fig. 1, 62) abutting on the partition plate and including a stationary
`
`spiral lap;
`
`an orbiting scroll (Fig. 1, 64) including an orbiting spiral lap engaged with the stationary
`
`spiral lap of the stationary scroll, and forming a compressing chamber between the stationary
`
`spiral lap and the orbiting spiral lap;
`
`a self-rotation preventing member (Fig. 1, annotated by the examiner) for preventing
`
`the orbiting scroll from rotating; and
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`a main bearing (fig. 1, annotated by the examiner) for supporting the orbiting scroll,
`
`

`

`Application/Control Number: 15/120,871
`Art Unit: 3748
`
`Page 4
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`wherein the stationary scroll, the orbiting scroll, the self-rotation preventing member,
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`and the main bearing are disposed in the low pressure space (as showed in Fig. 1),
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`wherein the stationary scroll is movable between the partition plate and the main
`
`bearing in an axial direction (Paragraph 32 of Akei, the fixed scroll has limited axial
`
`displacement)
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`wherein the scroll compressor further comprises:
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`a bearing-side engagement section (Fig. 1, annotated by the examiner) formed on the
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`main bearing;
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`a scroll-side engagement section (Fig. 1, annotated by the examiner) formed on the
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`stationary scroll; and
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`a pillar-shaped member (Fig. 1, 98), of which lower section is inserted into the bearing-
`
`side engagement section, and of which upper section is inserted into the scroll-side engagement
`
`section; and
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`a boss section (Fig. 1, annotated by the examiner) formed on a top face of the stationary
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`scroll, the boss section forming a discharge space (Fig. 1, annotated by the examiner) between
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`the partition plate and the stationary scroll,
`
`wherein the discharge space (Fig. 1, annotated by the examiner) communicates with the
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`high pressure space (Fig. 1, 42) via a second discharge port (Fig. 1, 39),
`
`wherein a lower end-face (Fig. 1, annotated by the examiner) of an engagement section
`
`between the pillar-shaped member and the scroll-side engagement section is located above (As
`
`annotated in Fig. 1, there is a step between the engagement lower end face and the spiral lower
`
`face, therefore, the lower end face of the engagement section is located above) a lap end-face
`
`of the stationary spiral lap in the axial direction,
`
`

`

`Application/Control Number: 15/120,871
`Art Unit: 3748
`
`Page 5
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`wherein a first discharge port (Fig. 2, 28) is formed at a center portion of the boss
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`section and a bypass port (Fig. 2, 90/92) is provided near the first discharge port in the boss
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`section, and
`
`wherein the first discharge port (Fig. 2, 28) and the bypass port (fig. 2, 90/92) allow the
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`compressing chamber of the scroll compressor to communicate with the discharge space.
`
`Wherein a bypass check valve (Fig. 2, 136) and a bypass check-valve stopper (Fig. 2,
`
`annotated by the examiner, a portion of the wall performed as a stopper) are disposed in the
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`discharge space.
`
`Akei does not teach the following but is taught by Sato:
`
`a V-shaped lead valve (Fig. 3, annotated by the examiner) that is used as a bypass check
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`valve capable of blocking the bypass port (Fig. 3, 275a/b).
`
`It would have been obvious to one with ordinary skill, in the art at the time of the invention, to
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`modify the invention of Akei to incorporate teachings from Sato. Doing so, would result in the V shaped
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`lead valve of Sato being configured to close the bypass ports, since Akei and Sato are in the same field of
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`endeavor and Sato teaches a method of closing the bypass ports by virtue of the pressure difference
`
`(Col. 8, Line 50-55).
`
`The combination of Akei and Sato as applied to Claim 1 does not teach the following but is taught by
`
`Won:
`
`an inner wall of the stationary spiral lap is extended to a position near a tail end of the
`
`orbiting spiral lap (As showed in Fig, 32) for differentiating a trapping capacity of a first
`
`compressing chamber from a trapping capacity of a second compressing chamber, where the
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`first compressing chamber is formed by the inner wall of the stationary spiral lap and an outer
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`wall of the orbiting spiral lap, and the second compressing chamber is formed by an outer wall
`
`of the stationary spiral lap and an inner wall of the orbiting spiral lap.
`
`

`

`Application/Control Number: 15/120,871
`Art Unit: 3748
`
`Page 6
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`It would have been obvious to one with ordinary skill, in the art at the time of the invention, to
`
`modify the combination of Akei and Sato as applied to Claim 1 to integrate teachings from Won. Doing
`
`so, would result the end to the stationary spiral lap being extended to a position near a tail end of the
`
`orbiting scroll. Both inventions of Akei and Won are in the same field of endeavor. Won taught that this
`
`arrangement is a conventional design (Col. 6, Line 15-19).
`
`
`
`
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`Application/Control Number: 15/120,871
`Art Unit: 3748
`
`Page 7
`
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`
`a step between the
`flower end face of
`engagement and the
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`
`Fig. 1, Akei amctated by the examiner
`34
`
`
`
`
`stopper
`
`

`

`Application/Control Number: 15/120,871
`Art Unit: 3748
`
`In Reference to Claim 2
`
`Page 8
`
`Akei discloses an upper end-face (Fig. 1, annotated by the examiner) of the engagement
`
`section between the pillar-shaped member and the scroll-side engagement section is located
`
`below a lap bottom face of the stationary spiral lap in the axial direction (As showed in Fig. 1).
`
`In Reference to Claim 4
`
`Akei discloses the lower end-face of the engagement section between the pillar-shaped
`
`member and the scroll-side engagement section is located higher than the lap end-face of the
`
`stationary spiral lap in the axial direction by a height equal to or greater than 1/4 height of the
`
`stationary spiral lap. (As showed in Fig. 1)
`
`Response to Arguments
`
`1.
`
`Applicant's arguments filed 1/16/2019 have been fully considered but they are not persuasive.
`
`Starting on Page 6 of the argument filed on 1/16/2019, the Applicant argues that Akei does not
`
`teach or suggest a V-shaped lead valve. This is true. However, this argument is based on the
`
`amended Claim. This argument is moot in terms of the new ground of rejection.
`
`Conclusion
`
`2.
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to DEMING WAN whose telephone number is (571)272-1410. The examiner can
`
`normally be reached on Mon-Thur: 8 am to 6 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,
`
`Mark Laurenzi can be reached on 571-270-7878. The fax phone number for the organization where this
`
`application or proceeding is assigned is 571-273-8300.
`
`

`

`Application/Control Number: 15/120,871
`Art Unit: 3748
`
`Page 9
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`
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`
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`
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`
`DEMING . WAN
`
`Examiner
`
`Art Unit 3748
`
`/DEMING WAN/
`Examiner, Art Unit 3748
`
`4/11/2019
`
`