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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, 871
`
`08/23/2016
`
`Sadayuki YAMADA
`
`20296.0067USWO
`
`1439
`
`01/23/2018 —HAMRE, SCHUMANN,MUELLER&LARSONP.C. m
`7590
`53148
`45 South Seventh Street
`WAN, DEMING
`Suite 2700
`MINNEAPOLIS, MN 55402- 1683
`
`PAPER NUMBER
`
`ART UNIT
`3748
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`01/23/2018
`
`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.
` 15/120,871 YAMADA ET AL.
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`DEMING WAN $2213 3748
`-- 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 8/23/2016.
`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
`
`; 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) L6is/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)_1-6is/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 8/23/2016is/are: a)lX| 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.IXI 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 11/3/178/23/16.
`
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20180111
`
`

`

`Application/Control Number: 15/120,871
`
`Page 2
`
`Art Unit: 3748
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`DETAILED ACTION
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`CLAIM INTERPRETA TION
`
`2.
`
`Claim 1 has been interpreted under 35 U.S.C. 112, sixth paragraph, because it
`
`uses a non-structural term “member” coupled with functional language “preventing the
`
`orbiting scroll from rotating” without reciting sufficient structure to achieve the function.
`
`Furthermore, the non-structural term is not preceded by a structural modifier. The
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`modifier “self-rotation preventing” merely describes the function of the member, not the
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`structure. Further, the term "self-rotation preventing member" is not recognized as the
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`name of the structure within the art..
`
`Since this claim limitation invokes 35 U.S.C. 112, sixth paragraph, claim 1
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`interpreted to cover the corresponding structure described in the specification that
`
`achieves the claimed function, and equivalents thereof.
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`A review of the specification shows that the following appears to be the
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`corresponding structure described in the specification for the 35 U.S.C. 112, sixth
`
`paragraph limitation:
`
`Self-rotation preventing member disclosed as Oldham's ring and listed as item
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`90.
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`If applicant wishes to provide further explanation or dispute the examiner’s
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`interpretation of the corresponding structure, applicant must identify the corresponding
`
`

`

`Application/Control Number: 15/120,871
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`Page 3
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`Art Unit: 3748
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`structure with reference to the specification by page and line number, and to the
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`drawing, if any, by reference characters in response to this Office action.
`
`If applicant does not wish to have the claim limitation treated under 35 U.S.C.
`
`112, sixth paragraph, applicant may amend the claim so that it will clearly not invoke 35
`
`U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites
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`sufficient structure, material, or acts for performing the claimed function to preclude
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`application of 35 U.S.C. 112, sixth paragraph.
`
`For more information, see Supplementary Examination Guidelines for
`
`Determining Compliance with 35 U. S. C. § 112 and for Treatment of Related Issues in
`
`Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
`
`Claim Rejections - 35 USC § 102
`
`3.
`
`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.
`
`4.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
`
`form the basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless —
`
`(a)(2) the claimed invention was described in a patent issued under section 151, or in an
`application for patent published or deemed published under section 122(b), in which the
`patent or application, as the case may be, names another inventor and was effectively filed
`before the effective filing date of the claimed invention.
`
`

`

`Application/Control Number: 15/120,871
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`Page 4
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`Art Unit: 3748
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`5.
`
`Claim 1-3 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US
`
`Patent 6,056,523 to Won et al (Won).
`
`In Reference to Claim 1
`
`Won discloses a scroll compressor comprising:
`
`a partition plate (Fig. 1, 66) for partitioning a hermetic container into a high
`
`pressure space and a low pressure space;
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`a stationary scroll (Fig. 1, 20) abutting on the partition plate and including
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`a stationary spiral lap;
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`an orbiting scroll (Fig. 1, 14) including an orbiting spiral lap (Fig. 1, 14a)
`
`engaged with the stationary spiral lap of the stationary scroll, and forming a
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`compressing chamber between the stationary spiral lap and the orbiting spiral
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`lap;
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`a self-rotation preventing member (Fig. 1, 16)for preventing the orbiting
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`scroll from rotating; and
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`a main bearing (Fig. 1, 4) for supporting the orbiting scroll,
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`wherein the stationary scroll (Fig. 1, 20), the orbiting scroll (Fig. 1, 4), the
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`self-rotation preventing member (Fig, 1, 16), and the main bearing (Fig. 1, 4) are
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`disposed in the low pressure space,
`
`wherein the stationary scroll (Fig. 1, 20) is movable (Col. 8, Line 55-60)
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`between the partition plate and the main bearing in an axial direction,
`
`wherein the scroll compressor further comprises:
`
`

`

`Application/Control Number: 15/120,871
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`Page 5
`
`Art Unit: 3748
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`a bearing-side engagement section (Fig. 9, annotated by the examiner)
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`formed on the main bearing;
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`a scroll-side engagement section (Fig. 9, annotated by the examiner)
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`formed on the stationary scroll; and
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`a pillar-shaped member (Fig. 9, 22), of which lower section is inserted into
`
`the bearing-side engagement section (Fig. 9, annotated by the examiner), and of
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`which upper section is inserted into the scroll-side engagement section, and
`
`wherein a lower end-face of an engagement section (Fig. 9, annotated by
`
`the examiner) between the pillar-shaped member and the scroll-side
`
`engagement section is located above (As showed in Fig. 9) a lap end-face of the
`
`stationary spiral lap in the axial direction.
`
`swell side
`
`engagement
`
`engagement
`
`end-surface ef
`
`engagement
`section
`
`bearing Side
`
`Fig. 9, Won annotated by the
`examiner
`
`ln Reference to Claim 2
`
`

`

`Application/Control Number: 15/120,871
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`Page 6
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`Art Unit: 3748
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`Won discloses an upper end-face (Fig. 9, annotated by the examiner) of
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`the engagement section between the pillar-shaped member and the scroll-side
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`engagement section is located below a lap bottom face of the stationary spiral
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`lap in the axial direction.
`
`In Reference to Claim 3
`
`Won discloses the pillar-shaped member (Fig. 9, 22) is inserted into and
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`fixed to the bearing-side engagement section (Fig. 9, annotated by the
`
`examiner), and is also inserted into the scroll-side engagement section (Fig. 9,
`
`annotated by the examiner) in a slidable manner (Col. 8, Line 55-60), and
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`wherein an upper end-face of the bearing-side engagement section is located
`
`above (As showed in Fig. 8) the lap end-face of the stationary spiral lap in the
`
`axial direction.
`
`In Reference to Claim 5
`
`Won discloses 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
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`differentiating a trapping capacity of a first compressing chamber from a trapping
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`capacity of a second compressing chamber, where the first compressing
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`chamber is formed by the inner wall of the stationary spiral lap and an outer 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
`
`Page 7
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`Art Unit: 3748
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`Claim Rejections - 35 USC § 103
`
`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.
`
`This application currently names joint inventors. In considering patentability of the
`
`claims the examiner presumes that the subject matter of the various claims was
`
`commonly owned as of the effective filing date of the claimed invention(s) absent any
`
`evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
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`point out the inventor and effective filing dates of each claim that was not commonly
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`owned as of the effective filing date of the later invention in order for the examiner to
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`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
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`prior art against the later invention.
`
`8.
`
`Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Won in view
`
`of US Patent 2006/0233655 to Clendenin et al (Clendenin).
`
`ln Reference to Claim 4
`
`Won discloses the lower end-face of the engagement section (Fig. 9, annotated by the
`
`examiner) between the pillar-shaped member and the scroll-side engagement section
`
`Won does not test the following but is taught by Clendenin:
`
`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 (As showed in Fig. 12) of
`
`the stationary spiral lap.
`
`

`

`Application/Control Number: 15/120,871
`
`Page 8
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`Art Unit: 3748
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`At the time claimed invention was made it would have been obvious to an artisan
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`of ordinary skill to combine that taught by Won with that taught by Clendenin, since this
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`would enable the practitioner of Won to practice the advantage of having the height of
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`the contacting surface above 1/4 of the height of the fixed scroll wrap.
`
`Since an express suggestion to substitute one equivalent component or process
`
`for another is not necessary in order to render such substitution obvious see MPEP
`
`§2144.06.
`
`9.
`
`Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Won in view
`
`of US Patent Publication 2010/030659 to Stover et al (Stover).
`
`ln Reference to Claim 6
`
`Won discloses bypass port (Fig. 27, 106)
`
`Won does not teach the following but is taught by Stover:
`
`a bypass check valve (Fig. 11, 506)
`
`At the time claimed invention was made it would have been obvious to an artisan
`
`of ordinary skill to combine that taught by Won with that taught by Stover, since this
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`would enable the practitioner of Won to practice the advantage of selective
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`communication with the bypass passage.
`
`Conclusion
`
`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 Monday to Friday, 9:00 AM ~ 5:00 PM
`
`EST.
`
`

`

`Application/Control Number: 15/120,871
`
`Page 9
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`Art Unit: 3748
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`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 5712707878. 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 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.
`
`/DEMING WAN/
`
`Examiner, Art Unit 3748
`1/11/2018
`
`

`

`Application/Control Number: 15/120,871
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`Page 10
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`Art Unit: 3748
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