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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
`
`“’30’2018 —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
`
`11/30/2018
`
`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.
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`3748DEMING WAN $233
`
`-- 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 CFR 1.136(a).
`after SIX (6) 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)IXI Responsive to communication(s) filed on 10/23/2018.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)lX| This action is non-final.
`2a)I:| 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)|:I 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 EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`3) D Interview Summary (PT0_413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`—
`4) I:I Other'
`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`
`Paper No(s)/Mai| Date .
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20181031
`
`Disposition of Claims*
`5)|XI Claim(s) L6is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`s L6 is/are rejected.
`
`is/are objected to.
`
`) )
`
`_
`
`
`are subject to restriction and/or election requirement.
`9)|:l 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
`htt
`://www.usoto. ov/ atents/init events"
`h/index.‘s
`
`
`
`
`
`, or send an inquiry to PF"I-Ifeedback{<‘buspto.qov.
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`11)|Z| The drawing(s) filed on 8/23/2016 is/are: a)lZl 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)IZI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §119(a)-(d) or (f).
`Certified copies:
`
`b)I:I Some” c)I:I None of the:
`a)le All
`1.IZI Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`3le 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)
`
`
`
`

`

`Application/Control Number: 15/120,871
`
`Page 2
`
`Art Unit: 3748
`
`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.
`
`2.
`
`A request for continued examination under 37 CFR 1.114, including the fee set
`
`forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
`
`application is eligible for continued examination under 37 CFR 1.114, and the fee set
`
`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
`
`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on
`
`10/23/2018 has been entered.
`
`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
`
`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.
`
`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)(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, 2, 4 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated
`
`by the Applicant provided prior art US Patent Publication 2013/0078128 to Akei.
`
`ln Reference to Claim 1
`
`

`

`Application/Control Number: 15/120,871
`
`Page 3
`
`Art Unit: 3748
`
`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
`
`a main bearing (fig. 1, annotated by the examiner) for supporting the
`
`orbiting scroll,
`
`wherein the stationary scroll, the orbiting scroll, the self-rotation preventing
`
`member, and the main bearing are disposed in the low pressure space (as
`
`showed in Fig. 1),
`
`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)
`
`wherein the scroll compressor further comprises:
`
`a bearing-side engagement section (Fig. 1, annotated by the examiner)
`
`formed on the main bearing;
`
`

`

`Application/Control Number: 15/120,871
`
`Page 4
`
`Art Unit: 3748
`
`a scroll-side engagement section (Fig. 1, annotated by the examiner)
`
`formed on the stationary scroll; and
`
`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
`
`a boss section (Fig. 1, annotated by the examiner) formed on a top face of
`
`the stationary scroll, the boss section forming a discharge space (Fig. 1,
`
`annotated by the examiner) between the partition plate and the stationary scroll,
`
`wherein the discharge space (Fig. 1, annotated by the examiner)
`
`communicates with the 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,
`
`wherein a first discharge port (Fig. 2, 28) is formed at a center portion of
`
`the boss section and a bypass port (Fig. 2, 90/92) is provided near the first
`
`discharge port in the boss section, and
`
`

`

`Application/Control Number: 15/120,871
`
`Page 5
`
`Art Unit: 3748
`
`wherein the first discharge port (Fig. 2, 28) and the bypass port (fig. 2,
`
`90/92) allow the 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 discharge space.
`
`discharge
`boss
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`
`baa ringside
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`
`Fig. 1, aka; annotated by the examiner
`
`

`

`Application/Control Number: 15/120,871
`
`Page 6
`
`Art Unit: 3748
`
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`
`In Reference to Claim 2
`
`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).
`
`ln 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)
`
`In Reference to Claim 6
`
`

`

`Application/Control Number: 15/120,871
`
`Page 7
`
`Art Unit: 3748
`
`Akei discloses the bypass check valve (Fig. 2, 136) capable of blocking
`
`the bypass port, the bypass port being formed on the stationary scroll.
`
`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
`
`point out the inventor and effective filing dates of each claim that was not commonly
`
`owned as of the effective filing date of the later invention in order for the examiner to
`
`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
`
`prior art against the later invention.
`
`8.
`
`Claim 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Akei
`
`in view of US Patent 6,056,523 to Won et al (Won).
`
`ln Reference to Claim 3
`
`Akei discloses a scroll compressor.
`
`Akei does not teach the following but is taught by Won:
`
`the pillar-shaped member (Fig. 9, 22) is inserted into and fixed to the
`
`bearing-side engagement section (Fig. 9, annotated by the examiner), and is also
`
`

`

`Application/Control Number: 15/120,871
`
`Page 8
`
`Art Unit: 3748
`
`inserted into the scroll-side engagement section (Fig. 9, annotated by the
`
`examiner) in a slidable manner (Col. 8, Line 55-60), and 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.
`
`scroll side
`
`engagement:
`
`engagement
`
`end~surface of
`
`engagement
`section
`
`bearing side
`
`Hg. §, Won annotated by the
`examiner
`
`It would have been obvious to one with ordinary skill, in the art at the time of the
`
`invention, to modify the invention of Akei
`
`to integrate teachings from Won. Doing so,
`
`would result in the end surface of the engagement section being above the end of
`
`wraps of the fixed scroll.
`
`It would have been obvious to one having ordinary skill in the
`
`art at the time the invention was made to have the upper surface of the bearing house
`
`either higher or lower than the end of the wrap of the fixed scroll, since it has been held
`
`that rearranging parts of an invention involves only routine skill in the art.
`
`In Reference to Claim 5
`
`

`

`Application/Control Number: 15/120,871
`
`Page 9
`
`Art Unit: 3748
`
`Akei discloses a scroll compressor.
`
`Akei 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 first compressing 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.
`
`It would have been obvious to one with ordinary skill, in the art at the time of the
`
`invention, to modify the invention of Akei 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).
`
`Response to Arguments
`
`9.
`
`Applicant's arguments filed 10/23/2018 have been fully considered but they are
`
`not persuasive.
`
`Starting on Page 5, the Applicant argues that Akei does not teach “a lower end-
`
`face of an engagement section
`
`is located above a lap end-face of the
`
`stationary spiral lap in the axial direction" The Office respectively disagrees. As
`
`annotated in the Fig. 1 of Akei, there is a step between the engagement lower
`
`

`

`Application/Control Number: 15/120,871
`
`Page 10
`
`Art Unit: 3748
`
`end face and the spiral lower face, therefore, the lower end face of the
`
`engagement section is located above.
`
`Continue to Page 6, the applicant argues the 35 USC 102 rejection to Claim 4.
`
`This argument is based on the argument to Claim 1. Since Claim 1
`
`is rejected as
`
`explained, the argument to Claim 4 is moot.
`
`Starting on Page 7, the Applicant argues the 35 USC 103 rejection to Claims 3
`
`and 5. This argument is based on the argument to Claim 1. Since Claim 1
`
`is
`
`rejected as explained, the argument to Claim 3 and 5 are moot.
`
`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.
`
`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.
`
`

`

`Application/Control Number: 15/120,871
`
`Page 11
`
`Art Unit: 3748
`
`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
`
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`
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`
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`
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`
`/DEMING WAN/
`
`Examiner, Art Unit 3748
`11/27/2018
`
`