www.uspto.gov
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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°
`
`08/29/20”
`
`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
`
`08/29/2019
`
`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 8/16/2019.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a)D This action is FINAL.
`
`2b)
`
`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)
`
`1—4 and 7 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) 1—4 and 7 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 20190822
`
`

`

`Application/Control Number: 15/120,871
`Art Unit: 3748
`
`Page 2
`
`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.
`
`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 8/16/2019 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 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent
`
`Publication 2013/0078128 to Akei.
`
`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,
`
`

`

`Application/Control Number: 15/120,871
`Art Unit: 3748
`
`Page 3
`
`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; a
`
`scroll-side engagement section (Fig. 1, annotated by the examiner) formed on the stationary scroll; and
`
`a single pillar-shaped member (Fig. 1, 98, BRI is given to a single, a single means one or more that one,
`
`does not exclude the presents of other pillars), 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; the
`
`single pillar-shaped member being inserted into and fixed to the bearing-side engagement section, and
`
`also being inserted into the scroll-side engagement section in a slidable manner; 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,
`
`

`

`Application/Control Number: 15/120,871
`Art Unit: 3748
`
`Page 4
`
`90/92) is provided near the first discharge port in the boss section, and 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.
`
`
`
`
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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).
`
`In Reference to Claim 4
`
`Akei discloses the lower end-face of the engagement section between the pillar-shape member and the
`
`scroll-side engagement section is located higher than the lap end-face of the stationary spiral lap in the
`
`

`

`Application/Control Number: 15/120,871
`Art Unit: 3748
`
`Page 5
`
`axial direction by a height equal to or greater than 1/4 height of the stationary spiral lap. (As showed in
`
`Fig. 1).
`
`Claim Rejections - 35 USC § 103
`
`6.
`
`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.
`
`7.
`
`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.
`
`8.
`
`Claim 3 is 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).
`
`In Reference to Claim 3
`
`Akei discloses the single piller-shape member (BRI is given to a single, a single means one or more that
`
`one, does not exclude the presents of other pillarsj
`
`Akei does not teach the the pillar-shaped member is inserted into and fixed to the bearing-side
`
`engagement section, and is also inserted into the scroll-side engagement section in a slidable manner,
`
`and wherein an upper end-face of the bearing-side engagement section is located above the lap end-
`
`face of the stationary spiral lap in the axial direction.
`
`

`

`Application/Control Number: 15/120,871
`Art Unit: 3748
`
`Page 6
`
`Won teaches 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 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.
`
`9) the lap end-face of the stationary spiral lap in the axial direction.
`
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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 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 7
`
`

`

`Application/Control Number: 15/120,871
`Art Unit: 3748
`
`Akei discloses the scroll compressor.
`
`Page 7
`
`Akei does not teach the an inner wall of the stationary spiral lap is extended to a position near a tail end
`
`of the orbiting spiral lap 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
`
`Won teaches 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.
`
`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.
`
`Response to Arguments
`
`Applicant's arguments filed 8/16/2019 have been fully considered but they are not persuasive.
`
`The claim amendment as overcome the 35 USC 112(b) Claim rejection. The 35 USC 112(b) Claim
`
`rejection to Claim 1-4 has been withdrawn.
`
`Starting on Page 6, the Applicant argues that the Akei does not teach a single pillar member. Since the
`
`Applicant does not disclose the reason the reason of using a single pillar member in the specification,
`
`the Office gives BRI to the single pillar. The single pillar means one or more, it does not exclude the
`
`presents of other pillars. Therefore, Akei reference anticipates the claimed structure as amended.
`
`

`

`Application/Control Number: 15/120,871
`Art Unit: 3748
`
`Page 8
`
`Conclusion
`
`9.
`
`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.
`
`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
`
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`
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`
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`
`DEMING . WAN
`
`Examiner
`
`Art Unit 3748
`
`/DEMING WAN/
`Examiner, Art Unit 3748
`
`8/26/2019
`
`