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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
`
`15/168,912
`
`05/31/2016
`
`Hironari AKASHI
`
`20759.0004USD1
`
`6168
`
`53148
`
`759°
`
`05/29/20”
`
`HAMRE, SCHUMANN, MUELLER & LARSON RC.
`45 South Seventh Street
`Suite 2700
`
`MINNEAPOLIS, MN 55402-1683
`
`PLAKKOOTTAM' DOMINICKL
`
`ART UNIT
`3746
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/29/2019
`
`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.
`15/168,912
`Examiner
`DOMINICK L PLAKKOOTTAM
`
`Applicant(s)
`AKASHI et al.
`Art Unit
`3746
`
`AIA (FITF) Status
`No
`
`- 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 1/29/2019.
`[: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)
`
`1 and 4—7 is/are pending in the application.
`
`5a) Of the above claim(s) fl is/are withdrawn from consideration.
`
`E] Claim(s)
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`is/are allowed.
`
`Claim(s) 1 and 5—7 is/are rejected.
`
`E] Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
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`are subject to restriction and/or election requirement
`[:1 Claim(s)
`9
`* 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
`
`http://www.uspto.gov/patents/init events/pph/index.'sp 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 5/31/16 is/are: a). accepted or b)D 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)|:] Some**
`
`c)C] None of the:
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`1.. Certified copies of the priority documents have been received.
`
`21:] Certified copies of the priority documents have been received in Application No.
`
`3D 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) C] 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 20190523
`
`

`

`Application/Control Number: 15/168,912
`Art Unit: 3746
`
`Page 2
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`DETAILED ACTION
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`1.
`
`The present application is being examined under the pre-AIA first to invent
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`provisions.
`
`Claim Rejections - 35 USC § 103
`
`2.
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
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`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.
`
`3.
`
`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
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`obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
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`1. Determining the scope and contents of the prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating
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`obviousness or nonobviousness.
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`4.
`
`Claims 1, 5 and 7 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being
`
`unpatentable over Kobayashi et al. (herein Kobayashi) (JP 2010-255556, English
`
`translation previously appended) in view of Cho (US PG Pub 2007/0025864) in
`
`further view of Okaichi et al. (herein Okaichi) (US PG Pub 2006/0192171)
`
`Regarding Claim 1:
`
`In Figures 1-4, Kobayashi discloses a sealed compressor (100) comprising: an electric
`
`

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`Application/Control Number: 15/168,912
`Art Unit: 3746
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`Page 3
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`component (motor 105) including a stator (denoted as 105) and a rotor (104); a
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`compression component (compression element 106) actuated by the electric
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`component (see paragraph [0057]) and a sealed container (well-closed container 101)
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`accommodating the electric component and the compression component and storing
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`lubricating oil (oil 102) for lubricating the compression component (as seen in Figure 1
`
`and paragraph [0060]); wherein the compression component includes a shaft (110)
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`including a main shaft section (111) to which the rotor (104) is fastened (see Figure 1)
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`and an eccentric shaft section (112), a cylinder block (114) accommodating a piston
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`(126) reciprocatable according to rotation of the shaft (see paragraph [0057]), a main
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`bearing unit (120) mounted on the cylinder block (formed as lower portion of cylinder
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`block) to support the main shaft section (see Figure 1), and a thrust ball bearing (thrust
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`bearing 132, see Figure 2) disposed between a flange surface (flange surface located
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`below eccentric shaft 112, henceforth referred to as FS) formed in the shaft and a thrust
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`surface (130) formed in the main bearing unit (see Figure 2), and a bearing extending
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`section (144) of the main bearing unit (120) that extends vertically in an inner peripheral
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`portion of the thrust surface and protrudes upward from the thrust surface (see Figure
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`2); the main shaft section (111) is provided with a first oil feeding passage (150a-c) to
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`transport the lubricating oil from a lower portion of the main shaft section to an upper
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`portion of the main shaft section(see paragraphs [0052]-[0053]); the thrust ball bearing
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`(132) includes a plurality of balls (134) held in a cage (133), an upper race (135)
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`disposed such that one of its main surfaces is in contact with upper portions of the balls
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`(as clearly seen in Figure 2); and a lower race (136) disposed such that one of its main
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`surfaces is in contact with lower portions of the balls (as clearly seen in Figure 2); the
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`

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`Application/Control Number: 15/168,912
`Art Unit: 3746
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`Page 4
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`main surface of the upper race that is in contact with the upper portions of the balls and
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`the main surface of the lower race that is in contact with the lower portions of the balls
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`face each other (as clearly seen in Figure 2); the lower race (136) is disposed on the
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`thrust surface (130, via support 162) defined by an inner bottom surface of a recess
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`formed in a main surface (upper surface of main bearing unit 120 seen on the left side
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`of Figure 2) of the main bearing unit (as seen in Figure 2, the lower race is clearly
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`disposed on an inner bottom surface of a recess formed in the main bearing unit), and
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`the main surface of the lower race that is in contact with the lower portions of the balls is
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`disposed above the main surface of the main bearing unit (as seen clearly in Figure 2);
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`and the thrust ball bearing (130) is provided with a second oil feeding passage
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`(passageway formed by gap between the upper and lower races and between any two
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`adjacent balls, henceforth referred to as P2) communicated with the first oil feeding
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`passage (via 150c, 152 and 146) and configured to feed the lubricating oil to the races
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`(as seen in Figure 2, the gap between the cage, the upper and lower races and any two
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`adjacent balls is fed with lubricating oil) and a discharge passage (aforementioned gap.
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`Also see paragraph [0077] which states that the oil used to lubricate the thrust bearing
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`is capable of being returned to the oil sump via discharge path 168 indicating that the
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`oil is discharged via the gap) through which the lubricating oil fed to races is discharged
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`to outside of the thrust ball bearing (as evident from Figure 2, the gap between the
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`cage, the upper and lower races and any two adjacent balls is fed with lubricating oil
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`wherein this oil is discharge through this gap to the exterior of the thrust bearing and
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`into discharge path 168); a clearance (146) is provided between the main surface of the
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`upper race that is in contact with the balls and an upper end surface of the bearing
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`

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`Application/Control Number: 15/168,912
`Art Unit: 3746
`
`Page 5
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`extending section (144) such that the clearance provides a channel through which the
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`second oil feeding passage is in fluid communication with the first oil feeding passage
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`(as evident from Figures 1 and 2).
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`Kobayashi fails to disclose that at least one of the main surfaces of the upper race and
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`the main surfaces of the lower race, the main surfaces facing each other, is provided
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`with a raceway groove which is formed by an annular groove, and in which the balls are
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`placed.
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`However, in Figures 1-5, Cho discloses a similar compressor wherein a raceway groove
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`is formed by an annular groove in which balls are place (see Figure 5).
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`Hence, based on Cho’s teachings, it would have been obvious to one of ordinary skill in
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`the art, before the invention was made, to include an annular raceway groove in one or
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`both of the main surfaces of Kobayashi’s upper and lower races (as shown by Cho in
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`Figure 5), since doing so would ensure smoother movement of the balls within the races
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`and less friction between the balls and the races.
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`Kobayashi further discloses a discharge hole (168) that vertically penetrates the main
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`bearing unit, wherein the discharge hole extends along an axial direction of the main
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`shaft section (see paragraph [0077]).
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`Kobayashi fails to disclose that the discharge hole (168) penetrates the thrust surface.
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`However, in Figure 1, Okaichi discloses a similar sealed compressor wherein a thrust
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`surface of a main bearing unit (7) is provided with a discharge hole (7a) to discharge the
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`lubricating oil (oil discharged to lower space 22 of motor via discharge hole 7a, see
`
`paragraph [0010]) such that the discharge hole vertically penetrates the main bearing
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`unit through the thrust surface (as clearly seen in Figure 1), wherein the discharge hole
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`

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`Application/Control Number: 15/168,912
`Art Unit: 3746
`
`Page 6
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`extends along an axial direction of a main shaft section (as seen in Figure 1).
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`Hence, based on Okaichi's teachings, it would have been obvious to one of ordinary
`
`skill in the art, at the time the invention was made, to rearrange (emphasis added)
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`Kobayashi’s discharge hole (168, in the manner taught by Okaichi) to penetrate
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`Kobayashi's thrust surface (TS) such that after lubricating Kobayashi's thrust bearing,
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`the lubricating oil could be directly guided via the rearranged discharge hole to
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`Kobayashi's motor and oil sump (as was originally intended for Kobayashi’s discharge
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`hole 168, see paragraph [0077]), thereby minimizing oil pooling at Kobayashi’s thrust
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`bearing which could lead to some bearing slippage.
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`It should be further noted that during rearrangement of the discharge hole to the thrust
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`surface, said discharge hole would necessarily have to be located at a portion of the
`
`thrust surface that was not covered by the lower race (136) or support structure (162)
`
`since if the discharge hole was directly below these elements, oil would be blocked from
`
`flowing into said discharge hole. In other words, during rearrangement, the discharge
`
`hole would have to be placed in a position such that the discharge hole would have an
`
`upper end located outwards to a portion of the thrust surface at which the lower race is
`
`placed, in order to allow oil to be discharged without blockage.
`
`Regarding Claim 5:
`
`Kobayashi discloses the thrust bearing, wherein the inner diameter of a cage (133) is
`
`larger than the respective inner diameters of each of the upper and lower races (135
`
`and 136). Kobayashi further discloses that the inner diameter of the upper race (135) is
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`smaller than the inner diameter of the lower race (136).
`
`Regarding Claim 7:
`
`

`

`Application/Control Number: 15/168,912
`Art Unit: 3746
`
`Page 7
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`In paragraph [0001] Kobayashi discloses that the sealed compressor as disclosed in the
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`rejection of claim 1, is typically used in a refrigeration unit (freezing refrigerator).
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`5.
`
`Claim 6 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
`
`Kobayashi et al. (herein Kobayashi) (JP 2010-255556, English translation
`
`previously appended) in view of Cho (US PG Pub 2007/0025864) in further view of
`
`Okaichi et al. (herein Okaichi) (US PG Pub 2006/0192171) in further view of Akashi
`
`et al. (herein Akashi) (US Patent No. 7,832,994)
`
`Kobayashi as modified by Cho and Okaichi substantially discloses all the claimed
`
`limitations but is silent regarding whether Kobayashi's motor is driven by an inverter
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`unit.
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`However, in Figure 1, Akashi discloses a similar sealed compressor with an inverter
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`driven motor (104). This inverter is capable of driving the motor at a plurality of driving
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`frequencies (i.e., at multiple speeds, since motor speed is directly proportional to driving
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`frequency), including a driving frequency not greater than a power frequency (see
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`claims 7-12 and column 9, lines 40-67).
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`Hence based on Akashi’s teachings, it would have been obvious to one of ordinary skill
`
`in the art, at the time the invention was made, to utilize an inverter to drive Kobayashi’s
`
`motor at various different driving frequencies, thereby allowing Kobayashi's motor to be
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`driven at different speeds including a low speed at a driving frequency lower than a
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`power supply frequency and thus advantageously reduce the power consumed by
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`Kobayashi’s compressor (see Akashi's column 9, lines 40-67).
`
`

`

`Application/Control Number: 15/168,912
`Art Unit: 3746
`
`Page 8
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`Response to Arguments
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`6.
`
`Applicant's arguments filed 1/29/2019 have been fully considered but they are
`
`not persuasive.
`
`7.
`
`With respect to the rejection of claim 1, Applicant argues that Okaichi’s discharge
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`hole (7a) is utilized to inject oil upwards and so does not teach using said discharge
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`hole to flow oil downwards as claimed.
`
`8.
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`However, this argument is not persuasive since Okaichi’s teachings have been
`
`used to merely rearrange (emphasis added) the location of Kobayashi’s discharge hole
`
`(168) to be located such that it penetrates Kobayashi’s thrust surface. In other words,
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`Okaichi’s disclosure has been utilized to teach that a thrust surface may employ a
`
`discharge hole for discharging oil wherein said discharge hole vertically penetrates the
`
`thrust surface. In no way has the examiner utilized Okaichi’s teachings to dictate the
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`direction of flow of the oil. The direction of flow of the oil is still dependent on
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`Kobayashi’s teachings which clearly disclose a downward flow of oil towards the motor
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`(see Kobayashi’s paragraph [0077]). Furthermore, Kobayashi’s thrust surface is clearly
`
`located below the bearing races and so any hole added to said thrust surface would
`
`only permit downward flow of oil. Hence the direction in which Okaichi’s oil flows
`
`through the discharge hole is irrelevant to the proposed combination of Kobayashi with
`
`Okaichi.
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`9.
`
`Applicant further argues that there is no reason to assume that one of skill in the
`
`art would be led to locate a discharge hole in the position recited in claim 1. However,
`
`as explained in the rejection of claim 1 above, during rearrangement of the discharge
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`hole to the thrust surface (as taught by Okaichi), said discharge hole would necessarily
`
`

`

`Application/Control Number: 15/168,912
`Art Unit: 3746
`
`Page 9
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`have to be located at a portion of the thrust surface that was not covered by the lower
`
`race (136) or support structure (162) since if the discharge hole was directly below
`
`these elements, oil would be blocked from flowing into said discharge hole. In other
`
`words, during rearrangement, the discharge hole would have to be placed in a position
`
`such that the discharge hole would have an upper end located outwards to a portion of
`
`the thrust surface at which the lower race is placed, in order to allow oil to be
`
`discharged without blockage. Furthermore, Kobayashi already discloses that the
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`discharge hole (168) is originally located radially outwards from the lower race.
`
`10.
`
`In response to applicant's arguments against the references individually, one
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`cannot show nonobviousness by attacking references individually where the rejections
`
`are based on combinations of references. See In re Keller, 642 F.2d 413, 208
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`USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir.
`
`1986).
`
`11.
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`Due to these reasons, the applicant’s arguments are not persuasive.
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`Conclusion
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`12.
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
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`policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action.
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`In the event a first reply is filed within
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`TWO MONTHS of the mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTH shortened statutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
`
`

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`Application/Control Number: 15/168,912
`Art Unit: 3746
`
`Page 10
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`the advisory action.
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`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the mailing date of this final action.
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`13.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to DOMINICK L PLAKKOOTTAM whose telephone
`
`number is (571 )270-7571. The examiner can normally be reached on Monday - Friday
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`12 pm -8 pm ET.
`
`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
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`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.
`
`/DOMINICK L PLAKKOOTTAM/
`
`Primary Examiner, Art Unit 3746
`
`