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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
`
`
`
`
`
`15/168,912
`
`05/31/2016
`
`Hironari AKASHI
`
`20759.0004USD1
`
`6168
`
`53148
`7590
`0mm”
`HAMRE, SCHUMANN,MUELLER&LARSONP.C. —
`45 South Seventh Street
`PLAKKOOTTAM, DOMINICK L
`Suite 2700
`MINNEAPOLIS, MN 55402- 1683
`
`PAPER NUMBER
`
`ART UNIT
`3746
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/10/2018
`
`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.
` 15/168,912 AKASHI ET AL.
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`3746DOMINICK L. PLAKKOOTTAM [SENS
`-- 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 6/19/2018.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|:l This action is non-final.
`2a)|Z| 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
`
`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)IZI Claim(s) 1 and 4-7is/are pending in the application.
`5a) Of the above claim(s) :1 is/are withdrawn from consideration.
`
`is/are allowed.
`6)I:I Claim(s)
`
`7)|Z| Claim(s)_1 and5- 7is/are rejected.
`8)|:| 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
`:/'/\W¢W.LISI>I‘.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 5/31/2016is/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.
`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)
`
`
`
`3) D Interview Summary (PTO-413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) I] InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20180703
`
`

`

`Application/Control Number: 15/168,912
`
`Page 2
`
`Art Unit: 3746
`
`DETAILED ACTION
`
`1.
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions.
`
`Continued Examination Under 37 CFR 1. 1 14
`
`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
`
`6/19/2018 has been entered.
`
`Claim Rejections - 35 USC § 103
`
`3.
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
`
`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.
`
`4.
`
`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
`
`obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
`
`1. Determining the scope and contents of the prior art.
`
`2. Ascertaining the differences between the prior art and the claims at issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`

`

`Application/Control Number: 15/168,912
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`Page 3
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`Art Unit: 3746
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`4. Considering objective evidence present in the application indicating
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`obviousness or nonobviousness.
`
`5.
`
`Claims 1 and 7 are rejected under pre-AIA 35 U.S.C. 102(b) as being
`
`anticipated by Cho (US PG Pub 2007/0025864) in view of Watanabe (US PG Pub
`
`2010/0047093) in further view of Okaichi et al. (herein Okaichi) (US PG Pub
`
`2006/0192171)
`
`Regarding Claim 1:
`
`ln Figures 1-4, Cho discloses a sealed compressor comprising: an electric component
`
`(drive unit, see paragraph [0017]) including a stator (12) and a rotor (13); a compression
`
`component (compression unit, see paragraph [0017]) actuated by the electric
`
`component (see paragraph [0019]); and a sealed container (hermetic container 10)
`
`accommodating the electric component and the compression component and storing
`
`lubricating oil (oil in oil sump 19) for lubricating the compression component (as seen in
`
`Figure 1 and paragraph [0022]); wherein the compression component includes a shaft
`
`(20) including a main shaft section (21) to which the rotor (13) is fastened (see Figure 1)
`
`and an eccentric shaft section (22), a cylinder block (14) accommodating a piston (15)
`
`reciprocatable according to rotation of the shaft (see paragraph [0027]), a main bearing
`
`unit
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`(portion of frame 11 depicted as 10c in Figure 1) mounted on the cylinder block
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`(14) to support the main shaft section (21), and a thrust ball bearing (thrust bearing 30,
`
`see Figure 2) disposed between a flange surface (flange surface located below
`
`eccentric shaft 22, henceforth referred to as FS) formed in the shaft and a thrust surface
`
`(surface of main bearing unit 10c in contact with lower race 32, henceforth referred to as
`
`

`

`Application/Control Number: 15/168,912
`
`Page 4
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`Art Unit: 3746
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`TS) formed in the main bearing unit (see Figure 2); the main shaft section (21) is
`
`provided with a first oil feeding passage (oil channel array 50, see paragraph [0033]) to
`
`transport the lubricating oil from a lower portion of the main shaft section to an upper
`
`portion of the main shaft section(see paragraphs [OO33]—[OO34]); the thrust ball bearing
`
`(30) includes a plurality of balls (33) held in a cage (portion carrying balls 33 as seen in
`
`Figure 2, henceforth referred to as C), an upper race (31) disposed such that one of its
`
`main surfaces is in contact with upper portions of the balls (as clearly seen in Figure 2);
`
`and a lower race (32) disposed such that one of its main surfaces is in contact with
`
`lower portions of the balls (as clearly seen in Figure 2); the main surface of the upper
`
`race and the main surface of the lower race face each other (as clearly seen in Figure
`
`2); at least one of the main surface of the upper race and the main surface of the lower
`
`race, the main surfaces facing each other, is provided with a raceway groove which is
`
`formed by an annular groove, and in which the balls are placed (as seen in Figure 2,
`
`both upper and lower races each have an annular raceway groove. More clearly
`
`depicted in Figure 5); and the thrust ball bearing is provided with a second oil feeding
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`passage (passageway formed by gap between the upper and lower races and between
`
`any two adjacent balls, henceforth referred to as P2) communicated with the first oil
`
`feeding passage (branch channel 54 of first oil feeding passage 50 feeds oil directly to
`
`thrust bearing and all passages formed within said thrust bearing, see Figure 2 and
`
`paragraph [0033]) and configured to feed the lubricating oil to the raceway groove (as
`
`seen in Figure 2, the gap between the cage, the upper and lower races and any two
`
`adjacent balls is fed with lubricating oil) and a discharge passage (aforementioned gap.
`
`

`

`Application/Control Number: 15/168,912
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`Page 5
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`Art Unit: 3746
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`Also see paragraph [0038] which states that the oil used to lubricate the thrust bearing
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`is capable of being returned to the oil sump indicating that the oil is discharged via the
`
`gap) through which the lubricating oil fed to the raceway groove is discharged to outside
`
`of the thrust ball bearing (as evident from Figure 2, the gap between the cage, the upper
`
`and lower races and any two adjacent balls is fed with lubricating oil wherein this oil is
`
`discharge through this gap to the exterior of the thrust bearing 30).
`
`Cho further discloses that the lower race (32) is disposed on a thrust surface defined by
`
`an inner bottom surface of a recess formed in a main surface of the main bearing unit
`
`(as seen in Figure 2, the lower race is clearly disposed on an inner bottom surface of a
`
`recess formed in the main bearing unit).
`
`However, Cho fails to disclose that the main surface of the lower race is disposed above
`
`the main surface of the main bearing unit.
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`Nevertheless, in Figure 3, Watanabe discloses a similar compressor with a lower race
`
`(168) that has a main surface that is disposed above a main surface (upper surface of
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`outer peripheral wall 182) of the main bearing unit (126) (see paragraph [0096]). The
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`lower race is disposed in this manner in order to prevent inclined contact between the
`
`lower race and the main bearing recess thrust surface (184) due to any vibration
`
`generated during transportation or operation (see paragraph [0097]). Additionally, this
`
`configuration reduces noise during operation since the cage (164) is prevented from
`
`contacting the main bearing unit (see paragraph [0097]).
`
`Hence, based on Watanabe’s teachings, it would have been obvious to one of ordinary
`
`skill in the art, at the time the invention was made, to reduce the height of Cho’s main
`
`

`

`Application/Control Number: 15/168,912
`
`Page 6
`
`Art Unit: 3746
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`bearing unit’s main surface, such that it was lower than the main surface of Cho’s lower
`
`race (as taught by Watanabe), since doing so would prevent inclined misalignment of
`
`Cho's lower race and would prevent contact between Cho’s cage and the main bearing
`
`unit, thereby reducing noise (see Watanabe’s paragraphs [0096]—[0097]).
`
`Cho as modified by Watanabe substantially discloses all the claimed limitations but fails
`
`to disclose that the thrust surface is provided with a discharge hole to discharge the
`
`lubricating oil such that the discharge hole vertically penetrates the main bearing unit
`
`through the thrust surface, wherein the discharge hole extends along an axial direction
`
`of the main shaft section.
`
`However, in Figure 1, Okaichi discloses a similar sealed compressor wherein a thrust
`
`surface of a main bearing unit (7) is provided with a discharge hole (7a) to discharge the
`
`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
`
`unit through the thrust surface (as clearly seen in Figure 1), wherein the discharge hole
`
`extends along an axial direction of a main shaft section (as seen in Figure 1).
`
`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 include a discharge hole (as
`
`taught by Okaichi) in Cho's thrust surface (TS) such that after lubricating Cho's thrust
`
`bearing (30), the lubricating oil could be directly guided via the discharge hole to Cho's
`
`motor and oil sump (19), thereby minimizing oil pooling at the bearing and oil wastage.
`
`Regarding Claim 7:
`
`In paragraph [0005] Cho discloses that the sealed compressor as disclosed in the
`
`

`

`Application/Control Number: 15/168,912
`
`Page 7
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`Art Unit: 3746
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`rejection of claim 1, is typically used in a refrigeration unit (air conditioner or
`
`refrigerator).
`
`6.
`
`Claim 5 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
`
`Cho (US PG Pub 2007/0025864) in view of Watanabe (US PG Pub 2010/0047093) in
`
`further view of Okaichi (US PG Pub 2006/0192171) and as evidenced by Kobayashi
`
`et al. (herein Kobayashi) (JP 2010-255556).
`
`Cho discloses the claimed invention except for the inner diameter of the cage being
`
`greater than the inner diameters of the upper and lower races.
`
`However, in Figure 2, Kobayashi discloses an example of thrust bearing in a similar
`
`Hermetic compressor, 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 smaller
`
`than the inner diameter of the lower race (136). Furthermore, a change of size is
`
`generally recognized as being within the level of ordinary skill in the art. In re Rose, 105
`
`USPQ 237 (CCPA 1955). Therefore, based on the evidence disclosed by Kobayashi
`
`and the cited case law, it would have been an obvious matter of choice to design Cho's
`
`cage to have an inner diameter that was greater than the inner diameters each of the
`
`upper and lower races and to also change the inner diameter of the upper race such
`
`that it was smaller than the inner diameter of the lower race, since such modifications
`
`would involve mere changes in the sizes of the components.
`
`7.
`
`Claim 6 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
`
`Cho (US PG Pub 2007/0025864) in View of Watanabe (US PG Pub 2010/0047093) in
`
`

`

`Application/Control Number: 15/168,912
`
`Page 8
`
`Art Unit: 3746
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`further view of Okaichi (US PG Pub 2006/0192171) in view of Akashi et al. (herein
`
`Akashi) (US Patent No. 7,832,994)
`
`Cho substantially discloses all the claimed limitations but is silent regarding whether
`
`Cho's motor is driven by an inverter unit.
`
`However, in Figure 1, Akashi discloses a similar sealed compressor with an inverter
`
`driven motor (104). This inverter is capable of driving the motor at a plurality of driving
`
`frequencies (i.e., at multiple speeds, since motor speed is directly proportional to driving
`
`frequency), including a driving frequency not greater than a power frequency (see
`
`claims 7-12 and column 9, lines 40-67).
`
`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 Cho’s motor
`
`at various different driving frequencies, thereby allowing Cho's motor to be driven at
`
`different speeds including a low speed at a driving frequency lower than a power supply
`
`frequency and thus advantageously reduce the power consumed by Cho’s compressor
`
`(see Akashi's column 9, lines 40-67).
`
`Response to Arguments
`
`8.
`
`Applicant's arguments filed 6/19/2018 have been fully considered but they are
`
`not persuasive. With respect to the rejection of claim 1, Applicant argues that Okaichi’s
`
`discharge hole (7a) is not intended to be used to flow excess fluid downwards from a
`
`recess defining a thrust surface.
`
`9.
`
`Firstly, the applicant appears to be incorporating features from Okaichi such as
`
`injecting oil upwards to a motor space (22) into the structure that is being modified (i.e.,
`
`

`

`Application/Control Number: 15/168,912
`
`Page 9
`
`Art Unit: 3746
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`Cho's bearing thrust surface), wherein Cho's motor is located below the bearing thrust
`
`surface and so the discharge from the added hole would flow downwards and not
`
`upwards. Secondly, the instant claim makes no mention of excess fluid being
`
`discharged downwards. The examiner has merely relied on the teachings of Okaichi to
`
`add a discharge hole to a bearing thrust surface such that the excess fluid is transferred
`
`towards a motor. The combination of Cho and Okaichi would comprise a discharge hole
`
`formed in a bearing thrust surface, such that oil would flow through the thrust surface's
`
`discharge hole towards the motor (Okaichi even discloses that oil flows towards the
`
`motor space 22, see paragraph [0010]). Since Cho's motor is located below the thrust
`
`surface, this vertically formed hole would allow oil to flow downwards towards the motor.
`
`In other words, the positioning of Okaichi’s thrust surface and motor, and the direction of
`
`flow of the oil, has no bearing on the proposed modification since Cho’s structure is not
`
`being rearranged and so oil will flow downwards towards Cho’s motor.
`
`10.
`
`In response to applicant's arguments against the references individually, one
`
`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
`
`USPQ 871 (CCPA 1981); In re Merck& Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir.
`
`1986).
`
`11.
`
`Due to these reasons, the applicant’s arguments are not persuasive.
`
`Conclusion
`
`12.
`
`All claims are drawn to the same invention claimed in the application prior to the
`
`entry of the submission under 37 CFR 1.114 and could have been finally rejected on the
`
`

`

`Application/Control Number: 15/168,912
`
`Page 10
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`Art Unit: 3746
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`grounds and art of record in the next Office action if they had been entered in the
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`application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE
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`FINAL even though it is a first action after the filing of a request for continued
`
`examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b).
`
`Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action.
`
`In the event a first reply is filed within
`
`TWO MONTHS of the mailing date of this final action and the advisory action is not
`
`mailed until after the end of the THREE-MONTH shortened statutory period, then the
`
`shortened statutory period will expire on the date the advisory action is mailed, and any
`
`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
`
`the advisory action. In no event, however, will the statutory period for reply expire later
`
`than SIX MONTHS from the mailing date of this final action.
`
`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 M-F 9:00 AM to
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`5:30 PM EST.
`
`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.
`
`

`

`Application/Control Number: 15/168,912
`
`Page 11
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`Art Unit: 3746
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`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
`
`