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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
`
`15/538,118
`
`06/20/2017
`
`HIROAKI NAKAI
`
`20296.0100USWO
`
`5840
`
`53148
`
`759°
`
`Own/2°18
`
`HAMRE, SCHUMANN, MUELLER & LARSON RC.
`45 South Seventh Street
`Suite 2700
`
`MINNEAPOLIS, MN 55402-1683
`
`ZERPHEY' CHRISTOPHER R
`
`ART UNIT
`3744
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/17/2018
`
`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
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`following e—mail address(es):
`PTOMail@hsml.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Off/09 A0170” Summary
`
`Application No.
`15/538,118
`Examiner
`CHRISTOPHER R ZERPHEY
`
`Applicant(s)
`NAKAI et al.
`Art Unit
`3744
`
`AIA 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
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`1). Responsive to communication(s) filed on 6/20/2017.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`This action is non-final.
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`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)
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`Claim(s) fl is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
`
`Claim(s) fl is/are rejected.
`
`[:1 Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
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`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabte. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`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 See Continuation Sheet is/are: a). accepted or b)l: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). 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”
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`C)D None of the:
`
`1..
`
`Certified copies of the priority documents have been received.
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`2.[:]
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`Certified copies of the priority documents have been received in Application No.
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`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)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`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-
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`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20180911
`
`

`

`Continuation Sheet (PTOL-326)
`
`Application No. 15/538,118
`
`Continuation of Application Papers 11): 6/20/2017
`
`

`

`Application/Control Number: 15/538,118
`Art Unit: 3744
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`Page 2
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`1.
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`The present application, filed on or after March 16, 2013, is being examined under the first
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`Notice of Pre-AIA or AIA Status
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`inventor to file provisions of the AIA.
`
`Specification
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`2.
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`The disclosure is objected to because of the following informalities: [0004] recites ”tow-stage"
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`rather than —two-stage--.
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`Appropriate correction is required.
`
`3.
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`The following is a quotation of 35 U.S.C.112(f):
`
`Claim Interpretation
`
`(f) Element in Claim fora Combination. —An element in a claimfora combination maybe expressed as
`a means or step for performing a specified function without the recital of structure, material, or a cts
`in s upport thereof, and such claim shall be construed to cover the correspondingstructure, material,
`or a cts described i n the specification and equivalents thereof.
`
`The following is a quotation of pre-AIA35 U.S.C. 112, sixth paragraph:
`
`An element in a claimfora combination maybe expressed as a means orstepfor performing a
`specified function withoutthe re citalofstructure, material, oracts in support thereof, and such claim
`5 hall be construed to coverthe corresponding structure, material, or acts described i n the
`s pecification and equivalents thereof.
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`4.
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`The claims in this application are given their broadest reasonable interpretation using the plain
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`meaning ofthe claim language in light ofthe specification as it would be understood by one of ordinary
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`skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as
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`a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35
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`U.S.C.112, sixth paragraph, is invoked.
`
`As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong
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`test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C.112, sixth paragraph:
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`

`

`Application/Control Number: 15/538,118
`Art Unit: 3744
`
`Page 3
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`(A)
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`the claim limitation uses the term ”means” or ”step" or a term used as a substitute for ”mea ns”
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`that is a generic placeholder (also calleda nonce term or a non-structural term having no
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`specific structural meaning) for performing the claimed function;
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`(B)
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`the term ”means” or ”step" or the generic placeholder is modified by functional language,
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`typically, but not always linked by the transition word ”for” (e.g., ”means for”) or another linking
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`word or phrase, such as ”configured to” or ”so that”; and
`
`(C)
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`the term ”means” or ”step" or the generic placeholder is not modified by sufficient structure,
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`material, or acts for performing the claimed function.
`
`Use of the word ”mea ns” (or ”step”) in a claim with functional language createsa rebutta ble
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`presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35
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`U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C.
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`112(f) or pre-AIA35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient
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`structure, material, or acts to entirely perform the recited function.
`
`Absence of the word ”means” (or ”step”) in a claim createsa rebutta ble presumption that the
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`claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C.112, sixth
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`paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C.112(f) or pre-
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`AIA 35 U.S.C.112, sixth paragraph, is rebutted when the claim limitation recites function without
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`reciting sufficient structure, material or acts to entirely perform the recited function.
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`Claim limitations in this application that use the word ”means” (or ”step”) are being interpreted
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`under 35 U.S.C.112(f) or pre-AIA 35 U.S.C.112, sixth paragraph, except asotherwise indicated in an
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`Office action. Conversely, claim limitations in this application that do not use the word ”means” (or
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`”step”) are not being interpreted under 35 U.S.C.112(f) or pre-AIA 35 U.S.C.112, sixth paragraph,
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`except as otherwise indicated in an Office action.
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`

`

`Application/Control Number: 15/538,118
`Art Unit: 3744
`
`Page4
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`5.
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`This application includes one or more claim limitations that do not use the word
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`”mea ns,” but are nonetheless being interpreted under 35 U.S.C.112(f) or pre-AIA 35 U.S.C. 112, sixth
`
`paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional
`
`language without reciting sufficient structure to perform the recited function and the generic
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`placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
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`6.
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`”Switch element” of claim 1 which combines the generic/nonce term ”element" with
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`the function of switching and selectively communicatingthe second compression chamber. A return to
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`the specification shows that the switch element is a valve.
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`7.
`
`Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C.112(f) or
`
`pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding
`
`structure described in the specification as performing the claimed function, and equivalents thereof.
`
`|fapplicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or
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`pre-AIA 35 U.S.C.112, sixth paragraph, applicant may:
`
`(1) amend the claim limitation(s) to avoid it/them
`
`being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C.112, sixth paragraph (e.g., by reciting
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`sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim
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`limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being
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`interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C.112, sixth paragraph.
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`Claim Objections
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`8.
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`Claim 6 is objected to because of the following informalities: claim 6 does not appearto be
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`gra mmatically correct. Appropriate correction is required.
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`Claim Rejections - 35 USC § 102
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`9.
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`In the event the determination ofthe status of the application as subject to A|A35 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
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`

`

`Application/Control Number: 15/538,118
`Art Unit: 3744
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`Page 5
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`basis for the rejection will not be considered a new ground of rejection ifthe prior art relied upon, and
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`the rationale supporting the rejection, would be the same under either status.
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`10.
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`The following is a quotation of the appropriate paragraphs of 35 U.S. C. 102 that form the basis
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`for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(a )(1) the claimed invention was patented, described in a printed publication, or in pu blic use, on sale
`or otherwise a vailable to the public before the effective filing date ofthe claimed invention.
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`11.
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`Claim(s) 1, 2, and 4-7 is/a re rejected under 35 U.S.C.102(a)(1) as being anticipated by Tanabe et
`
`aI (JP 05-149634).
`
`a.
`
`Regarding claims 1 and 7, Ta na be discloses (refer to figure 1 unless otherwise noted) a
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`refrigeration cycle device comprising:
`
`b.
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`a compressor (1) including a first compression chamber (3) and a second compression
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`chamber (4) that are independent;
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`c.
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`d.
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`e.
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`f.
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`a condenser (10);
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`a decompressor (11 or 14);
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`an evaporator (15);
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`an injection path (21) configured to introduce intermediate pressure refrigerant
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`decompressed by the decompressor (11 or 14);
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`g.
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`a first suction path (connecting to port 6) configured to introduce low pressure
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`refrigerant form the evaporator (15) to the first compression chamber (3);
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`h.
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`a second suction path (22 and 20) configured to introduce low pressure refrigerant from
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`the evaporator (15) to the second compression chamber (4);
`
`

`

`Application/Control Number: 15/538,118
`Art Unit: 3744
`
`Page 6
`
`i.
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`a communication passage (17) configured to introduce intermediate pressure
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`refrigerant compressed in the first compression chamber (3) to the second compression
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`chamber (4); and
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`j.
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`a switch element (18 and 23) configured to selectively make the second compression
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`chamber communicate with the eva porator or make the second compression chamber
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`communicate with the communication passage (17), wherein
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`k.
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`the injection path (21) introduces the intermediate pressure refrigerant tothe second
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`compression chamber (4; [0035]),
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`l.
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`the refrigerant is compressed in the first compression chamber (3) and the second
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`compression chamber (4) independently (in this context the term independently is understood
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`to mean that the chambers are arranged to be in parallel) when the second compression
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`chamber (4) is communicated with the evaporator (15), and
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`m.
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`refrigerant compressed in the first compression chamber (3) is further compressed in
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`the second compression chamber when the second compression chamber is communicated
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`with the communication passage (the compressor chambers are also arranged to be in series).
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`n.
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`Regarding claim 2, Tanabe discloses the second suction path (22 and 20) has a
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`connection part connection with the injection path (21) on a downstream side ofthe switch
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`element (18).
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`0.
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`Regarding claim 4, Ta na be discloses the compressor is provided around a shaft and has
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`two eccentric shafts each performing eccentric rotation, and phases of the two eccentric shafts
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`are deviated by 180 degrees ([0043]).
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`p.
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`Regarding claim 5, Tanabe discloses the suction path has an upward gradient (generally
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`vertical sections are shown in figure 1) between the connection pa rt and the second
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`compression cha mber).
`
`

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`Application/Control Number: 15/538,118
`Art Unit: 3744
`
`Page 7
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`q.
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`Regarding claim 6, Ta na be discloses a n inverter operates to arbitra rily change a rotation
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`number of the compressor ([0044]; additionally the action of changing speed is considered to be
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`a functional limitation).
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`Claim Rejections - 35 USC § 103
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`12.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections
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`set forth in this Office action:
`
`A patentfora claimed invention maynot be obtained, notwithstanding thatthe claimed invention is
`not identically disclosed as set forth in section 102, ifthe differences between the claimed inve ntion
`a nd the prior a rt are such that the claimed invention as a whole would have been obvious before the
`effective filingdate ofthe claimed invention to a person having ordinary skill i n the art to which the
`claimed invention pertains. Pa tentabilityshall not be negated bythe manner in which the invention
`was made.
`
`13.
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`The factual inquiries set forth in Graham v. John Deere C0,, 383 U.S. 1, 148 USPQ 459 (1966),
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`that are applied for establishing a background for determining obviousness under 35 U.S.C.103 are
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`summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`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 obviousness or
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`nonobviousness.
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`14.
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`Claims 3 and 5 is/a re rejected under 35 U.S.C.103 as being unpatentable over Tana be et al (JP
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`05-149634).
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`r.
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`Regarding claim 3, Ta na be discloses the device ofclaim 1, but does not show, in the
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`embodiment of figure 1, that the compression chamber volumes are equal. However Tana be
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`does show that it is known to set compression chambers to be a same volume ([0063]). It would
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`have been obvious to one of ordinary skill
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`in the art to have provided equal volume compression
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`

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`Application/Control Number: 15/538,118
`Art Unit: 3744
`
`Page 8
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`chambers as selection compression chamber volume is routine to one of ordinary skill as volume
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`relatesto a compressing capacity of a compressor.
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`5.
`
`Regarding claim 5, in an alternative interpretation, tothe extent that the generally
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`schematic view of figure 1 does not instruct on gradient. It would have been obvious to one of
`
`ordinary skill
`
`in the art to provide an upward gradient as during installation refrigerant lines are
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`generally not provided with a perfectly horizontal position. Therefore it would have been
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`obvious to one of ordinary skill
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`in the art to have provided an upward gradient in order to
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`enable the connection of elements positioned at different heights.
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`Conclusion
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`15.
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`The prior art made of record and not relied upon is considered pertinent to applicant's
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`disclosure.
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`16.
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`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to CHRISTOPHER R ZERPHEY whose telephone number is (571)272-5965. The
`
`examiner can normally be reached on M-F 7:00-4:00 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.
`
`Ifattemptsto reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Jianying Atkisson can be reached on (571)270-7740. The fax phone number for the organization where
`
`this application or proceeding is assigned is 571-273-8300.
`
`Information rega rdingthe 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
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`through Private PAIR only. For more information about the PAIR system, see http://pair-
`
`

`

`Application/Control Number: 15/538,118
`Art Unit: 3744
`
`Page 9
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`direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic
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`
`/CHR|STOPHER RZERPHEY/
`Primary Examiner, Art Unit 3744
`
`