`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`15/892,146
`
`02/08/2018
`
`Yoshihiro TAKAHASHI
`
`092122-0057
`
`4447
`
`MCDERMOTT WILL & EMERY LLP
`
`THE MCDERMOTT BUILDING
`500 NORTH CAPITAL STREET, NW.
`WASHINGTON, DC 20001
`
`MENDOZA-WILKENFE ERIK
`
`3763
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`01/21/2020
`
`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):
`
`ipdoeketmwe @ mwe. com
`
`PTOL-90A (Rev. 04/07)
`
`
`
`017/09 A0170” Summary
`
`Application No.
`15/892,146
`Examiner
`ERIK MENDOZA—WILKENFE
`
`Applicant(s)
`TAKAHASHI et al.
`Art Unit
`AIA (FITF) Status
`3763
`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 1/13/2020.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)[:] 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.
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`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 Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
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`5)
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`Claim(s)
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`1—3 and 5—20 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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`[:1 Claim(ss)
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`is/are allowed.
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`Claim(ss) 1 —3 and 5 —20 is/are rejected.
`
`D Claim(ss_) is/are objected to.
`
`) ) ) )
`
`S)
`are subject to restriction and/or election requirement
`[:1 Claim(s
`* If any claims have been determined aflowable. 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
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
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`10)|:I The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 2/8/2018 is/are: a). accepted or b)[:] 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:
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`a). All
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`b)C] Some**
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`c)C] None of the:
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`1.. Certified copies of the priority documents have been received.
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`2C] Certified copies of the priority documents have been received in Application No.
`
`SD 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)
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`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) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20200115a
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`
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`Application/Control Number: 15/892,146
`Art Unit: 3763
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`2.
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`Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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`Priority
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`Continued Examination Under 37 CFR 1. 1 14
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`3.
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`A request for continued examination under 37 CFR 1.114, including the fee set
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`forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
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`application is eligible for continued examination under 37 CFR 1.114, and the fee set
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`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
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`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on
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`1/13/2020 has been entered.
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`4.
`
`The following is a quotation of 35 U.S.C. 112(f):
`
`Claim Interpretation
`
`(f) Element in Claim for a Combination. — An element in a claim for a combination may be
`expressed as a means or step for performing a specified function without the recital of
`structure, material, or acts in support thereof, and such claim shall be construed to cover the
`corresponding structure, material, or acts described in the specification and equivalents
`thereof.
`
`The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
`
`
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`Application/Control Number: 15/892,146
`Art Unit: 3763
`
`Page 3
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`An element in a claim for a combination may be expressed as a means or step for performing
`a specified function without the recital of structure, material, or acts in support thereof, and
`such claim shall be construed to cover the corresponding structure, material, or acts
`described in the specification and equivalents thereof.
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`5.
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`The claims in this application are given their broadest reasonable interpretation
`
`using the plain meaning of the claim language in light of the specification as it would be
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`understood by one of ordinary skill in the art. The broadest reasonable interpretation of
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`a claim element (also commonly referred to as a claim limitation) is limited by the
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`description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
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`paragraph, is invoked.
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`As explained in MPEP § 2181, subsection I, claim limitations that meet the
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`following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35
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`U.S.C. 112, sixth paragraph:
`
`(A)
`
`the claim limitation uses the term “means” or “step” or a term used as a substitute
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`for “means” that is a generic placeholder (also called a nonce term or a non-
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`structural term having no specific structural meaning) for performing the claimed
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`function;
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`(B)
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`the term “means” or “step” or the generic placeholder is modified by functional
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`language, typically, but not always linked by the transition word “for” (e.g.,
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`“means for”) or another linking word or phrase, such as “configured to” or “so
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`that”; and
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`(C)
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`the term “means” or “step” or the generic placeholder is not modified by sufficient
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`structure, material, or acts for performing the claimed function.
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`Use of the word “means” (or “step”) in a claim with functional language creates a
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`rebuttable presumption that the claim limitation is to be treated in accordance with 35
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`
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`Application/Control Number: 15/892,146
`Art Unit: 3763
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`Page 4
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`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim
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`limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
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`paragraph, is rebutted when the claim limitation recites sufficient structure, material, or
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`acts to entirely perform the recited function.
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`Absence of the word “means” (or “step”) in a claim creates a rebuttable
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`presumption that the claim limitation is not to be treated in accordance with 35 U.S.C.
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`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim
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`limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
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`paragraph, is rebutted when the claim limitation recites function without reciting
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`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
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`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. Conversely, claim limitations in this
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`application that do not use the word “means” (or “step”) are not being interpreted under
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`35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise
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`indicated in an Office action.
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`6.
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`This application includes one or more claim limitations that do not use the word
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`“means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35
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`U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder
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`that is coupled with functional language without reciting sufficient structure to perform
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`the recited function and the generic placeholder is not preceded by a structural modifier.
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`Such claim limitation(s) is/are:
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`
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`Application/Control Number: 15/892,146
`Art Unit: 3763
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`Page 5
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`a.
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`The limitation “a first refrigeration unit in claim 1, line 4, interpreted as “a
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`first unit for refrigeration”, “unit” being the generic placeholder” and “refrigeration”
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`being the functional language. Applicant’s written description states “The first
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`refrigeration unit 500A is configured such that components, such as the
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`compressor 101 , the condensers 102, 104, and the decompressor 108 which
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`constitute the refrigerant circuit 100, are mounted on a mounting board 510” in
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`paragraph 0095. For the purposes of compact prosecution, based on the
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`Examiner's best understanding of Applicant's disclosure, the limitation has been
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`interpreted as including the structure of a refrigerant circuit made up of a
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`compressor, a condenser and a decompressor”. Examination on the merits has
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`been conducted based on this interpretation.
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`b.
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`The limitation “a second refrigeration unit in claim 1, line 6, interpreted as
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`“a first unit for refrigeration”, “unit” being the generic placeholder” and
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`“refrigeration” being the functional language. Applicant’s written description
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`states “the second refrigeration unit 5008 is also configured such that
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`components, such as the compressor 201, the condensers 202, 204, the
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`decompressor 208, which constitute the refrigerant circuit 200, are mounted on a
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`mounting board 510 that is configured with a substantially rectangular metal plate
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`illustrated in Fig. 8” in paragraph 0096. For the purposes of compact prosecution,
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`based on the Examiner's best understanding of Applicant's disclosure, the
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`limitation has been interpreted as including the structure of a refrigerant circuit
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`made up of a compressor, a condenser and a decompressor”. Examination on
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`the merits has been conducted based on this interpretation.
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`
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`Application/Control Number: 15/892,146
`Art Unit: 3763
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`Page 6
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`c.
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`“a control unit” in claim 1, line 17, interpreted as “unit for control”, “unit”
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`being the generic placeholder, and “control” being the functional language.
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`Applicant’s written description states “The control unit 400 is configured such that
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`various components such as the control board 301 and the switching power
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`supply 302, etc., constituting the control circuit 300 are mounted on the control-
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`unit-mounting board 410 made of a substantially rectangular metal
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`plate illustrated in Fig. 13.” in paragraph 0081, therefore the control unit will be
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`interpreted as comprising a control circuit and a control unit-mounting board.
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`Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C.
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`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to
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`cover the corresponding structure described in the specification as performing the
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`claimed function, and equivalents thereof.
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`If applicant does not intend to have this/these limitation(s) interpreted under 35
`
`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may:
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`(1) amend the
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`claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA
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`35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the
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`claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s)
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`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 Rejections - 35 USC § 1 12
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`7.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION—The specification shall conclude with one or more claims particularly
`pointing out and distinctly claiming the subject matter which the inventor or a joint inventor
`regards as the invention.
`
`
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`Application/Control Number: 15/892,146
`Art Unit: 3763
`
`Page 7
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`The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph:
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
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`8.
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`Claims 1-3 and 5-20 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA),
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`second paragraph, as being indefinite for failing to particularly point out and distinctly
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`claim the subject matter which the inventor or a joint inventor, or for pre-AIA the
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`applicant regards as the invention. Claims 2-3 and 5-20 are rejected for being
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`dependent on claim 1.
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`Claim 1 recites the limitation “a first refrigeration unit configured such that a first
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`compressor, a first condenser, and a first decompressor are mounted on a first
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`mounting board” in lines 4-5 which is indefinite since it is unclear if Applicant is invoking
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`35 U.S.C. 112f or not due to the language “configured such that“ which does not clearly
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`recite that the first refrigeration unit includes any of the structure following that phrase.
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`The limitation “a first refrigeration unit” is being interpreted under 35 U.S.C. 112f as
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`stated above and for the purposes of compact prosecution, based on the Examiner's
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`best understanding of Applicant's disclosure, the limitation has been interpreted as “a
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`first refrigeration unit configured such that the first compressor, the first condenser, and
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`the first decompressor are mounted on a first mounting board”. Examination on the
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`merits has been conducted based on this interpretation.
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`Claim 1 recites the limitation “a second refrigeration unit configured such that a second
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`compressor, a second condenser, and a second decompressor are mounted on a
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`second mounting board” in lines 6-7 which is indefinite since it is unclear if Applicant is
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`
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`Application/Control Number: 15/892,146
`Art Unit: 3763
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`Page 8
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`invoking 35 U.S.C. 112f for the limitation “a second refrigeration unit” because of the
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`language “configured such that” Examination on the merits has been conducted based
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`on this interpretation. The limitation “a second refrigeration unit” is being interpreted
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`under 35 U.S.C. 112f as stated above and for the purposes of compact prosecution,
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`based on the Examiner's best understanding of Applicant's disclosure, the limitation has
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`been interpreted as “a second refrigeration unit configured such that the second
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`compressor, the second condenser, and the second decompressor are mounted on a
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`first mounting board”. Examination on the merits has been conducted based on this
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`interpretation.
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`Claim 1 recites the limitation “a control unit where a control circuit is mounted” in line 11
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`which is indefinite since it is unclear if Applicant is invoking 35 U.S.C. 112(f) or not due
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`to the language “where a” which does not positively recite that the control unit includes
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`the structure of a control circuit. The limitation “a control unit” is being interpreted under
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`35 U.S.C. 112(f) as stated above and for the purposes of compact prosecution, based
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`on the Examiner's best understanding of Applicant's disclosure, the limitation has been
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`interpreted as “a control unit, the control circuit mounted on the control unit”.
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`Examination on the merits has been conducted based on this interpretation.
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`Claim 1 recites the limitation “a second folded portion further folded inward” in line 19 is
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`indefinite because it is unclear what direction “inward” is from. For the purposes of
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`compact prosecution, based on the Examiner's best understanding of Applicant's
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`disclosure, the limitation has been interpreted as “a second folded portion further folded
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`
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`Application/Control Number: 15/892,146
`Art Unit: 3763
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`Page 9
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`inward towards the middle of the first mounting board”. Examination on the merits has
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`been conducted based on this interpretation.
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`Claim 5 recites the limitation “a second folded portion further folded inward” in line 5 is
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`indefinite because it is unclear what direction “inward” is from. For the purposes of
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`compact prosecution, based on the Examiner's best understanding of Applicant's
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`disclosure, the limitation has been interpreted as “a second folded portion further folded
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`inward towards the middle of the first mounting board”. Examination on the merits has
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`been conducted based on this interpretation.
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`Claim 10 recites the limitation “that provides support, from below” in lines 2-3 which is
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`indefinite because it is unclear what the support is below. For the purposes of compact
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`prosecution, based on the Examiner's best understanding of Applicant's disclosure, the
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`limitation has been interpreted as “that provides support, from below the pair of first rail
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`members” shown in Fig. 11, 61A supporting, from below, rail member
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`60A. Examination on the merits has been conducted based on this interpretation.
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`Claim 11 recites the limitation “that provides support, from below” in lines 2-3 which is
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`indefinite because it is unclear what the support is below. For the purposes of compact
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`prosecution, based on the Examiner's best understanding of Applicant's disclosure, the
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`limitation has been interpreted as “that provides support, from below the pair of second
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`rail members” shown in Fig. 11, 61 B supporting, from below, rail member
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`608. Examination on the merits has been conducted based on this interpretation.
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`
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`Application/Control Number: 15/892,146
`Art Unit: 3763
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`Page 10
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`Allowable Subject Matter
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`9.
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`Claim 1 would be allowable if rewritten or amended to overcome the rejection(s)
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`under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), 2nd paragraph, set forth in this
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`Office action.
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`10.
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`The following is a statement of reasons for the indication of allowable subject
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`matter:
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`the prior art of record either alone or in combination does not explicitly teach “a
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`second folded portion further folded inward” as recited in line 19 in claim 1. The closest
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`prior art of record is discussed below.
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`Kobayashi et al. (US 2011/0023532) teaches an ultra-low temperature freezer (Fig. 1)
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`comprising: an insulated case (Fig. 11, comprising 2A) defining a storage compartment
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`(Fig. 11, comprising 21Ac and 21Ad) having an opening (front opening of outer box 2A
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`in Fig. 11, see paragraph 0042; See Fig. 16 when door 3 and 7b are open) in a front
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`face (Figs. 15A and 16, front face shown by 78 when 78 is closed);
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`an insulated door (Fig. 11, 3A) configured to be able to open and close the
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`opening;
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`a first refrigeration unit (Fig. 6, 300), comprising configured such that a first
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`compressor (Fig. 1, 301), a first condenser (Fig. 6, 304), and a first decompressor (Fig.
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`6, 310) are mounted in machine chamber 4A, Fig. 11);
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`
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`Application/Control Number: 15/892,146
`Art Unit: 3763
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`Page 11
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`a second refrigeration unit (Fig. 6, 400) configured such that a second
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`compressor (Fig. 6, 401), a second condenser (Fig. 6, 404), and a
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`second decompressor (Fig. 6, 410) are mounted in machine room 4A in Fig. 11;
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`a machinery compartment (Fig. 11, 4A) provided adjacent to the insulated case,
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`the machinery compartment being configured to house the first refrigeration unit and the
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`second refrigeration unit; and
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`a control unit (Fig. 10, 32A) where a control circuit (paragraph 0044, “control
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`portion”) is mounted (on door 3A, Fig. 10).
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`Takasugi (US 2010/0147017), teaches an ultra-low temperature freezer (Fig. 1)
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`comprising: an insulated case (Fig. 1, 2) defining a storage compartment (Fig. 2, 4)
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`having an opening (opening of 4 at lied 15 in Fig. 2) in an upper face (at lid 15 in Fig. 2).
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`Takasugi teaches a control unit (Fig. 5, 21) housed in a machinery compartment (Fig. 5,
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`comprising 3 and 18) so as to be stacked in a vertical direction (bottom to top of the
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`ultra-low temperature freezer, Fig. 5).
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`Chae et al. (US 2004/0221605) teaches a control unit (Fig. 4, 13) is configured to be
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`drawable (See paragraph 0043, lines 1-6, “According to one aspect, the box
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`accommodating part 7 is provided in a lower part of the main body 3, and a box supporting
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`bracket 30 is provided in the box accommodating part 7, to support the electric component box
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`10, wherein the electric component box 10 is drawn in and out, being supported by the box
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`supporting bracket 30. ’9 independently of any other moving parts of the refrigerator shown
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`in Fig. 1.
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`
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`Application/Control Number: 15/892,146
`Art Unit: 3763
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`Page 12
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`Rafalovich et al. (US 6,519,970) teaches a refrigeration unit (Fig. 4 comprising 164 and
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`166) of a refrigerator (Fig. 1) that is mounted on a mounting board (Fig. 4, 162) and is
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`drawable in a horizontal direction (Fig. 4, along axis 250) to facilitate service and
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`maintenance of the refrigeration unit (column 4, lines 62-67).
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`Rafalovich further teaches wherein the first mounting board includes a pair of first
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`extending portions (Fig. 4, comprising 252 and 254) provided to a pair of side-edge
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`portions (Fig. 4 sides of plate 162 which each rails 252 and 254 are located) along a
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`drawing-out direction (Fig. 4, 250), each of the pair of first extending portions has a first
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`folded portion folded downward (annotated by Examiner in Figure 1) Rafalovich
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`implicitly teaching a pair of first rail members (part of the refrigerator frame which the
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`pair of first extending portions 252 and 254 engage and slide on, see column 6, lines
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`44-46 “Base 162 includes rails 252, 254 for sliding engagement with a refrigerator frame. ’)
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` \\
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`Figum t: annotated Fig. 4 of Rafaioww
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`
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`Application/Control Number: 15/892,146
`Art Unit: 3763
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`Page 13
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`Response to Arguments
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`11.
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`Applicant's arguments filed 1/13/2020 with respect to the limitation “control unit”
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`of claim 1 being interpreted under 35 U.S.C. 112(f) have been fully considered but they
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`are not persuasive. Applicant argues that the claim does not recite a “unit for control”
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`(interpretation for “a control unit”) but is rather modified with structural limitation, to
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`which the Examiner traverses since the limitation “a control unit where a control circuit”
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`of line 11 is indefinite for being unclear if the control unit comprises the control circuit or
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`if the control circuit is located where the control circuit is.
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`12.
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`Applicant’s arguments, see Remarks, filed 1/13/2020, with respect to claim 1
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`being rejected under 35 U.S.C. 103 have been fully considered and are persuasive
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`since none of the prior art of record teach “a second folded portion further folded
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`inward”. The rejection of claims 1-3, and 5-11 under 35 U.S.C. 103
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`has been withdrawn.
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`Conclusion
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`13.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to ERIK MENDOZA-WILKENFE whose telephone number
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`is (571)272-9674. The examiner can normally be reached on M-F: 10-6.
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`Examiner interviews are available via telephone, in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`
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`Application/Control Number: 15/892,146
`Art Unit: 3763
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`Page 14
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Frantz Jules can be reached on (571) 272-6681. The fax phone number for
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`the organization where this application or proceeding is assigned is 571 -273-8300.
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see https://ppair-
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`my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private
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`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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`If you would like assistance from a USPTO Customer Service Representative or access
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`to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-
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`272-1000.
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`/ERIK MENDOZA-WILKENFEL/
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`Examiner, Art Unit 3763
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