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`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/641,523
`
`HAY
`
`02/24/2020
`
`Kenji WATANABE
`
`20296.0135USWO
`
`8935
`
`M
`
`TEERS
`
`HAMRE, SCHUMANN, MUELLER & LARSON P.C.
`45 South Seventh Street
`Suite 2700
`MINNEAPOLIS, MN 55402-1683
`
`DOUNIS, LAERT
`
`3746
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/03/2021
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`PTOMail @hsml.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-6 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s) 1-6 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)¥] The specification is objected to by the Examiner.
`11) The drawing(s) filed on 2/24/2020 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:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin 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) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210527
`
`Application No.
`Applicant(s)
`16/641 ,523
`WATANABE etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`LAERT DOUNIS
`3746
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom 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) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 3/25/2020.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) 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 Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 16/641,523
`Art Unit: 3746
`
`Page 2
`
`DETAILED ACTION
`
`The present application, filed on or after March 16, 2013,
`
`is being examined under the
`
`first inventor to file provisions of the AIA.
`
`Priority
`
`Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119
`
`(a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55,
`
`which papers have been placed of recordin the file. Claims 1 — 6 are entitled toa
`
`priority date of September 4, 2017.
`
`Title
`
`The title of the invention is not descriptive. A newtitle is required that is clearly
`
`indicative of the invention to which the claims are directed. Examiner suggests
`
`amending the title to incorporate a heat-insulating member with a circumferential recess
`
`20
`
`and a muffler.
`
`

`

`Application/Control Number: 16/641,523
`Art Unit: 3746
`
`Page 3
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`Claim Rejections - 35 USC § 112
`
`5
`
`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 outand distinctly claiming the subject matter which the inventor or a jointinventor
`
`regards as the invention.
`
`Claim 4 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly
`
`point out and distinctly claim the subject matter which the inventor or a joint inventor
`
`regards as the invention.
`
`15
`
`Claim 4 recites the heat-insulating memberis formed of a porous material such
`
`as sintered metal. The phrase “such as” makes it unclear whether whatfollows is
`
`a required feature of the claim or merely optional. Art will be applied under the
`
`interpretation that “sintered metal’ is an optional feature.
`
`20
`
`Claim Rejections - 35 USC § 102
`
`In the event the determination of the status of the application as subject to AIA 35
`
`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
`
`

`

`Application/Control Number: 16/641,523
`Art Unit: 3746
`
`Page 4
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`correction of the statutory basis for the rejection will not be considered a new groundof
`
`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
`
`the same under either status.
`
`5
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form
`
`the basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless —
`
`10
`
`(a)(1) the claimed invention was patented, described in a printed publication, orin public use,
`
`on sale or otherwise available to the public before the effective filing date of the claimed
`
`invention.
`
`(a)(2) the claimed invention was described in a patent issued under section 151, or in an
`
`15
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`application for patent published or deemed published undersection 122(b), in whichthe patentor
`
`application, as the case may be, names another inventor and waseffectively filed before the
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`effective filing date of the claimed invention.
`
`Claims 1 —3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tsujino (JP
`
`20
`
`H05-033784).
`
`With regards to Claim 1:
`
`Tsujino discloses a compressor(Figure 1) comprising:
`
`25
`
`

`

`Application/Control Number: 16/641,523
`Art Unit: 3746
`
`Page 5
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`a fixed scroll (fixed scroll 8) and a revolving scroll (orbiting scroll 9) configuring a
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`compression mechanism; a compression chamber(space S) formed between the
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`fixed scroll and the revolving scroll; an intake chamberprovided on an outer
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`circumferential side of the fixed scroll (space between intake pipe 5 and radially
`
`outer periphery of fixed scroll 8); a discharge port (discharge hole 12) provided in
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`a central part of the fixed scroll;
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`a muffler (upper cover portion 3a with discharge chamber 4) provided to cover
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`the discharge port at an upperpart of the fixed scroll; and a heat-insulating
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`member(heat shielding plate 20) provided between thefixed scroll and the
`
`muffler, wherein after a refrigerant gas taken into the intake chamberis
`
`compressedby the revolving scroll revolving and the compression chamber
`
`moving while changing a volume of the compressor, the refrigerant gas is
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`discharged from the discharge port (Paragraph 13), the refrigerant gas
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`discharged from the discharge port is discharged into a muffler space (discharge
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`chamber 4) formed by the muffler, and
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`the heat-insulating memberincludes a heat-insulating member discharge port
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`(unlabeled discharge hole above discharge hole 12 and covered by check valve
`
`20
`
`13) provided in a portion facing the discharge port, a lead valve (check valve 13)
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`provided on a surface, of the heat-insulating member, on a side opposite to a
`
`side facing the fixed scroll, and a recess provided on the surface, of the heat-
`
`insulating member, facing the fixed scroll and provided in a 360-degree area in a
`
`

`

`Application/Control Number: 16/641,523
`Art Unit: 3746
`
`Page 6
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`circumferential direction facing the intake chamber (space between heat
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`shielding plate 20 and top surfaceof fixed scroll 8, see Paragraph 16: “via an O-
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`ring 22, 23 is fixed on the surface of the fixed scroll 8, the heat shield member
`
`and the surface since no metal touch with a, both the space between is formed,
`
`5
`
`the heat transfer is so suppressed morereliably by the presence of the space” —
`
`note that the as per Paragraph 14, the plate 20 is “a disk-shaped heat shielding
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`plate 20 which covers entirely the upper surface except for the formation portion
`
`of the discharge hole 12 of the stationary scroll 8” and note also that the plate 20
`
`has portions which protrude downwards where screws21 are fixed and where O-
`
`10
`
`ring 22 is, thus leading to the space formed between the plate 20 and thefixed
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`scroll as 8 qualifying as an annular “recess” under broadest reasonable
`
`interpretation).
`
`
`
`seennepantateGey
`reces
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`
`
`15
`
`With regards to Claim 2:
`
`

`

`Application/Control Number: 16/641,523
`Art Unit: 3746
`
`Page 7
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`Tsujino discloses in the heat-insulating member, at least one of a rim of the heat-
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`insulating memberdischarge port provided corresponding to the discharge port
`
`and an opening edge of the recess has a protruding shape most protruding
`
`5
`
`toward a side of the fixed scroll (see annotated Figure 1 below, both circled
`
`portions,
`
`i.e. the portion of plate 20 protruding downwards with screws 21 and the
`
`portion of plate 20 protruding downwards with O-ring 22, have a shape that mort
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`protrudes towards a side of the fixed scroll, under broadest reasonable
`
`interpretation).
`
`10
`
`
`
`With regards to Claim 3:
`
`15
`
`Tsujino discloses a portion close to the heat-insulating memberdischarge port of
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`the heat-insulating memberis fixed to the fixed scroll by a bolt (screws 21, see
`
`

`

`Application/Control Number: 16/641,523
`Art Unit: 3746
`
`Page 8
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`annotated Figure above, left circle shows a portion of the plate 20 “close”, under
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`broadest reasonable interpretation,
`
`to the discharge port being fixed by a
`
`bolt/screw to the fixed scroll).
`
`Claim Rejections - 35 USC § 103
`
`In the event the determination of the status of the application as subject to AIA 35
`
`10
`
`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
`
`correction of the statutory basis for the rejection will not be considered a new groundof
`
`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
`
`the same under either status.
`
`15
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness
`
`rejections set forth in this Office action:
`
`A patent for a claimed invention maynotbe obtained, notwithstanding thatthe claimed
`
`invention is not identically disclosed as set forth in section 102 of this title, if the differences
`
`20
`
`between the claimed invention andthe prior artare such thatthe claimed invention as a whole
`
`would have been obvious beforethe effective filing date of the claimed invention to aperson
`
`having ordinaryskill in the art to which the claimed invention pertains. Patentabilityshall not
`
`be negated by the manner in whichthe invention was made.
`
`

`

`Application/Control Number: 16/641,523
`Art Unit: 3746
`
`Page 9
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`Claims 4 —6 are rejected under 35 U.S.C. 103 as being unpatentable over Tsujino (JP
`
`H05-033784) in view of Mahure etal. (hereafter “Mahure” — US 2016/0305430).
`
`With regards to Claim 4:
`
`Tsujino does not explicitly disclose the heat-insulating memberis formed of a
`
`porous material, instead only disclosing that the plate is made from a “low
`
`thermal conductive material’ (Paragraph 14). Mahure teaches a scroll
`
`compressor (see Figure 3) including a heat-insulating member (partition
`
`10
`
`assembly 110) having a layer (insulating layer 132) formed of a porous material
`
`with low thermal conductivity (“expanded foam material’, “fibrous insulating
`
`materials” such as aero gel, fiberglass, Rockwool, all of which are porous
`
`materials). All of these materials aid in insulating the discharge chamber from the
`
`suction chamber, thereby improving efficiency (see Figures 17 — 19 of Mahure).
`
`15
`
`Given these teachings, it would have been obvious to one of ordinary skill in the
`
`art to modify the system of Tsujino to replace the material of the heat shielding
`
`plate with one of the porous materials listed in Mahure in order to yield the
`
`predictable benefits described above.
`
`20
`
`With regards to Claim 5:
`
`Tsujino does not explicitly disclose a plurality of plates is laminated to form the
`
`heat-insulating member. Mahure teaches a scroll compressor (see Figure 3)
`
`

`

`Application/Control Number: 16/641,523
`Art Unit: 3746
`
`Page 10
`
`including a heat-insulating member (partition assembly 110) formed of a plurality
`
`of bonded layers (120, 132, 130, Figures 5 — 9). The use of multiple layers allows
`
`for multiple materials to be used, each of which has a specific purpose. In
`
`Mahure, the outer layers (120, 122) are formed of a metal material for high-
`
`strength characteristics and the insulating layer is made of a low thermal
`
`conductivity material to reduce heat transfer between the suction and discharge
`
`sides (Paragraphs 74 — 76). Thus, multiple layers forming the partition plate allow
`
`for both high-strength and insulative characteristics, which aids in improvising
`
`overall efficiency (see Figures 17 — 19). Given these teachings, it would have
`
`been obvious to one of ordinary skill in the art to modify the system of Tsujino to
`
`replace the material of the heat shielding plate with multiple laminated layers in
`
`orderto yield the predictable benefits described above.
`
`With regards to Claim 6:
`
`The Tsujino modification of Claim 5 teaches the plurality of plates includes plates
`
`having the recess (modification in Claim 5 changes out the composition of the hat
`
`shielding plate of Tsujino, but not the shape, thus the layers would also include
`
`the recess of Tsujino).
`
`Claim 1
`
`is rejected under 35 U.S.C. 103 as being unpatentable over Matsuki et al.
`
`(hereafter “Matsuki’ — JP S62265487) in view of Iguchi et al. (hereafter “Iguchi — US
`
`

`

`Application/Control Number: 16/641,523
`Art Unit: 3746
`
`Page 11
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`2005/0169787), further in view of Futagami et al. (hereafter “Futagami’ — JP 2016-
`
`094824).
`
`With regards to Claim 1 (alternate interpretation):
`
`Matsuki discloses a compressor(Figures 1, 3) comprising:
`
`a fixed scroll (fixed scroll 1) and a revolving scroll (orbiting scroll 2) configuring a
`
`compression mechanism; a compression chamber (compression chamber 4)
`
`formed beiween the fixed scroll and the revolving scroll; an intake chamber
`
`provided on an outer circumferential side of the fixed scroll (suction chamber19,
`
`35); a discharge port (discharge port 3) provided in a central part of the fixed
`
`scroll:
`
`a muffler (upper shell 30 with discharge space 34) provided to cover the
`
`discharge port at an upper part of the fixed scroll; and a heat-insulating member
`
`(partition plate 31, Figure 3) provided between the fixed scroll and the muffler,
`
`wherein after a refrigerant gas taken into the intake chamber is compressed by
`
`the revolving scroll revolving and the compression chamber moving while
`
`20
`
`changing a volume of the compressor, the refrigerant gas is discharged from the
`
`discharge port (see English translation), the refrigerant gas discharged from the
`
`discharge port is discharged into a muffler space (discharge space 34) formed by
`
`the muffler, and
`
`

`

`Application/Control Number: 16/641,523
`Art Unit: 3746
`
`Page 12
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`the heat-insulating memberincludes a heat-insulating member discharge port
`
`(hole 31b, Figure 3) provided in a portion facing the discharge port, a lead valve
`
`(check valve 25) provided on a surface, of the heat-insulating member, on a side
`
`opposite to a side facing the fixed scroll.
`
`Matsuki does not explicitly disclose a recess provided on the surface, of the heat-
`
`insulating member, facing the fixed scroll and provided in a 360-degree area in a
`
`circumferential direction facing the intake chamber. |guchi (Figure 5) teaches a
`
`similar scroll compressor including a heat insulating member (partition wall 85)
`
`that includes a recess (annular recess 87) provided on the surface, of the heat-
`
`insulating member, facing the fixed scroll and provided in a 360-degree area in a
`
`circumferential direction facing the intake chamber. This recess forms a gap
`
`between the fixed scroll and the partition, thereby providing insulative qualities to
`
`the partition plate (see Paragraph 59, which describes another gap 90 in Iguchi
`
`providing the same kind of insulative qualities). Given these teachings, it would
`
`have been obvious to one of ordinary skill in the art to modify the system of
`
`Matsuki by forming an annular recess in the partition plate (31) of Matsuki
`
`in
`
`order to provide the predictable insulative benefits also taught in Iguchi.
`
`20
`
`Matsuki does not explicitly disclose that the muffler is provided within the
`
`compressor shell itself. Futagami (Figure 1) teaches a similar scroll compressor
`
`having a partition plate (39) serving as a heat insulating member (see English
`
`

`

`Application/Control Number: 16/641,523
`Art Unit: 3746
`
`Page 13
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`translation). Futagami also teaches a muffler (muffler 19) that is fully enclosed
`
`within the compressor hermetic container (1). The muffler is provided so as to
`
`cover the discharge port and “isolates the discharge port 17 from one container
`
`inner space 31 to form a muffler space 37”. A distinct muffler allows for a shape
`
`of the muffler that does not necessarily conform to the shape of the upper portion
`
`of the container, and can be fine-tuned to dampen the sound without regard to
`
`the outer shape of the container. Given the teachings of Futagami, it would have
`
`been obvious to one of ordinary skill in the art to modify the system of Matsuki by
`
`adding a distinct muffler within the compressor container in order to yield the
`
`predictable benefits described above.
`
`

`

`Application/Control Number: 16/641,523
`Art Unit: 3746
`
`Page 14
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`Additional References
`
`Please see attached PTO-892 form for additional references which are made of record
`
`but not relied upon for the current groundsof rejection.
`
`Motegi et al. (US 5674061) — see Figure 1, partition plate 45 serving as heat
`
`insulating member with recesses formed by O-rings 46.
`
`Fukuhara et al. (US 5951272) — see Figure 1, upper frame 25 serving as heat
`
`insulating member with recesses formed by seal members 41.
`
`Inquiries
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to LAERT DOUNIS whosetelephone numberis (571)272-
`
`2146. The examiner can normally be reached on Mon.
`
`- Thurs: 10a - 4:30p.
`
`Examiner interviews are available via telephone,
`
`in-person, and video conferencing
`
`20
`
`using a USPTO supplied web-based collaboration tool. To schedule aninterview,
`
`applicant is encouraged to use the USPTO Automated Interview Request(AIR) at
`
`http://(www.uspto.gov/interviewpractice.
`
`

`

`Application/Control Number: 16/641,523
`Art Unit: 3746
`
`Page 15
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, MARK LAURENZI can be reached on (571) 270-7878. The fax phone
`
`number for the organization where this application or proceeding is assigned is 571-
`
`273-8300.
`
`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published
`
`applications may be obtained 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.
`
`/Laert Dounis/
`Primary Examiner, Art Unit 3746
`
`Friday, May 28, 2021
`
`