DETAILED ACTION
Response to Amendment
The Amendment filed August 5, 2025 has been entered. Claims 1 – 7 are pending in the application. The amendment to the claims has overcome the claim objections set forth in the last Non-Final Action mailed May 9, 2025.
Claim Rejections - 35 USC § 103
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 may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 – 7 are rejected under 35 U.S.C. 103 as being unpatentable over Takabe et al. (US 2022/0056898 – herein after Takabe) in view of Dong et al. (CN 218005418U – herein after Dong).
In reference to claim 1, Takabe teaches an electric compressor (11, see fig. 1) comprising:
a compression part (24+25, see fig. 1) that compresses fluid (see ¶25);
an electric motor (22, see fig. 1) that drives the compression part;
an inverter (not labelled but is present on left side of the motor as evident from fig. 1 and disclosure in ¶4) that drives the electric motor;
a housing (12+13+14, see fig. 1) that accommodates the compression part, the electric motor, and the inverter, and includes a plurality of housing forming members (12, 13, 14) made of metal (see ¶27);
a seal member (41, 42, see ¶27 and fig. 1) that has an insulation property (see ¶34) and is provided between the plurality of housing forming members adjacent to (next to or facing) each other (seal member 41 is provided between the housing members 12 and 13 while seal member 42 is provided between the housing members 13 and 14); and
a potential equalization member (insertion member 45, see ¶28) that is made of metal (see claim 1) and is in contact with both of the adjacent housing forming members to equalize potentials of the adjacent housing forming members (see ¶35: member 45 maintains two adjacent housing forming members 12 and 13 at equal potentials),
wherein
the adjacent housing forming members (for instance, members 12 and 13 in fig. 1) include mating surfaces (right mating surface for 12 while left mating surface for 13) facing each other, respectively, the mating surfaces sandwiching the seal member (41),
an insertion hole (46, see fig. 2) is formed in one of the mating surfaces of the adjacent housing forming members (12, 13), at a position in which the seal member is not provided [see ¶30 and fig. 2: “position” being that of opening portion 47 (portion without gasket)], and
the potential equalization member (45) includes an insertion portion (portion of 45 within opening 46) inserted into the insertion hole (46).
Takabe does not teach the electric compressor wherein the insertion hole is formed in “only” one of the mating surfaces and wherein the potential equalization member also includes “a contact portion that is a plate portion extending in a gap between the mating surfaces of the adjacent housing forming members and is in contact with both of the mating surfaces of the adjacent housing forming members”.
However, Dong teaches an equipotential insert (1) made of metal (see ¶37 of translation) that is inserted into a hole in a (one) body (4) and has a structure that comprises a plate/flange portion (see fig. 1).
It would have been obvious to the person of ordinary skill in the art before the effective filing date of the invention to replace Takabe’s two-hole, cylindrical pin system with a single hole, plate-contact system as taught by Dong to improve the stability (by using a single hole) and enhance contact reliability (by using a plate portion) of the equipotential connection beyond Takabe’s simple line contact of a pin in a hole.
The proposed modification is to: (a) retain one of the Takabe’s insertion holes to secure the insertion portion; (b) eliminate the second, corresponding hole in the adjacent housing to remove the source of the alignment problem (in view of disclosure provided by applicant under “Background Art” in the filed specification), thereby meeting the insertion hole is formed in “only” one of the mating surfaces limitation; and (c) modify the potential equalization member (using Dong’s structural concept) to have a plate or flange that extends outward from the single retained hole to make contact with the unholed mating surface. It is to be noted that the modified metallic potential equalization member would retain Takabe’s preferred cylindrical spring-pin shape for the insertion portion (as Takabe states in ¶42: “any shape can be used as long as the outer peripheral surface of the insertion member is pressed against the inner peripheral surface of the insertion hole by an elastic force”) to ensure secure retention and reliable inner-surface contact. This insertion portion would then be modified to include a plate portion at its head (using Dong’s structural concept) that extends outward into the gap between the two adjacent housings to contact both mating surfaces, thereby meeting the “plate portion” limitation.
Thus, Takabe, as modified by Dong, teaches the electric compressor wherein the insertion hole is formed in only one of the mating surfaces of the adjacent housing forming members (of Takabe), at a position in which the seal member (of Takabe) is not provided, and wherein the potential equalization member (modified using the teaching of Dong) includes an insertion portion (for instance, cylindrical portion within opening 46 seen in fig. 3A/3B of Takabe) inserted into the insertion hole (46) and a contact portion that is a plate portion (flange portion of Dong’s potential equalization member 1) extending in a gap (47, in fig. 2 of Takabe) between the mating surfaces (in fig. 2 of Takabe: right surface of 12 and left surface of 13) of the adjacent housing forming members (12, 13) and is in contact with both the mating surfaces of the adjacent housing forming members (in view of Takabe’s fig. 2: in an assemble state of the modified electric compressor, the contact surface contacts right mating surface of 12 and left mating surface of 13).
In reference to claim 2, Takabe, as modified above in claim 1, remains silent on the electric compressor, wherein the contact portion has a spring structure that generates an elastic force in a direction in which the mating surfaces of the adjacent housing forming members are spaced from each other.
However, Takabe discloses that thin plates made of spring material are suitable to be used as potential equalizing members (see ¶31).
It would have been obvious to the person of ordinary skill in the art before the effective filing date of the invention to make Dong’s insert in the modified electric compressor from spring/elastic material as taught by Takabe since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Thus, Takabe, as modified, teaches the electric compressor, wherein the contact portion (of Dong) has a spring structure (“spring structure” = resilient structure) that generates an elastic force in a direction (direction being ↔ in view of Takabe’s fig. 2) in which the mating surfaces (in view of Takabe’s fig. 2: right mating surface for 12 while left mating surface for 13) of the adjacent housing forming members are spaced from each other.
In reference to claim 3, Takabe, as modified above in claim 2, teaches the electric compressor, wherein the contact portion (flange portion of Dong which has annular/plate shape) includes a first plate portion (top portion of Dong’s flange portion that is in gap 47 in view of Takebe’s fig. 2) that is continuous with the insertion portion (portion within the opening) and is in contact with the other of the mating surfaces of the adjacent housing forming members (this mating surface being right surface of housing forming member 12 of adjacent housing forming members 12, 13; see fig. 2 of Takabe) in which the insertion hole is not formed (in this instance, insertion hole 46 is viewed as being formed in housing forming member 13), and a second plate portion (bottom portion of Dong’s flange portion that is in gap 47 in view of Takabe’s fig. 2) that is bent relative to the first plate portion (bent/curved such that first and second plate portions when viewed together shows the annular/plate shape of Dong’s flange portion) such that the second plate portion and the first plate portion form the spring structure (“resilient structure” in view of modification discussed above in claim 2), the second plate portion being in contact with the one of the mating surfaces of the adjacent housing forming members (this mating surface being right surface of housing forming member 13 of adjacent housing forming members 12, 13; see fig. 2 of Takabe) in which the insertion hole is formed (insertion hole 46 is viewed as being formed in housing forming member 13 in Takabe).
In reference to claim 4, Takabe, as modified, teaches the electric compressor, wherein the contact portion (flange portion of Dong which has annular/plate shape) includes a first plate portion (top portion of Dong’s flange portion that is in gap 47 in view of Takebe’s fig. 2) that is continuous with the insertion portion (portion within the opening) and is in contact with the one of the mating surfaces of the adjacent housing forming members (this mating surface being right surface of housing forming member 12 of adjacent housing forming members 12, 13; see fig. 2 of Takabe) in which the insertion hole is formed (in this instance, insertion hole 46 is viewed as being formed in housing forming member 12), and a second plate portion (bottom portion of Dong’s flange portion that is in gap 47 in view of Takabe’s fig. 2) that is bent relative to the first plate portion (bent/curved such that first and second plate portions when viewed together shows the annular/plate shape of Dong’s flange portion) such that the second plate portion and the first plate portion form the spring structure (“resilient structure” in view of modification discussed above in claim 2), the second plate portion being in contact with the other of the mating surfaces (this mating surface being right surface of housing forming member 13 of adjacent housing forming members 12, 13; see fig. 2 of Takabe) of the adjacent housing forming members in which the insertion hole is not formed (in this instance, insertion hole 46 is viewed as being formed in housing forming member 12).
In reference to claim 5, the pin of Takabe has been replaced by the insert of Dong. Takabe, as modified above in claim 1, remains silent on the claimed features in claim 5. It would have been obvious to the person of ordinary skill in the art to make the insert of Dong out of a thin plate since Takabe discloses that such material is suitable for being used as potential equalizing members (see Takabe’s ¶31 and fig. 2). Further, the method of making the insert lends no patentable weight to the product being claimed. See MPEP 2113. Thus, Takabe, as modified, teaches the electric compressor, wherein the insertion portion (portion within the opening) is formed by curving a thin plate into a cylindrical shape, and an outer circumferential surface of the insertion portion is in contact with and pressed against an inner circumferential surface of the insertion hole by an elastic force.
In reference to claim 6, Takabe, as modified above in claim 5, remains silent on the electric compressor, “wherein the insertion portion includes a first tubular portion having the outer circumferential surface, and a second tubular portion formed integrally with the first tubular portion, and an outer diameter of the second tubular portion is gradually reduced as the second tubular portion is away from the contact portion in an axial direction of the insertion portion”. However, these features are dependent on a shape of the insertion portion and as such are a matter of obvious design choice. A change in shape is usually recognized as a matter of choice which a person of ordinary skill in the art would find obvious absent persuasive evidence that the particular configuration of the claimed invention was significant, see MPEP 2144.04. As one of ordinary skill in the art would understand, the particular shape of the insert will depend on the particular environment in which it is used and for ensuring that it is securely held in the hole.
In reference to claim 7, Takabe, as modified by Schuech, teaches the electric compressor, wherein the contact portion (provided using the teaching of Dong) is in surface contact with both of the mating surfaces facing each other (in view of Takabe’s fig. 2: right mating surface for 12 while left mating surface for 13).
Response to Arguments
The arguments filed August 5, 2025, with respect to independent claim 1, have been fully considered but they are moot. The amendment to the independent claim 1 changed the scope of the claim. As a result, the prior arts have been re-evaluated and re-applied to claim 1, in view of newly relied upon secondary reference of Dong.
Note: With respect to the applicant’s argument “However, the fastener 22 of Sedlock is an assembly component for a vehicle bumper... A potential equalization member connects conductive parts to a common ground to eliminate voltage differences. The potential equalization member and the housings are made of metal. Sedlock's fastener 22 and the plastic flange 40 are all made of plastic and thus completely unrelated a potential equalization member, much less a structure for a compressor housing”: In the current presented new rejection of claims 2-4, the relevant teaching borrowed from Sedlock is the structural principle used to maintain contact, not the overall function of the device. Sedlock explicitly teaches the use of a resilient structure (resilient fins 34, 35) designed to generate an opposing force to take up looseness and accommodate thickness variations (see ¶6, ¶15, ¶20). The POSITA, facing the problem of ensuring constant and reliable surface contact would reasonably look to any field that uses resilient structures to maintain tight abutment between two components. The argument that Sedlock’s components are plastic while the potential equalization member is not material to the rejection of claims 2-4. Claims 2-4 define the shape and mechanical function of the contact portion as a “spring structure” that generates “elastic force”. The construction of a spring structure to create a spring force is a fundamental and well-known mechanical engineering principle that is independent of material. A POSITA, having decided to use a plate-like contact (claim 1 combination) and needing to make that plate resilient (claim 2), would know how to implement the spring/bent structure of Sedlock’s fins using metal (the material of the potential equalization member), as metal is a common material for manufacturing spring structures (e.g. spring pins, leaf springs).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/CHIRAG JARIWALA/Examiner, Art Unit 3746
/ESSAMA OMGBA/Supervisory Patent Examiner, Art Unit 3746