Prosecution Insights
Last updated: May 29, 2026
Application No. 18/385,787

ELECTRIC COMPRESSOR

Non-Final OA §103§112
Filed
Oct 31, 2023
Priority
Sep 25, 2023 — RE 10-2023-0128561
Examiner
FINK, THOMAS ANDREW
Art Unit
3746
Tech Center
3700 — Mechanical Engineering & Manufacturing
Assignee
Hyundai WIA Corporation
OA Round
3 (Non-Final)
65%
Grant Probability
Moderate
3-4
OA Rounds
3m
Est. Remaining
97%
With Interview

Examiner Intelligence

Grants 65% of resolved cases
65%
Career Allowance Rate
353 granted / 545 resolved
-5.2% vs TC avg
Strong +32% interview lift
Without
With
+32.3%
Interview Lift
resolved cases with interview
Typical timeline
2y 10m
Avg Prosecution
17 currently pending
Career history
564
Total Applications
across all art units

Statute-Specific Performance

§101
0.4%
-39.6% vs TC avg
§103
77.7%
+37.7% vs TC avg
§102
6.1%
-33.9% vs TC avg
§112
13.6%
-26.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 545 resolved cases

Office Action

§103 §112
DETAILED ACTION Notice of Pre-AIA or AIA Status The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Request for Continued Examination A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/26/26 has been entered. Drawings The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the walls of claim 22; the first side, second side, outer side, upper side, lateral portion, and one side of the first accommodation space; and the lateral side of the second accommodation space must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance. Claim Rejections - 35 USC § 112 The following is a quotation of the first paragraph of 35 U.S.C. 112(a): (a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. Claim 1-7, 11, 18, and 22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 states “wherein the second accommodation space is located between the first accommodation space and the protruding space”. There appears to be no support for these limitations in the specification as filed. Therefore, they are considered new matter. Claim 22 states “where the first accommodation space, the second accommodation space and the protruding space are separated by walls. There appears to be no support for these limitations in the specification as filed. Therefore, they are considered new matter. Dependent claims are rejected based on their dependency to the claims rejected in detail above. 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. 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. Claims 1-7, 11, 18, and 22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1 states “the second accommodation space is formed at a first side of an upper side of the first accommodation space and extends outward from one side of a lateral portion of the first accommodation space”. It is unclear how the first side, the upper side, one side, and the later portion of the first accommodation space are related. Claim 1 also refers to an outer side and a second side of the first accommodation space. In is unclear if these sides are all different, or not? These sides do not appear to be labeled in the drawings. Claim 1 states “an electronic component” (singular) in line 5 and later states “the electronic components” (plural). It is unclear how many components are being claimed. Claims 3, 7, and 11 refer the electronic component which makes it unclear what is being claimed. Claim 1 states “one ends” in line 6. It is unclear what is being claim as the grammar is incorrect. Dependent claims are rejected based on their dependency to the claims rejected in detail above. Claim Rejections - 35 USC § 103 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 correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. 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. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. Claim(s) 1-4, 7, 12, 18-20 under this heading are rejected under 35 U.S.C. 103 as being unpatentable over Okochi US 20210239106 in view of Guntermann US 20190331360. Okochi discloses: 1. An electric compressor comprising: an inverter housing (32, 40) in which an inverter component 56 for controlling a motor is disposed, the inverter housing having a through-hole 52 formed in one side surface thereof; an electronic component (45 or 46) installed in the inverter housing and having an exposed portion including one end protruding and exposed toward the motor through the through-hole (see e.g. Fig 2); and a motor housing 13 coupled to the inverter housing and including an internal space in which the motor 17 is disposed (see e.g. Fig 2), an accommodation space provided in an outer portion of a lateral portion of the motor housing (see space formed by stepped surface 133e in e.g. Fig 2 on the outside portion of the motor housing 13 and which is a lateral portion [upper lateral/side portion] of the motor housing as in Fig 4) and separated from the internal space by a single partition wall (see e.g. 13a in Fig 2), the internal space and the accommodation space being integrally formed within the motor housing (see e.g. Fig 2) and the exposed portion of the electronic component being inserted into the accommodation space (see e.g. Figs 2-5 wherein 45 and 46 are inserted into the space formed by stepped surface 133e in Fig 2); wherein the accommodation space comprises a first accommodation space and a second accommodation space (see annotated Fig 4 herein where accommodation spaces are shown as spaces enclosed by dotted lines [1st accommodation space], dashed lines [2nd accommodation space], and combination of dashed and dotted lines [protrusion space]), the first accommodation space being formed in the outer portion of the lateral portion of the motor housing at an upper side of the motor housing (see annotated Fig 4 herein wherein any side can be the upper side such as the upper side shown by the orientation of the compressor in Figs 2-3 below or alternatively the upper side as show in Fig 4) and separated from the internal space (see e.g. Fig 2), and the second accommodation space extending outward from a lateral portion of the first accommodation space (see annotated Fig 4 herein), wherein the second accommodation space is formed at a first side of an upper side of the first accommodation space and extends outward from one side of the lateral portion of the first accommodation space (see annotated Fig 4 herein), and a protruding space is formed in the inverter housing and protrudes to be disposed at a lateral side of the second accommodation space (see annotated Fig 4 herein), the protruding space being disposed at a second side of the upper side of the first accommodation space that is opposite the first side of the upper side (see annotated Fig 4 herein), wherein the second accommodation space is located between the first accommodation space and the protruding space (see annotated Fig 4 herein), wherein the second accommodation space and the protruding space are disposed adjacent to an outer side of the lateral portion of the first accommodation space (see annotated Fig 4 herein), wherein the electronic components include a capacitor 45 installed in the first accommodation space, and connector 34 disposed at the protruding space. PNG media_image1.png 391 533 media_image1.png Greyscale PNG media_image2.png 805 788 media_image2.png Greyscale Okochi does appear to disclose a filter 46 but does not appear to disclose a filter is installed in the second accommodation space. However, Guntermann discloses placement of a filter 16 adjacent to a capacitor 17 and positioned laterally on a side of the capacitor facing the protruding space of the inverter housing (see e.g. Fig 4B). Additionally, MPEP 2144.04 V.I. C. makes it clear that a mere rearrangement of parts that does not modify operation of the compressor is held obvious to one of ordinary skill in the art. Thus, a mere change in location of a high voltage filter and capacitor without any change in operation of the compressor is an obvious modification [see In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975)]. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to dispose a high-voltage filter and a capacitor on the circuit board of Okochi such that the high voltage filter was adjacent to the lateral side of the capacitor facing the protruding space of the inverter housing (see proposed modification below) as taught by Guntermann to gain the benefit positioning the high voltage filter at a known configuration in relation to a capacitor of an inverter for an electric compressor. PNG media_image3.png 751 779 media_image3.png Greyscale PNG media_image4.png 476 403 media_image4.png Greyscale PNG media_image5.png 732 796 media_image5.png Greyscale Okochi as modified above discloses (references to Okochi unless noted otherwise): 2. The electric compressor of claim 1, wherein the inverter housing comprises a front cover 32 and a rear cover 40, and the through-hole is formed in the front cover and positioned adjacent to the motor (see e.g. Figs 2-5). 3. The electric compressor of claim 1, wherein the accommodation space of the motor housing is open at one end thereof, and the exposed portion of the electronic component is inserted into the accommodation space through the open end (see e.g. Figs 2-3). 4. The electric compressor of claim 3, wherein the motor housing has a coupling surface 13e coupled to the inverter housing, and the accommodation space of the motor housing is disposed on the same plane as the coupling surface and opened toward the inverter housing (see e.g. Figs 2-3). 7. The electric compressor of claim 1, further comprising: a printed circuit board 44 on which a switching element (see e.g. 0026) and the electronic component are installed (see e.g. Fig 2), wherein the printed circuit board is embedded in the inverter housing (see e.g. Fig 2 and 5). 18. The electric compressor of claim 1, wherein the connector 33 is electrically connected to a printed circuit board 44 in the inverter housing (see e.g. 0023 wherein the external power is connected via 33 and the circuit board has the power module thereon as in 0026 and the power is supplied from the circuit board 44 to the motor via 55 and 47 from the circuit board 44 as in 0037. Thus, the power from 33 is connected to 44 before being transferred from 44 to the motor via 55 and 47.). 19. The electric compressor of claim 1, wherein the internal space and the accommodation space of the motor housing are separated from each other (by 13a) and integrally formed within the motor housing (see e.g. Fig 2). 20. (New) The electric compressor of claim 1, wherein the second accommodation space is located between the first accommodation space the protruding space (see e.g. proposed modification above). Additionally, MPEP 2144.04 V.I. C. makes it clear that a mere rearrangement of parts that does not modify operation of the compressor is held obvious to one of ordinary skill in the art. Thus, a mere change in location of a high voltage filter and capacitor without any change in operation of the compressor is an obvious modification [see In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975)]. 22. (New) The electric compressor of claim 1, where the first accommodation space, the second accommodation space and the protruding space are separated by walls (the outer wall of the filter and the outer wall of the capacitor both separate these two elements from each other, and the wall 51 separates the connector from the capacitor and the filter). Claim(s) 1, 3, 7, 12, 18-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi WO2023228650A1. Kobayashi discloses: 1. An electric compressor comprising: an inverter housing 25 in which an inverter component (8 and/or 63C) for controlling a motor is disposed, the inverter housing having a through-hole formed in one side surface thereof (see the through hole in the bottom of 25 which receives the top portion of 8); an electronic component 9 installed in the inverter housing and having an exposed portion 73B including one end protruding and exposed toward the motor through the through-hole (see e.g. Fig 1); and a motor housing 2 coupled to the inverter housing and including an internal space in which the motor 3 is disposed (see e.g. Fig 1), an accommodation space (portion of 22 which is occupied by 73) provided in an outer portion of a lateral portion of the motor housing at an upper side of the motor (see e.g. Fig 1) and separated from the internal space by a single partition wall 23, the internal space and the accommodation space being integrally formed within the motor housing (see Figs 1 and 9A), and the exposed portion of the electronic component being inserted into the accommodation space (see e.g. Figs 2 and 9A-9B); wherein the accommodation space comprises a first accommodation space and a second accommodation space (see annotated Fig 7 herein where accommodation spaces are shown as spaces enclosed by dotted lines [1st accommodation space], dashed lines [2nd accommodation space], and combination of dashed and dotted lines [protrusion space]), the first accommodation space being formed in the outer portion of the lateral portion of the motor housing at an upper side of the motor and separated from the internal space (see annotated Fig 7 herein), and the second accommodation space extending outward from a lateral portion of the first accommodation space (see annotated Fig 7 herein), wherein the second accommodation space is formed at a first side of an upper side of the first accommodation space and extends outward from one side of the lateral portion of the first accommodation space (see annotated Fig 7 herein), and a protruding space is formed in the inverter housing and protrudes to be disposed at a lateral side of the second accommodation space (see annotated Fig 7 herein), the protruding space being disposed at a second side of the upper side of the first accommodation space that is opposite the first side of the upper side (see annotated Fig 7 herein), wherein the second accommodation space is located between the first accommodation space and the protruding space (see annotated Fig 7 herein), wherein the second accommodation space and the protruding space are disposed adjacent to an outer side of the lateral portion of the first accommodation space (see annotated Fig 7 herein), wherein the electronic components include a capacitor (see annotated Fig 7 herein) is installed in the first accommodation space, a filter (723 of 70) is installed in the second accommodation space, and a connector (31 and 13) disposed at the protruding space. Additionally, MPEP 2144.04 V.I. C. makes it clear that a mere rearrangement of parts that does not modify operation of the compressor is held obvious to one of ordinary skill in the art. Thus, a mere change in location of a high voltage filter and capacitor without any change in operation of the compressor is an obvious modification [see In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975)]. PNG media_image6.png 842 532 media_image6.png Greyscale PNG media_image7.png 856 665 media_image7.png Greyscale Kobayashi as modified above discloses (references to Kobayashi unless noted otherwise): 3. The electric compressor of claim 1, wherein the accommodation space of the motor housing is open at one end thereof, and the exposed portion of the electronic component is inserted into the accommodation space through the open end (see e.g. Figs 1). 7. The electric compressor of claim 1, further comprising: a printed circuit board 8 on which a switching element 61 and the electronic component are installed (see e.g. Fig 1), wherein the printed circuit board is embedded in the inverter housing (see e.g. Fig 1) 18. The electric compressor of claim 1, wherein the connector (31, 13) is electrically connected to a printed circuit board 8 in the inverter housing (see e.g. Figs 1 and 9). 20. (New) The electric compressor of claim 1, wherein the second accommodation space is located between the first accommodation space the protruding space (see e.g. annotated Fig 7 herein). Additionally, MPEP 2144.04 V.I. C. makes it clear that a mere rearrangement of parts that does not modify operation of the compressor is held obvious to one of ordinary skill in the art. Thus, a mere change in location of a high voltage filter and capacitor without any change in operation of the compressor is an obvious modification [see In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975)]. Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi WO2023228650A1 in view of Chikaoka US 20160245283. Regarding claim 11, in annotated Fig 1 herein Kobayashi discloses the connector 13 overlaps the motor 3 and the electronic component 73 slightly overlaps the motor stator (see the dotted line in annotated Fig 1 herein). Applicant’s connector includes the connector pins (see 400 in applicant’s Fig 2), so the connector 13 including the connector pins 31 overlaps the electronic component 73 as in annotated Fig 9 herein. Thus, Kobayashi meets the limitations of the claim. Additionally, it would be obvious to make the electronic component 70/73 longer and therefore overlap the motor further. For example, Chikaoka discloses an electronic component that extends to overlap the motor (see annotated Fig 2 herein). Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to have the electronic component of Kobayashi overlap the motor as taught by Chikaoka to gain the benefit of allowing a longer electronic component to be installed when desired. PNG media_image8.png 704 918 media_image8.png Greyscale PNG media_image9.png 378 476 media_image9.png Greyscale Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okochi US 20210239106 in view of Guntermann US 20190331360 in further view of Richter US 20240098925. Okochi as modified above discloses: 5. The electric compressor of claim 1, wherein a rear end surface 13e of the motor housing 13 and a rear end surface of the accommodation space (top of 133e at 13e) are coupled to a front end surface of the inverter housing (surface of 32 which engages 13e). Okochi discloses a gasket 53 on the side of the motor housing, but does not appear to disclose a gasket is provided between the coupled rear end surface of the motor housing, the coupled rear end surface of the accommodation space, and the coupled front end surface of the inverter housing. However, if the gasket of Okochi were located on the end of the motor housing facing the inverter housing, the limitations would be met. For example, Richter disclose the use of a gasket 8 between the rear face of the motor housing 5 and the front face of inverter housing 2. A simple substitution of one interface and associated gasket for an interface of a motor housing and inverter housing interface (the interface and associated gasket of Richter) for another (the interface and associated gasket of Okochi) with the predictable result of sealing an interface between a motor housing and an inverter housing has been held obvious as per MPEP 2143 I (B). Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to utilize a gasket between the rear face of the motor housing and the front face of the inverter housing as taught by Richter in the system of Okochi to gain the benefit “dust-tight and fluid-tight sealing” as taught by Richter in 0033. With this modification of Okochi in view of Richter, Okochi as modified above would disclose: a gasket (8 of Richter) is provided between the coupled rear end surface of the motor housing (13e of Okochi), the coupled rear end surface of the accommodation space (top of 133e at 13e of Okochi), and the coupled front end surface of the inverter housing (surface of 23 at 13e of Okochi). Okochi as modified above discloses: 6. The electric compressor of claim 5, wherein the gasket (8 of Richter) is formed along outer peripheral lines of the rear end surface of the motor housing (at 13e of 13 of Okochi) and the rear end surface of the accommodation space (top of 133e at 13e of Okochi) coupled to the front end surface of the inverter housing (surface of 23 at 13e of Okochi). Response to Arguments Applicant's arguments regarding the pending claims have been fully considered but they are not persuasive. As detailed in the rejections above, Kobayashi does disclose the limitations which applicant argues. As detailed in the rejections above, Okochi in view of Guntermann also disclose the limitations which applicant argues. It is noted that applicant has added new matter to the pending claims. Applicant argues: The Office Action admits this arrangement is not disclosed by Okochi, and Kobayashi does not separate the accommodation space into distinct first and second accommodation spaces with the claimed positional relationships. Examiner’s reply: It is unclear what “distinct” is referring to. Applicant argues: Kobayashi's accommodation space is a single continuous space, which does not provide the same structural advantages. Examiner’s reply: What is the single continuous space and how is applicant’s space not a continuous space? Applicant argues: Even in the alternate interpretation of Kobayashi on pages 15-16 of the Office Action, the second accommodation space is not at an upper side of the first accommodation space, among other differences. Examiner’s reply: Any side can be an upper side depending on the orientation of the compressor where the compressor can be positioned in any orientation. Applicant argues: In a compressor or devices with a motor / inverter, the location of electronic components directly affects several important operative aspects, such as heat dissipation and EMI shielding, which can negatively impact their function or cause them to fail (see, e.g. US2011/0043082). Accordingly, the electronic components cannot simply be arranged in any desired location. That is, the Office Action's repeated citation to MPEP 2144.04 and the legal precedent In re Kuhle is unavailing for several reasons. First, the location and mounting of electrical components does affect and modify their operation, and hence the operation of the entire compressor or motor, etc. Examiner’s reply: These are conclusory statements. No explanation is provided by applicant. Additionally, mere attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Because this assertion lacks support in the record, the assertion is given little weight. See, e.g., In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). It is noted that applicant provides no particular benefits for the entire claimed configuration which includes new matter. It is also noted that applicant refers to already known prior art whose teachings would be known to a person of ordinary skill in the art. Nowhere e.g. does applicant disclose any importance/criticality for “wherein the second accommodation space is located between the first accommodation space and the protruding space” or “where the first accommodation space, the second accommodation space and the protruding space are separated by walls”. Therefore, these locations are a matter of obvious design choice. Applicant argues: Second, the Office Action fails to make a prima facie case by its citation to legal precedent as a reason to modify the references without any explicit teaching, and without a factual comparison of the case and the present application. The Board of Patent Appeals routinely reverses obviousness rejections when they rely solely on legal principle. See, e.g. Ex Parte Nakhamkin, Appeal No. 2012/003291 (B.P.A.I. May 23, 2012). In the Nakhamkin case, the Board expressly found that it is improper to substitute a per se rule of obviousness in place of an explicit reasoning to modify the primary reference, and the Examiner's failure to provide a comparison between the facts of the cited case and the facts of the underlined application was insufficient to satisfy the Examiner's burden. Thus, the Board held that an examiner's identification of a per se rule of obviousness, without more, is insufficient to satisfy the examiner's burden since obviousness rejections "cannot be sustained by mere conclusory statements", citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). See also In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995) (holding that reliance solely on a per se rule of obviousness is improper), and Ex Parte Voden, 2010 W L 5127444 (B.P.A.I. 2010, Appeal 2010-006848) (holding that "the Examiner's 35 U.S.C. §103(a) rejection does not rest on sound evidentiary basis because reliance on per se rules of-8-obviousness is legally incorrect.") Here, reliance on a per se rule of obviousness with a factual comparison is improper, a prima facie case has not been made. Examiner’s reply: Guntermann and Kobayashi provide the explicit teaching. Applicant argues: The present application positions the electronic components in a separated accommodation space at the upper side of the motor housing, providing advantages in packaging flexibility (accommodating larger components without interfering with the motor) and heat dissipation (spatial separation from the motor). These technical advantages demonstrate that the claimed arrangement is not a mere rearrangement of parts under MPEP 2144.04. Examiner’s reply: The prior art teaches this claimed arrangement and therefore offers the same advantages. It is noted that applicant’s disclosure does not provide any advantages for the Applicant argues: Attention is also directed to new claim 22, which recites that the first accommodation space, the second accommodation space and the protruding space are separated by walls. Support is found in at least Fig. 5 which shows one embodiment of these spaces, e.g. 222, 224, 132. As noted above, Kobayashi does not separate the accommodation space into distinct first and second accommodation spaces with the claimed positional relationships. Examiner’s reply: These limitations include new matter. Applicant argues: With regard to Okochi, it is also respectfully submitted that Okochi forms its accommodation space in the inverter housing, and not in the motor housing. As seen in the figures of Okochi such as Fig. 1, the skilled artisan will consider the circuit board 44 and its capacitor 45 to be installed in the inverter case 30. Unlike Ochai, Claim 1 recites a single partition wall separating the internal space from the accommodation space, that these spaces are integrally formed within the motor housing, and that the capacitor installed in the first accommodation space. For all of these reasons, Applicant respectfully requests that the Examiner reconsider and withdraw these rejections. Examiner’s reply: Okochi was used to teach relative placement of the capacitor and filter. This claimed relative placement is already known as per Okochi. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS ANDREW FINK whose telephone number is (571)270-3373. The examiner can normally be reached on M-W 9-7. 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 571-270-4373. 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. /Thomas Fink/Primary Examiner, Art Unit 3746
Read full office action

Prosecution Timeline

Oct 31, 2023
Application Filed
May 27, 2025
Non-Final Rejection mailed — §103, §112
Aug 27, 2025
Response Filed
Jan 26, 2026
Final Rejection mailed — §103, §112
Mar 26, 2026
Request for Continued Examination
Apr 17, 2026
Response after Non-Final Action
May 20, 2026
Non-Final Rejection mailed — §103, §112 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12638009
RADIAL PISTON PUMP, AND PROCESS FOR MANUFACTURING A RADIAL PISTON PUMP
2y 6m to grant Granted May 26, 2026
Patent 12631165
ROTARY SWASH PLATE HYDRAULIC PUMP
1y 7m to grant Granted May 19, 2026
Patent 12623238
AIRLESS HANDHELD SPRAYER REPAIR
1y 5m to grant Granted May 12, 2026
Patent 12607196
Shaft seal for airtight rotatable guiding of a wave through a wall
3y 0m to grant Granted Apr 21, 2026
Patent 12607193
FAN NOISE CONTROL METHOD AND FAN NOISE CONTROL DEVICE
2y 5m to grant Granted Apr 21, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

Strategy Recommendation AI-generated — please review before filing

Get a prosecution strategy drawn from examiner precedents, rejection analysis, and claim mapping.
Typically takes 5-10 seconds — AI-generated, attorney review required before filing

Prosecution Projections

3-4
Expected OA Rounds
65%
Grant Probability
97%
With Interview (+32.3%)
2y 10m (~3m remaining)
Median Time to Grant
High
PTA Risk
Based on 545 resolved cases by this examiner. Grant probability derived from career allowance rate.

Sign in with your work email

Enter your email to receive a magic link. No password needed.

Personal email addresses (Gmail, Yahoo, etc.) are not accepted.

Free tier: 3 strategy analyses per month