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 .
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 23 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 the first accommodation space being formed in the outer portion of the outer radial portion of the motor housing, and also states wherein the electronic components include a capacitor installed in the first accommodation space. 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 23 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 first accommodation space being formed in the outer portion of the outer radial portion of the motor housing”, and also states “wherein the electronic components include a capacitor installed in the first accommodation space”. In applicant’s Figs 4-5, the space in which element 110 is disposed is not located in the outer portion of the outer radial portion of the motor housing. Therefore, these claim limitations conflict with the specification as filed causing the intended scope of the claim to be unclear. See MPEP 2173.03: "A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. In re Moore, 439 F.2d 1232, 1235-36,169 USPQ 236, 239 (CCPA 1971); In re Cohn, 438 F.2d 989,169 USPQ 95 (CCPA 1971); In re Hammock, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970).".
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, 3-4, 7, 10, 18, 23 are rejected under 35 U.S.C. 103 as being unpatentable over Hyodo US 20140054991 in view of Guntermann US 20190331360.
Hyodo discloses:
1. (Currently Amended) An electric compressor comprising: an inverter housing 38 in which an inverter component 27 for controlling a motor is disposed, the inverter housing having a through-hole formed in one side surface thereof (open portion of 28 on the left side in Fig 1 which has a through hole on the left side through which portion of 37 and 40 extend through 27 inside 28); electronic components (37, 40) installed in the inverter housing and having exposed portions protruding and exposed toward the motor through the through-hole (37 and 40 extend through 27 installed inside 28, through the open left side through-hole of 28, and protrude and are exposed toward the motor as best understood); and a motor housing (13, 26 wherein applicant’s motor housing is also an inverter component housing and wherein 26 forms a portion of the housing of the motor 9 which makes 26 a motor housing in the same manner as applicant’s motor housing) coupled to the inverter housing (via 32) and including an internal space in which the motor is disposed (see 9 inside 13), the motor housing having axial ends spaced apart along a motor axis, the inverter housing attached to the motor housing at one of the axial ends (see Fig 1), the motor housing defining an accommodation space (see annotated Fig herein) provided in an outer radial portion of the motor housing (see Fig 1) and separated from the internal space by a single partition wall (see e.g. annotated Fig 1 herein), the accommodation space being located adjacent to the one axial end and located radially outward relative to the internal space (see e.g. annotated Fig 1 herein), the internal space and the accommodation space being integrally formed within the motor housing (the spaces in which the motor 9 and the electronic components 37, 40 are disposed are all integrally formed spaces within the motor housing (13, 26), and the exposed portions of the electronic components (exposed portions of 37, 40) being inserted into the accommodation space (see annotated Fig 1 herein), wherein the accommodation space comprises a first accommodation space, the first accommodation space being formed in the outer portion of the outer radial portion of the motor housing at an upper side of the motor and separated from the internal space (as best understood, see space in which 37 is installed in the accommodation space), wherein a protruding space (see annotated Fig 1 herein) is formed in the inverter housing, extends radially outwardly, and is disposed at an other lateral side of the upper side of the first accommodation space (see annotated Fig 1 herein wherein the protrusion space is positioned at an other lateral side of the upper side of the first accommodation space wherein only a portion of applicant’s connector is disposed in the inverter housing as shown in applicant’s figures) wherein the electronic components include a capacitor 37 installed in the first accommodation space, and a connector 40 is disposed at the protruding space (see e.g. annotated Fig 1 herein).
As best understood, Hyodo does not appear to disclose a second accommodation space wherein the second accommodation space is formed at one lateral side of an upper side of the first accommodation space and extends radially outward from the first accommodation space, and a filter installed in the second accommodation space.
However, Guntermann discloses a second accommodation space (see e.g. space in which 16 is disposed) wherein the second accommodation space is formed at one lateral side of an upper side of the first accommodation space (see e.g. space in which 17 is disposed) and extends radially outward from the first accommodation space (see e.g. Fig 4B) and a filter 16 installed in the second accommodation space (see e.g. Fig 4B).
Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to dispose a filter adjacent to the capacitor as taught by Guntermann in the system of Hyodo to gain the benefit of filtering electromagnetic interference.
Additionally, the limitations of claims 1 in which the particular positioning of the accommodation spaces are detailed are not disclosed in the specification as filed as solving a stated problem or providing any unexpected result as compared to the prior art cited in the rejections above and thus the use of these claimed positions "would be an obvious matter of design choice within the skill of the art". See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use of the claimed feature solves no stated problem and presents no unexpected result and "would be an obvious matter of design choice within the skill of the art"). This is evidenced by applicant’s own specification where multiple embodiments are show having electronic components rearranged in different positions for each embodiment and the positioning of the accommodation spaces in each embodiment are not detailed in the specification as filed as solving a corresponding different stated problem or providing any corresponding different unexpected result corresponding to each of these different embodiments as compared to the prior art cited in the rejections above. Also, neither the compressor nor the inverter would function differently based on these claimed positions of the accommodation spaces as compared to the prior art cited above. See In re Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995) ("design choice" is appropriate where the applicant fails to set forth any reasons why the differences between the claimed invention and the prior art would result in a different function). This is evidenced by applicant’s own specification where multiple embodiments are show having electronic components rearranged in different positions for each embodiment and the positioning of the accommodation spaces in each embodiment are not detailed in the specification as filed as causing the compressor to function differently corresponding for each of these different embodiments as compared to the prior art cited in the rejections Therefore, these claims positions of the accommodation spaces would be an obvious matter of design choice within the skill of a person of ordinary skill in the art which would be achieved simply by a mere rearrangement of parts. See 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 rearrangement of the parts of the inverter 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 filter adjacent and radially outward to the capacitor as taught by Guntermann in the system of Hyodo to gain the benefit of filtering electromagnetic interference.
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Hyodo as modified above discloses:
3. (Currently Amended) The electric compressor of claim 1, wherein the accommodation space of the motor housing is open at one end thereof, and the exposed portions of the electronic components are inserted into the accommodation space through the open end (see e.g. Fig 1).
4. (Original) The electric compressor of claim 3, wherein the motor housing has a coupling surface coupled to the inverter housing (rightmost surface of 26 at 28), 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. Fig 1).
7. (Currently Amended) The electric compressor of claim 1, further comprising: a printed circuit board 27 on which a switching element 36 and the electronic components are installed (see e.g. Fig 1), wherein the printed circuit board is embedded in the inverter housing (see e.g. Fig 1).
10. (Cancelled) 11. (Currently Amended) The electric compressor of claim 1, wherein the connector, the capacitor, and the motor are disposed to overlap one another in an upward/downward direction (see e.g. Fig 1).
18. (Previously Presented) The electric compressor of claim 1, wherein the connector is electrically connected to a printed circuit board in the inverter housing (see e.g. annotated Fig 1 herein).
23. (New) The electric compressor of claim 1, wherein the accommodation space is located radially outward of an axial projection of the internal space (see e.g. Fig 1).
Claim(s) 2 is rejected under 35 U.S.C. 103 as being unpatentable over Hyodo US 20140054991 in view of Guntermann US 20190331360 in further view of Lee US 20260177046.
Hyodo does not disclose the limitations of claim 2.
Lee discloses wherein the inverter housing comprises a front 100 cover and a rear cover 300, and the through-hole is formed in the front cover (see e.g. Fig 2) and positioned adjacent to the motor (see Fig 2).
Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to utilize a front and rear cover for the inverter housing as taught by Lee in the system of Hyodo as modified above to gain the benefit of providing additional space for inverter components and/or in order to allow shielding from an electromagnetic wave's interference even if the inverter body 100 as taught by Lee in 0054.
Claim(s) 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Hyodo US 20140054991 in view of Guntermann US 20190331360 in further view of Richter US 20240098925.
Regarding claims 5-6, Hyodo as modified above discloses wherein a rear end surface of the motor housing (rightmost surface of 26) and a rear end surface of the accommodation space are coupled to a front end surface of the inverter housing (leftmost surface of 28).
Regarding the limitations “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”, see annotated Fig 1 of Hyodo which has a gasket between 28 and 26. Regarding the limitations “wherein the gasket is formed along outer peripheral lines of the rear end surface of the motor housing and the rear end surface of the accommodation space coupled to the front end surface of the inverter housing”, (see annotated Fig 1 of Hyodo which has a gasket between 28 and 26).
Additionally, Ritcher discloses “a gasket 25 is provided between the coupled rear end surface of the motor housing 20, the coupled rear end surface of the accommodation space (see Fig 5B), and the coupled front end surface of the inverter housing 24” (see Fig 5F); and “wherein the gasket 25 is formed along outer peripheral lines of the rear end surface of the motor housing 20 and the rear end surface of the accommodation space (see Fig 5B) coupled to the front end surface of the inverter housing 24” (see Fig 5F).
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 as taught by Richter in the system of Hyodo as modified above to gain the benefit of sealing the housing to prevent contaminants from affecting the inverter.
Response to Arguments
Regarding the prior art rejections, applicant’s arguments with respect to the pending claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues:
Applicants also reiterate their comments regarding the Office Action's reliance on MPEP 2144.04 V.I. C., and citation to In re Kuhle., for the proposition that "a mere change in location of a high voltage filter and capacitor without any change in operation of the compressor is an obvious modification" (pg. 11 of Office Action). In short, the location and mounting of electrical components does affect and modify their operation, and hence the operation of the entire compressor or motor (see US2011/0043082), and the Board and courts routinely reverse obviousness rejections that rely on a per se rule of obviousness, without comparing the facts of the cited case to the present facts. Ex Parte Nakhamkin, Appeal No. 2012/003291 (B.P.A.I. May 23, 2012); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995); Ex Parte Voden, 2010 WL 5127444 (B.P.A.I. 2010, Appeal 2010-006848). The Office Action has failed to make a prima facie case because several proposed modifications to the references are only supported by conclusory statements and a per se rule of obviousness.
Examiner’s reply:
Applicant references an entire patent publication which does not appear to disclose the particular features claimed in claim 1, and then somehow makes a conclusory statement directed to the particular features claimed in claim 1. Since applicant has not explained how that patent publication proves that the specific features claimed in claim 1 change the function of the compressor of the cited prior art, applicant’s arguments are entitled to little probative value. 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.”).
Does that patent publication contain the particular accommodation spaces specified in claim 1? Applicant is asked for a full, logical explanation.
Does that patent publication contain the particular accommodation spaces in the particular locations specified in claim 1? Applicant is asked for a full, logical explanation.
Does that patent publication contain evidence that the particular accommodation spaces in the particular locations specified in claim 1 changes the function of the compressor as compared to the prior art references cited in the rejections above? Applicant is asked for a full, logical explanation.
Does that patent publication contain evidence that the particular accommodation spaces in the particular locations specified in claim 1 provide a stated benefit or provide unexpected results as compared to the prior art references cited in the rejections above? Applicant is asked for a full, logical explanation.
Additionally, the limitations of claim 1 in which the particular positioning of the accommodation spaces are detailed are not disclosed in the specification as filed as solving a stated problem or providing any unexpected result as compared to the prior art cited in the rejections above and thus the use of these claimed positions "would be an obvious matter of design choice within the skill of the art". See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use of the claimed feature solves no stated problem and presents no unexpected result and "would be an obvious matter of design choice within the skill of the art"). This is evidenced by applicant’s own specification where multiple embodiments are show having accommodation spaces rearranged in different positions for each embodiment and the positioning of the accommodation spaces in each embodiment are not detailed in the specification as filed as solving a corresponding different stated problem or providing any corresponding different unexpected result corresponding to each of these different embodiments as compared to the prior art cited in the rejections above. In claim 1, applicant broadly claims these multiple different embodiments where the accommodation spaces are simply rearranged between the different embodiments. Do each of these different rearrangements solve corresponding different stated problem of the compressor that differs from each other given their different rearrangements of the accommodation spaces? Do each of these different rearrangements provide different unexpected results of the compressor that differ from each other given their different rearrangements of the accommodation spaces? Applicant is asked for a full logical explanation.
Also, neither the compressor nor the inverter would function differently based on these claimed positions of the accommodation spaces as compared to the prior art cited above. See In re Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995) ("design choice" is appropriate where the applicant fails to set forth any reasons why the differences between the claimed invention and the prior art would result in a different function). This is evidenced by applicant’s own specification where multiple embodiments are show having accommodation spaces rearranged in different positions for each embodiment and the positioning of the accommodation spaces in each embodiment are not detailed in the specification as filed as causing the compressor to function differently corresponding for each of these different embodiments as compared to the prior art cited in the rejections. In claim 1, applicant broadly claims these multiple different embodiments where the accommodation spaces are simply rearranged between the different embodiments. Do each of these different rearrangements cause compressor to function differently from each other given their different rearrangements of the accommodation spaces? Applicant is asked for a full logical explanation.
Therefore, these claims positions of the accommodation spaces would be an obvious matter of design choice within the skill of a person of ordinary skill in the art which would be achieved simply by a mere rearrangement of parts as evidenced by applicant’s own specification. This is evidenced by applicant’s own specification where multiple embodiments are show having accommodation spaces rearranged in different positions for each embodiment and the positioning of the accommodation spaces in each embodiment are not detailed in the specification as filed as causing the compressor to operate differently corresponding for each of these different embodiments as compared to the prior art cited in the rejections. In claim 1, applicant broadly claims these multiple different embodiments where the accommodation spaces are simply rearranged between the different embodiments. Do each of these different rearrangements cause compressor to operate differently from each other given their different rearrangements of the accommodation spaces? Applicant is asked for a full logical explanation.
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.
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-Th 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.
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/Thomas Fink/Primary Examiner, Art Unit 3746
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