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 .
Continued Examination Under 37 CFR 1.114
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 allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). 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, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 08/24/2026 has been entered.
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive.
Argument:
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Because the claims of the instant application and the copending application are not patentably distinct. Although the respective limitations concerning the serial arrangement and downstream positioning of the rotary electric machine heat exchange part appear in different claim levels, the claims, when considered as a whole, encompass patentably indistinct subject matter
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-11 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18618612. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Application 18617073
Application 18618612
1. A rotary electric machine housing configured to accommodate a rotary electric machine, the rotary electric machine housing comprising:
a body portion having an accommodation space in which the rotary electric machine is accommodated;
a gas flow path provided in the body portion and through which a gas to be supplied to the rotary electric machine flows;
an oil flow path provided in the body portion and through which an oil to be supplied to the rotary electric machine flows; and
a refrigerant flow path provided in the body portion and through which a refrigerant flows inside,
wherein the refrigerant flow path includes: a rotary electric machine heat exchange part in which the refrigerant exchanges heat with the rotary electric machine; a gas heat exchange part in which the refrigerant exchanges heat with the gas flowing through the gas flow path; and an oil heat exchange part in which the refrigerant exchanges heat with the oil flowing through the oil flow path, and
the rotary electric machine heat exchange part is provided downstream of the gas heat exchange part and the oil heat exchange part in a flow direction of the refrigerant
1. A rotary electric machine housing configured to accommodate a rotary electric machine, the rotary electric machine housing comprising:
a body portion having an accommodation space in which the rotary electric machine is accommodated;
a gas flow path provided in the body portion and through which a gas to be supplied to the rotary electric machine flows;
an oil flow path provided in the body portion and through which an oil to be supplied to the rotary electric machine flows; and
a refrigerant flow path provided in the body portion and through which a refrigerant flows inside,
wherein the refrigerant flow path includes: a rotary electric machine heat exchange part in which the refrigerant exchanges heat with the rotary electric machine; a gas heat exchange part in which the refrigerant exchanges heat with the gas flowing through the gas flow path; and an oil heat exchange part in which the refrigerant exchanges heat with the oil flowing through the oil flow path, and
the rotary electric machine heat exchange part, the gas heat exchange part, and the oil heat exchange part are provided in series along a flow direction of the refrigerant.
2. The rotary electric machine housing according to claim 1, wherein the gas heat exchange part, the oil heat exchange part, and the rotary electric machine heat exchange part are provided in series along the flow direction of the refrigerant.
2. The rotary electric machine housing according to claim 1, wherein the rotary electric machine heat exchange part is provided downstream of the gas heat exchange part and the oil heat exchange part in the flow direction of the refrigerant.
3. The rotary electric machine housing according to The rotary electric machine housing according to wherein the gas flow path and the gas heat exchange part of the refrigerant flow path extend in an axial direction of the rotary electric machine, and a flow direction of the refrigerant flowing through the gas heat exchange part is opposite to a flow direction of the gas flowing through the gas flow path
3. The rotary electric machine housing according to The rotary electric machine housing according to wherein the gas flow path and the gas heat exchange part of the refrigerant flow path extend in an axial direction of the rotary electric machine, and a flow direction of the refrigerant flowing through the gas heat exchange part is opposite to a flow direction of the gas flowing through the gas flow path
4. The rotary electric machine housing according to claim 1, wherein the oil flow path and the oil heat exchange part of the refrigerant flow path extend in an axial direction of the rotary electric machine, and a flow direction of the refrigerant flowing through the oil heat exchange part is opposite to a flow direction of the oil flowing through the oil flow path.
4. The rotary electric machine housing according to claim 1, wherein the oil flow path and the oil heat exchange part of the refrigerant flow path extend in an axial direction of the rotary electric machine, and a flow direction of the refrigerant flowing through the oil heat exchange part is opposite to a flow direction of the oil flowing through the oil flow path.
5. The rotary electric machine housing according to claim 1, wherein the rotary electric machine heat exchange part has a cylindrical shape, and the gas heat exchange part and the oil heat exchange part are disposed radially outward of the rotary electric machine heat exchange part
5. The rotary electric machine housing according to claim 1, wherein the rotary electric machine heat exchange part has a cylindrical shape, and the gas heat exchange part and the oil heat exchange part are disposed radially outward of the rotary electric machine heat exchange part
6. The rotary electric machine housing according to claim 5, wherein the body portion includes an outer wall having a cylindrical shape, the outer wall includes: a terminal arrangement portion provided with an electric terminal for transmitting and receiving electric power between the rotary electric machine and an external device; a gas flow path arrangement portion provided with the gas flow path and the gas heat exchange part; and an oil flow path arrangement portion provided with the oil flow path and the oil heat exchange part, and the terminal arrangement portion, the gas flow path arrangement portion, and the oil flow path arrangement portion are arranged at intervals of about 120 degrees in a circumferential direction of the body portion
6. The rotary electric machine housing according to claim 5, wherein the body portion includes an outer wall having a cylindrical shape, the outer wall includes: a terminal arrangement portion provided with an electric terminal for transmitting and receiving electric power between the rotary electric machine and an external device; a gas flow path arrangement portion provided with the gas flow path and the gas heat exchange part; and an oil flow path arrangement portion provided with the oil flow path and the oil heat exchange part, and the terminal arrangement portion, the gas flow path arrangement portion, and the oil flow path arrangement portion are arranged at intervals of about 120 degrees in a circumferential direction of the body portion
7. A manufacturing method of manufacturing the rotary electric machine housing according to claim 1 by additive manufacture, the manufacturing method comprising: integrally forming the body portion, the gas flow path, the oil flow path, and the refrigerant flow path.
7. A manufacturing method of manufacturing the rotary electric machine housing according to claim 1 by additive manufacture, the manufacturing method comprising: integrally forming the body portion, the gas flow path, the oil flow path, and the refrigerant flow path.
8. (New) The rotary electric machine housing according to The rotary electric machine housing according to claim 1 wherein each of the gas heat exchange part and the oil heat exchange part partially overlaps the rotary electric machine as viewed from a rotor shaft of the rotary electric machine in a radial direction.
8. The rotary electric machine housing according to The rotary electric machine housing according to claim 1 wherein each of the gas heat exchange part and the oil heat exchange part partially overlaps the rotary electric machine as viewed from a rotor shaft of the rotary electric machine in a radial direction.
9. (New) The rotary electric machine housing according to claim 1 wherein the gas is surrounded by the refrigerant.
9. The rotary electric machine housing according to claim 1 wherein the gas is surrounded by the refrigerant.
10. (New) The rotary electric machine housing according to claim 1 wherein the oil is surrounded by the refrigerant.
10. The rotary electric machine housing according to claim 1 wherein the oil is surrounded by the refrigerant.
11. (New) The rotary electric machine housing according to claim 1 wherein the gas flow path and the gas heat exchange part are provided between adjacent ribs.
11. The rotary electric machine housing according to claim 1 wherein the gas flow path and the gas heat exchange part are provided between adjacent ribs.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Satoshi (JP6428434) further in view of Le Besnerais (US PG Pub 2011/0266897) and Steinbauer et al. (US PG Pub 2013/0241283).
As to independent claim 1, Satoshi teaches a rotary electric machine housing (14) configured to accommodate a rotary electric machine (1), the rotary electric machine housing (14) comprising: a body portion (see figure 1) having an accommodation space in which the rotary electric machine (1) is accommodated; an oil flow path (17R) provided in the body portion (see figure 1) and through which an oil to be supplied to the rotary electric machine flows; and a refrigerant flow path (20R) provided in the body portion (see figure 1) and through which a refrigerant flows inside, wherein the refrigerant flow path (20R) includes: a rotary electric machine heat exchange part (18) in which the refrigerant exchanges heat with the rotary electric machine (1) and an oil heat exchange part (18) in which the refrigerant exchanges heat with the oil flowing through the oil flow path (8,9) as shown in figure 5.
However Satoshi teaches the claimed limitation as discussed above except a gas flow path provided in the body portion and through which a gas to be supplied to the rotary electric machine flows, a gas heat exchange part in which the refrigerant exchanges heat with the gas flowing through the gas flow path; and the rotary electric machine heat exchange part is provided downstream of the gas heat exchange part and the oil heat exchange part in a flow direction of the refrigerant
Le Besnerais teaches a gas to be supplied to the rotary electric machine flows (see paragraph [0025]), a gas heat exchange part (6) in which the refrigerant exchanges heat with the gas flowing through the gas flow path (4) and provided downstream of the gas heat exchange part (6) as shown in figure 3, for the advantageous benefit of providing proper cooling of the stator is achieved.
Steinbauer et al. teaches the rotary electric machine heat exchange part (35) is provided downstream the oil heat exchange part (35) in a flow direction of the refrigerant as shown in figure 5 and paragraph [0011] and [0037], for the advantageous benefit of providing cooling the electric machine.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made to modify Satoshi by using a gas flow path provided in the body portion and through which a gas to be supplied to the rotary electric machine flows, a gas heat exchange part in which the refrigerant exchanges heat with the gas flowing through the gas flow path; and the rotary electric machine heat exchange part is provided downstream of the gas heat exchange part and the oil heat exchange part in a flow direction of the refrigerant, as taught by Le Besnerais and Steinbauer et al., to provide proper cooling of the stator is achieved and cooling the electric machine.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Satoshi (JP6428434), Le Besnerais (US PG Pub 2011/0266897) and Steinbauer et al. (US PG Pub 2013/0241283 ) as applied in claim 1 above, and further in view of Sakota et al. (US PG Pub 2020/0256343).
As to claim 3/1, Satoshi in view of Le Besnerais and Steinbauer et al. teaches the claimed limitation as discussed above except wherein the gas flow path and the gas heat exchange part of the refrigerant flow path extend in an axial direction of the rotary electric machine, and a flow direction of the refrigerant flowing through the gas heat exchange part is opposite to a flow direction of the gas flowing through the gas flow path.
However Sakota et al. teaches the gas flow path (11) and the gas heat exchange part (9) of the refrigerant flow path extend in an axial direction of the rotary electric machine (1), and as shown in figure 2, for the advantageous benefit of reducing the radial size of the rotary electric machine housing.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made to modify Satoshi in view of Le Besnerais and Steinbauer et al.by using the gas flow path and the gas heat exchange part of the refrigerant flow path extend in an axial direction of the rotary electric machine, as taught by Sakota et al., to reduce the radial size of the rotary electric machine housing
Satoshi, Le Besnerais and Steinbauer et al. in view of Sakota et al. teaches the claimed limitation as discussed above except a flow direction of the refrigerant flowing through the oil heat exchange part is opposite to a flow direction of the gas flowing through the gas flow path.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made to modify Satoshi in view of Le Besnerais and Steinbauer et al.in view of Sakota et al. as it would have been obvious to try as choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, in this case the finite number of solutions being a flow direction of the refrigerant flowing through the oil heat exchange part is opposite to a flow direction of the gas flowing through the gas flow path as a matter of design choice to attempt to maximize the heat exchange rate between the two flows.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Satoshi (JP6428434), Le Besnerais (US PG Pub 2011/0266897) and Steinbauer et al. (US PG Pub 2013/0241283 ) as applied in claim 1 above, and further in view of Amagai (WO2022107429).
As to claim 4/1, Satoshi in view of Le Besnerais and Steinbauer et al. teaches the claimed limitation as discussed above except wherein the oil flow path and the oil heat exchange part of the refrigerant flow path extend in an axial direction of the rotary electric machine, and a flow direction of the refrigerant flowing through the oil heat exchange part is opposite to a flow direction of the oil flowing through the oil flow path.
However Amagai teaches the oil flow path (77) and the oil heat exchange part (10) of the refrigerant flow path extend in an axial direction of the rotary electric machine (77), as shown in figure 2, for the advantageous benefit of reducing the radial size of the rotary electric machine housing
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made to modify Satoshi in view of Le Besnerais and Steinbauer et al. by using the oil flow path and the oil heat exchange part of the refrigerant flow path extend in an axial direction of the rotary electric machine as taught by Amagai, to reduce the radial size of the rotary electric machine housing
Satoshi, Le Besnerais and Steinbauer et al. in view of Amagai teaches the claimed limitation as discussed above except a flow direction of the refrigerant flowing through the oil heat exchange part is opposite to a flow direction of the oil flowing through the oil flow path.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made to modify Satoshi, Le Besnerais and Steinbauer et al. in view of Amagai as it would have been obvious to try as choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success, in this case the finite number of solutions being a flow direction of the refrigerant flowing through the oil heat exchange part is opposite to a flow direction of the oil flowing through the oil flow path as a matter of design choice to attempt to maximize the heat exchange rate between the two flows.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Satoshi (JP6428434), Le Besnerais (US PG Pub 2011/0266897) and Steinbauer et al. (US PG Pub 2013/0241283) as applied in claim 1 above, and further in view of Hafner et al. (US PG Pub 2021/0123348).
As to claim 7/1, Satoshi in view of Le Besnerais and Steinbauer et al. teaches the claimed limitation as discussed above except by additive manufacture, the manufacturing method comprising: integrally forming the body portion, the gas flow path, the oil flow path, and the refrigerant flow path.
However, Hafner et al. teaches a manufacturing method of a cooling flow path created by additive manufacture (See paragraph [0065]), for the advantageous benefit of enabling the design and production of more customizable and intricate features of the cooling circuit.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made to modify Satoshi in view of Le Besnerais and Steinbauer et al. by using a manufacturing method of a cooling flow path created by additive manufacture as taught by Hafner et al., to reduce the radial size of the rotary electric machine housing.
Satoshi, Le Besnerais and Steinbauer et al. in view of Hafner et al. teaches the claimed limitation as discussed above except integrally forming the body portion, the gas flow path, the oil flow path and the refrigerant flow path.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made to modify Satoshi, Le Besnerais and Steinbauer et al. in view of Hafner et al. as it would have been obvious to modify the method by making the body portion integral to the flow paths as a matter of design choice to create a more mechanically robust single piece structure (see In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965)).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Satoshi (JP6428434), Le Besnerais (US PG Pub 2011/0266897) and Steinbauer et al. (US PG Pub 2013/0241283 ) as applied in claim 1 above, and further in view of Frost (3,743011).
As to claim 10/1, Satoshi in view of Le Besnerais and Steinbauer et al. teaches the claimed limitation as discussed above except wherein the oil is surrounded by the refrigerant.
However Frost teaches the oil (on the chamber 26) is surrounded by the refrigerant (on the chamber 21) as shown in figure 4, for the advantageous benefit of providing cooling to the oil.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made to modify Satoshi in view of Le Besnerais and Steinbauer et al. by using the oil is surrounded by the refrigerant as taught by Frost, to provide cooling to the oil.
Allowable Subject Matter
Claims 2, 5-6, 8-9 and 11 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE A GONZALEZ QUINONES whose telephone number is (571)270-7850. The examiner can normally be reached Monday-Friday: 6:30-2:30 EST.
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/JOSE A GONZALEZ QUINONES/Primary Examiner, Art Unit 2834 September 8, 2026
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