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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 03/26/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
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Claims 1-2 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of copending Application No. 18618612. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Application 118617073
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.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 3-7 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 3-7 of copending Application No. 18618612. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Application 118617073
Application 18618612
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.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 2 and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oda et al. (US PG Pub 2015/0159668).
As to independent claim 1, Oda et al. teaches a rotary electric machine housing (20) configured to accommodate a rotary electric machine (10), the rotary electric machine housing (20) comprising: a body portion (inside of 20) having an accommodation space in which the rotary electric machine is accommodated; a gas flow path (S1) provided in the body portion (inside of 20) and through which a gas to be supplied to the rotary electric machine (10) flows; an oil flow path (S5) provided in the body portion (inside of 20) and through which an oil to be supplied to the rotary electric machine (10) flows; and a refrigerant flow path (X1, X2) provided in the body portion (inside of 20) and through which a refrigerant flows inside, wherein the refrigerant flow path (X1, X2) includes: a rotary electric machine heat exchange part (S3) in which the refrigerant exchanges heat with the rotary electric machine (10) ; a gas heat exchange part (4) in which the refrigerant exchanges heat with the gas flowing through the gas flow path (S1); and an oil heat exchange part (S4) in which the refrigerant exchanges heat with the oil flowing through the oil flow path (S5), and the rotary electric machine heat exchange part (S3) is provided downstream of the gas heat exchange part (S3) and the oil heat exchange part (S4) in a flow direction of the refrigerant (X1) as shown in figure 1.
As to claim 2/1, Oda et al. teaches wherein the gas heat exchange part (4), the oil heat exchange part (S4), and the rotary electric machine heat exchange part (S3) are provided in series along the flow direction of the refrigerant (X1) as shown in figure 1.
As to claim 5/1, Oda et al. teaches wherein the rotary electric machine heat exchange part (has a cylindrical shape, and the gas heat exchange part (4) and the oil heat exchange part (S4) are disposed radially outward of the rotary electric machine heat exchange part (S3) as shown in figure 1.
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) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oda et al. (US PG Pub 2015/0159668) as applied in claim 1 above, and further in view of Sakota et al. (US PG Pub 2020/0256343).
As to claim 3/1, Oda 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 Oda 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
Oda 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 Oda 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 Oda et al. (US PG Pub 2015/0159668) as applied in claim 1 above, and further in view of Amagai (WO2022107429).
As to claim 4/1, Oda 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 Oda 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
Oda 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 Oda 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 Oda et al. (US PG Pub 2015/0159668) as applied in claim 1 above, and further in view of Hafner et al. (US PG Pub 2021/0123348).
As to claim 7/1, Oda 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 Oda 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.
Oda 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 Oda et al. in view of Amagai 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)).
Allowable Subject Matter
Claim 6 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
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/JOSE A GONZALEZ QUINONES/Primary Examiner, Art Unit 2834 January 29, 2026