DETAILED ACTION
Amendments filed 18 December 2025 have been entered. The amendments, arguments, and evidence address all objections and 112 rejections of the previous office action. The objections, 112(f) interpretation are withdrawn due to the claim amendments. The 112(b) rejections are withdrawn due to claim amendments, argument and the submission of evidence of the known in the art definition of light metal. Claims 1-22 are pending.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
NOT INVOKED DESPITE PRESENCE
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are:
“spacer element” in claim 19. The term spacer provides sufficient structural description to perform the function of spacing.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 4-18, and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Dittrich (US 2002/0062657) in view of Bahmata (US 2012/0183422) in view of Schoegler (US 2013/0034456) in view of Strong (US 2002/0135244) in view of Grybush (US 2018/0291885).
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Annotations on Dittrich Fig 1
Claim 1, Dittrich discloses a refrigerant compressor (title) comprising an overall housing (fig 1, 10, par 0051) with a motor housing portion (portion of 10 holding motor 20), in which there is arranged a motor chamber (motor 20 is in 10) having, provided therein, an electric motor (20) comprising a stator (26) and a rotor (24), and with a compressor housing portion (11) which has a compressor unit (14a 14b), the overall housing has a first cover and a second cover (fig 1 depicts a first and second cover on either side of crankcase 11, See drawing above), between which a housing sleeve extends (central portion of crankcase 11), which has a motor housing portion (10) and a compressor housing portion (11) in which the compressor unit (14a,14b) is provided, the compressor housing portion has a cylinder housing (compressor housing 11 holds cylinder chambers 12a 12b and therefore meets the plain meaning of cylinder housing) with a cylinder head (cylinder head 40), the cylinder head has a cylinder head lower part (face of head 20 in contact with valve plate 30, par 0053) arranged on the cylinder housing which receives the cylinders, the cylinder head lower part carrying a valve plate (30) and on said valve plate there is arranged a cylinder head upper part (top of cylinder head 20) on a side opposite to said cylinder head lower part (bottom of cylinder head 20), which closes off the cylinder head lower part (top of cylinder head closes off the valves from the outside atmosphere and allows the compressor to function, par 0054).
Dittrich is silent on wherein the valve plate and the cylinder head upper part are made of steel, the housing sleeve has an approximately cylindrical shape, the housing sleeve and the covers as well as the cylinder head lower part are made of light metal.
Bahmata teaches a compressor housing sleeve (fig 4, cylindrical portion 20a) has a cylindrical shape (fig 4, 20a is called cylindrical, par 0020). It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to arrange the housing sleeve (11) of Dittrich in a cylindrical shape as taught by Bahmata for the expected result of accommodating a rotating electrical motor as is known in the art.
Schoegler teaches a refrigerant compressor where the valve plate (5) is made of steel (par 0080). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to select a known material based on its suitability for its intended use (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use (See MPEP 2144.07 In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960)). In this case, selecting steel is an art recognized suitable material for the valve plate of Dittrich due to its strength, workability and ready availability as a material.
Strong teaches an electric motor with a motor housing sleeve made of aluminum (par 0015). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to select a known material based on its suitability for its intended use (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use (See MPEP 2144.07 In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960)). In this case, selecting aluminum is an art recognized suitable material for the motor “housing sleeve” of Dittrich due to its response to heat (Strong, par 0015) and availability as a material.
Grybush teaches a compressor with end housings (26) made of cast material such as aluminum (par 0032) and head covers made of aluminum (par 0045). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to select a known material based on its suitability for its intended use (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use (See MPEP 2144.07 In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960)). In this case, selecting aluminum is an art recognized suitable material for compressor housing and a cover for said housing (par 0045) of Dittrich for the intended purpose of using a castable and easily workable metal (Grybush, par 0045).
Regarding claim 4, the combination teaches a refrigerant compressor according to claim 1, wherein the cylinder head lower part (Dittrich, fig 1, cylinder head 40 and valve plate 30 connects to crankcase 11, para 0054) in turn carries a cylinder head upper part (upper part of 40) which closes off the cylinder head lower part and has at least one outlet chamber (pressure chamber 38, para 0054) integrated therein, and wherein in that refrigerant connections guided into the overall housing are arranged either in the cylinder head upper part (fig 4, channel 60, section 64 are in head 40, par 0057, 0061, first of two alternately claimed) or in one of the covers (second of two alternately claimed).
Regarding claim 5, the combination teaches the refrigerant compressor according to claim 1. Dittrich does not disclose wherein said compressor is a two-stage compressor, and in that an outlet chamber for medium pressure and an outlet chamber for high pressure are provided in the cylinder head upper part.
Grybush further teaches the compressor is a two-stage compressor (par 0061), and in that an outlet chamber for medium pressure (fig 10-11, first stage exhaust 398, par 0061) and an outlet chamber for high pressure (fig 10-11, second stage exhaust 406, par 0061) are provided in a cylinder head upper part (fig 10-11, the cylinder head is configured with passages for first stage and second stage intake and exhaust, par 0061).
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the cylinder head controlling flow to intake and exhaust for the two compression cylinders of Dettrich to route passages for two-stage compressor as taught by Grybush to be able to reach higher compressor discharge pressures.
Regarding claim 6, the combination teaches a refrigerant compressor according to claim 1. Dittrich is silent on the refrigerant compressor is configured (Dittrich is a compressor and capable of compressing gas) for CO2 as refrigerant (CO2 as refrigerant does not limit the claim, See MPEP 2115). Material or article worked upon does not limit an apparatus claim (In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967), MPEP 2115). In this case the claim contains no further limitations than the particular gas pumped, and configuring the compressor to pump C02 does not express or imply any other particular structure in addition to the compressor configured to pump C02. Therefore, the C02 as refrigerant is an intended use of the machine and not germane to the issue of patentability of the machine itself.
Regarding claim 7, the combination teaches a refrigerant compressor according to claim 1. Dittrich does not teach wherein the stator is mounted in the motor housing portion by means of supporting elements inserted into the motor housing portion, which supporting elements on the one hand abut against a stator-receiving surface of the motor housing portion and on the other hand surround the stator inserted into the supporting elements on its outer side and support it spring-elastically relative to the stator-receiving surface.
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Strong Fig 1
Strong further teaches an electric motor (10) comprising a stator (fig 1, 20) and a rotor (22), wherein the stator (20) is mounted in the motor housing portion (16) by means of supporting elements (tolerance band 26) inserted into the motor housing portion, which supporting elements on the one hand abut against a stator-receiving surface (housing groove 27) and on the other hand surround the stator (20) inserted into the supporting elements on its outer side and support it elastically relative to the stator- receiving surface (par 0016).
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the motor assembly of Dittrich by adding a tolerance band 26 of Strong between the stator and housing of Dittrich in order to reduce vibrations and noise of the motor (Strong, par 0018-0019).
Furthermore, the structure of applicant’s claimed support and Strong’s tolerance band (26) appear to be depicted nearly identically in applicant’s fig 8 and Strong’s fig 3, which would lead a reasonable person to believe that the two structures may have inherently the same attributes.
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Annotations on Strong fig 3.
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Applicant’s fig 8, Examiner notes that applicant’s fig 8 and Strong fig 9 appear to be substantially structurally similar
Regarding claim 8, the combination teaches the refrigerant compressor according to claim 7, wherein the supporting elements have spring- elastic bodies (Strong, tolerance band 26 with waves 32 is elastomeric, par 0016). Strong does not explicitly disclose the elastic bodies being dimensioned such that they are in an elastically deformed state in all operating states of the motor housing portion occurring during operation of the refrigerant compressor.
Nevertheless, Strong teaches the dimensions of the band 26 would depend on the application (par 0016); and that size, torque, thermal range, acceptable cogging, ripple, noise, and vibration would all effect the end design and sizing of the tolerance band 26 (par 0016). A person of ordinary skill in the art would recognize that the operating states of the motor and refrigerant compressor in which the tolerance band 26 has an elastically deformable state is a matter of design choice; and that it is within the general skill of an ordinary practitioner of the art to select a tolerable size, torque, thermal range, cogging, ripple, noise, or vibration of the motor and thereby size the tolerance band 26 accordingly.
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Strong fig 2
Regarding claim 9, the combination teaches the refrigerant compressor according to claim 7, wherein the supports (Strong, band 20 with waves 32) are arranged running around the stator (Strong, fig 2, the band is arranged around the stator like a ring) and support the stator (Strong, para 0016) at a plurality of locations (fig 3 depicts a plurality of peaks and valleys) on opposite sides (fig 3 band 26 encircling the stator 20) of the rotor axis relative to the stator-receiving surface of the motor housing portion (Strong, fig 2).
Regarding claim 10, the combination teaches the refrigerant compressor according to claim 9, wherein the supporting elements have elastic bodies arranged at defined angular intervals around the rotor axis (Strong fig 2 shows band 20 with waves 32 at a regular wave pattern of equal angular intervals around the axis).
Regarding claim 11, the combination teaches the refrigerant compressor according to claim 7, wherein the elastic bodies (Strong, waves 32) are positioned relative to one another by a band material (Strong, tolerance band 26, par 0016) positioning them relative to one another (Strong, each wave 32 is positioned by band 26) and running around the stator (Strong, par 0016).
Regarding claim 12, the combination teaches the refrigerant compressor according to claim 11, wherein the elastic bodies (Strong, waves 32) are formed into the band material (Strong tolerance band 26).
Regarding claim 13, the combination teaches the refrigerant compressor according to claim 11, wherein the band material (Strong, tolerance band 26) is in the form of a ring-like clasp (Strong fig 3 is the same as applicant’s fig 8 depicting the ring-like clasp shape of the band) with open ends (Strong fig 3, tolerance band 26 has open ends in the same manner depicted in applicant’s fig 8).
Regarding claim 14, the combination teaches the refrigerant compressor according to claim 7, wherein the spring-elastic bodies (Strong, 32) have flank regions (Strong fig 3 is identical to applicants fig 8 and appears to have the claimed flank region) running at an acute angle (sides of waves 32 form acute angles with the surface it abuts against; *examiner notes that this interpretation is analogous to applicant’s disclosure of acute angle in applicant’s fig 8, specification par 0053, 0115, see drawings) to the outer side of the stator and/or to the stator-receiving surface between foot regions (Strong, peaks of waves 32) and support regions (valleys of waves 32), one of which abuts against the outer side of the stator (Strong, fig 2, band 26 presses against outside of stator) and the other of which abuts against the stator-receiving surface (Strong, fig 2, band 26 presses against inside of housing).
Regarding claim 15, the combination teaches the refrigerant compressor according to claim 7, wherein the spring-elastic bodies (Strong, 32) are successively formed into a spring-elastic band material (elastomeric material, par 0016) such that successive support regions (valleys of waves 32) abut against an outer side of the stator (Strong fig 2, band 26 presses against outside of stator) or against the stator-receiving surface and successive foot regions (peaks of waves 32) abut against the stator- receiving surface (band 26 presses against the inside of housing) or the outer side of the stator.
Regarding claim 16, the combination teaches the refrigerant compressor according to claim 7, wherein the elastic bodies (Strong, fig 3, wave 32, par 0016) are located between edge regions (See annotated figure below) arranged peripherally around the stator, and the support regions (Strong, 32) are connected to the edge regions by means of flank regions (sides of wave 32) running at an acute angle (sides of waves 32 form acute angles with the surface it abuts against; *examiner notes that this interpretation is analogous to applicant’s disclosure of acute angle in applicant’s fig 8, specification par 0053, 0115, see drawings below) to the outer side of the stator and/or to the stator-receiving surface.
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Annotations on Strong fig 3.
Regarding claim 17, the combination teaches the refrigerant compressor according to claim 16, wherein, on the one hand, the support regions (Strong, 32) abut against the outer side of the stator or the stator-receiving surface.
Strong is silent as to whether the edge regions (Strong fig 9, See annotated drawing at claim 10) abut against the stator-receiving surface or the outer side of the stator.
Nevertheless, Strong teaches that the size and shape of the waves could be easily altered for an application to provide any desired holding force while minimizing or eliminating cogging from the motor 10. Therefore, it is within the general skill of a person of ordinary skill in the art to modify the shape of Strong’s wave 32 to meet desired holding force.
The difference between Strong’s tolerance band 26 and the claim limitation is that Strong is silent as to whether each wave 32 protrudes in such a way that the edges of tolerance band 26 come into contact with either the outer wall of the stator or the inner wall of the motor housing.
Applicant does not disclose any unexpected result of the claimed edge portion abutting against the stator-receiving surface or the outer side of the stator, other than the predictable result of fixing the stator in place within the housing.
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the shape and position of Strong’s wave 32 such that the edges of tolerance band 26 abut against the stator-receiving surface or the outer side of the stator as an obvious change of shape (See MPEP 2144.04(IV)(B)). The rule is that changes of shape are a matter of choice which are obvious absent persuasive evidence that the particular configuration was significant (In re Dailey, 357 F.2d 669,). In this case, the claimed shape does nothing more than provide another variation of shape of the Strong tolerance band 26 which provides spring support of the stator with waves 32.
Furthermore, Since the shape would continue to support the stator against the motor housing using spring force from tolerance band 26, the Strong’s tolerance band 26 would continue to function in the same manner in the claimed configuration, and the claimed configuration would not modify the operation of Strong’s tolerance band 26.
Therefore, the claimed configuration of the support regions and edge regions is an obvious design choice.
Regarding claim 18, the combination teaches the refrigerant compressor of claim 7, wherein the support elements are formed from a spring steel (Strong, band 26 made of steel, par 0016; where that steel had a spring rate, par 0016).
Regarding claim 20, the combination teaches the refrigerant compressor according to claim 7, wherein one of the supports (Strong, 26) is positioned in respect of its position in the motor housing portion by a step (Strong, groove 27; the expected result of the groove 27 is positioning of band 26, par 0016) adjoining the stator-receiving surface .
Regarding claim 21, the combination teaches the refrigerant compressor of claim 1, wherein the approximately cylindrical shape is a circular-cylindrical shape (Bahmata, fig 4, 20a is called cylindrical, par 0020; cylinders met the plain meaning of circular-cylindrical shape, because a conventional cylinder is a circular cylinder).
Regarding claim 22, the combination teaches the refrigerant compressor of claim 1, wherein the light metal is aluminum (Strong, motor housing sleeve made of aluminum, par 0015; Grybush, end housing and cast covers made of aluminum, par 0032, 0045).
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Dittrich in view of Bahmata in view of Schoegler in view of Strong in view of Grybush in view of Mueller (DE9320524, citations to machine translation).
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Annotations on Mueller fig 1
Regarding claim 2, the Dittrich combination teaches the refrigerant compressor according to claim 1.
Dittrich does not disclose at least one contact insert for guiding electrical lines into the overall housing is provided in one of the covers.
Nevertheless, Dittrich discloses the electric motor (20) but is silent about electrical connections to the motor to power or control said motor. The motor’s (20) requirement for electrical connections is a motivation to provide an electrical connection to motor (20) through some part of the outer housing (11 or two housing ends) of the compressor in order to reach the motor.
Mueller teaches a refrigerant compressor (fig 1, par 0019) with an electric motor (24), wherein at least one contact insert (fig 1, electrical supply lines 32, par 0020) for guiding electrical lines (32) into the housing at an analogous cover (See annotated drawing).
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the cover at the motor axial end of Dittrich by adding a contact insert for guiding electrical lines to a cover nearest the electrical motor as taught by Muller for the expected result of providing electrical power to the motor (20) of Dittrich.
Regarding claim 3, the Dittrich combination in view of Mueller teaches the refrigerant compressor according to claim 2, wherein all electrical lines (Mueller, electrical lines 13) guided into the overall housing (Dittrich, 11) are guided by means of at least one contact insert (Mueller, electrical lines pass through the inserts, See annotated fig 1) in at least one of the covers (Mueller, electrical inserts are at the covers as taught by Mueller, See claim 2) of the overall housing.
Allowable Subject Matter
Claim 19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The nearest prior art is Banham (US 2020/0136470).
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The following is an examiner’s statement of reasons for allowance. It is noted by the examiner, and stated here for the record of prosecution, that the aspect of the instant invention determined to be novel and patentably distinct from the prior art is “wherein the supports are arranged successively in the direction of the rotor axis and are positioned spaced apart from one another in the motor housing portion by a spacer element, and wherein the spacer element is inserted into the stator-receiving surface.”
These limitations distinguish over Banham’s grooves cut into the outer housing or stator in order to place corrugated rings 32a-32e (Braham, para 0031, 0037) because the claimed spacer is insert into the stator-receiving surface and provides the benefit of placement of the rings without material removal (as applicant has argued on pages 11 and 12 of the Remarks dated 27 February 2024), and thereby make the claim read over the prior art. The sum of these limitations is not disclosed by the prior art and it would not be obvious to combine references in an effort to meet all of the claimed elements.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant's arguments filed 18 December 2025 have been fully considered but they are not persuasive.
Remarks pg 8, applicant argues that the valve plate made of steel can not be supported by Schoegler’s disclosure because it uses a steel plate in order to allow magnetic field lines to pass through the plate. A reason for combination or determination of the suitability of an appropriate material is not limited by Schoegler reciting an additional benefit of using a steel valve plate. The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, steel as a valve plate was recognized as a suitable material in the art, as taught by Schoegler, where Schoegler recites permeability of magnetic field lines as an additional benefit to their assembly. Magnetic permeability does not exclude, invalidate, or contradict the benefit of using steel for its strength, workability and ready availability as is known to a person of ordinary skill in the art.
Remarks pg 8, applicant argues that Strong does not relate to a compressor housing that has concerns with pressure. Applicant is arguing unclaimed subject matter when arguing that the housing be adapted to pressure. In order for a limitation to be considered limiting it must be claimed. Furthermore, claim 1 indicates that the claimed housing portion is claimed as “a motor housing portion.” Strong is therefore clearly analogous as it is directed to the housing of the same type of electric motor. Such that said steel housing of Strong is used as a housing of an electric motor in the combination, in the same way that it is used as a housing of an electric motor in its individual reference. Furthermore, Strong is analogous because it is concerned with a tolerance band which centers an electric motor in its housing (abstract), which is the same problem addressed in the same way as applicant’s disclosed invention (applicant’s par 0005).
Remarks pg 8, applicant argues that Strong teaches away from the combination of Ferro material such as steel because of the problems of dissimilar metals with different thermal expansion coefficients (Strong, par 0015). Applicant mischaracterizes Strong. In the cited paragraph, Strong teaches a solution with the problem of using dissimilar metals; which is not a teaching away. A teaching away is a disclosure which criticizes, discredits, or otherwise discourages the solution claimed ( In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004), See MPEP 2145). In this case, Strong is showing a solution for a particular problem caused by using dissimilar metals; to follow applicant’s logic and apply it generally, every patent publication which identifies the particular problem solved by their innovation would be considered a teaching away. This is obviously not the case, because patent publications are cited as prior art for the solutions for the particular problem solved.
Remarks, pg 8-pg9, applicant argues that Strong relates to a brushless DC motor and not a compressor. As pointed out above, and repeated here; claim 1 indicates that the claimed housing portion is claimed as “a motor housing portion.” Strong is therefore clearly analogous as it is directed to the housing of the same type of electric motor. Such that said steel housing of Strong is used as a housing of an electric motor in the combination, in the same way that it is used as a housing of an electric motor in its individual reference.
Remarks, pg 9, applicant further argues that Strong does not provide any suggestion or motivation to adopt the claimed material combination for a compressor. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the use of each claimed material as a particular element in the assembly is shown as known in the prior art. Applicant has not show any particular problem solved or unexpected result of the use of different materials in the apparatus. Furthermore, Strong explicitly addresses that dissimilar materials are used in the construction of housing and stators which creates a problem with different rates of thermal expansion of a stator and housing; and Strong thereby proposes a tolerance band as a solution (Strong, abstract). Applicant’s disclosed invention is similarly directed at problems caused by thermally induced diameter changes of the housing stator receiving surface and the motor (applicant’s par 0005). Where applicant proposed a ring shaped spring elastic support element (Applicant’s par 0008) which is structurally similar to the Strong tolerance band.
Remarks, pg 9, applicant argues that the present invention addresses concerns by selectively assigning light metal to some parts and steel to other parts. Applicant is arguing unclaimed subject matter. Applicant has not claimed a configuration of either aluminum or steel to address corrosion or oscillating loads (applicant’s par 0089-0090). Therefore, the rejection showing that those materials are suitable for the particular claimed element is sufficient to show obviousness of the material use.
The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, steel and aluminum used in the claimed elements was recognized as a suitable material in the art, and a motivation for their used based upon steels known strength, workability and ready availability and aluminum selected for its response to heat and wide availability, castability and workability provide sufficient motivation for the combination, and use of said material for a predictable result.
Remarks, pg 9, applicant argues that Grybush teaches away from the combination of materials of claim 1, because it teaches that the valve plate and head cover may be made from plastic or aluminum or other suitable materials. The courts have held that the mere teachings of alternatives does not constitute a teaching away ("the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). See MPEP 2145). In this case, Grybush is teaching alternative materials as suitable to use in the claimed location. Clearly, Grybush does not constitute a teaching away because it is merely describing alternatives.
Remarks, pg 9, applicant argues that their paragraphs 0089-0090 show the benefit of manufacturing the materials of the apparatus as claimed. Applicant is arguing unclaimed subject matter. The particular benefits or configuration of using steel or aluminum have not been claimed
Applicant argues that the five references are used without regard to context. Applicant is mistaken, Strong, clearly provides the same solution to the use of dissimilar metals as applicant’s disclosed invention. The tolerance ring of Strong clearly proposed a solution similar to the spring-elastic support solution proposed by applicant. Therefore, Strong not only gives the context of applicant’s invention with regards to the disclosed problem of machines made of dissimilar metals (Strong, explicitly listing aluminum and steel, par 0015), but also the same solution.
Remarks pg 10, applicant indicates that in claims 2 and 3 Mueller does not overcome the deficiencies of claim 1, but includes no other argument. Since the rejection of claim 1 above is maintained, the argument against Mueller for claim 1 is moot. The rejection is maintained for claims 1, 2 and 3 as explained above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/GEOFFREY S LEE/ Examiner, Art Unit 3746
/DOMINICK L PLAKKOOTTAM/ Primary Examiner, Art Unit 3746