DETAILED ACTION
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 final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 22, 2026 has been entered.
Response to Amendment
The Amendment filed June 22, 2026 has been entered. Claims 1, 3 – 5 and 8 – 12 are pending in the application with claims 11 and 12 being withdrawn and claims 2, 6 and 7 being cancelled.
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.
Claims 1, 3 – 5 and 8 – 10 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 recites the limitation “the other part of the refrigerant gas entering the lower chamber completely enter the compression chamber from the air gap through the upper chamber”. The phrase “completely” is a new matter. A review of the originally filed specification and drawings reveals no disclosure or baseline support for the limitation “completely enter the compression chamber from the air gap”. The original filed disclosure, dated 12/30/2024, merely states that (see ¶57) the refrigerant in the lower chamber “partially flows from the air gap 23 into the upper chamber 21”. There is no teaching that 100% of this specific sub-stream successfully or “completely” enters the compression chamber without any localized losses, blow-by, or alternative minor flow paths within the motor housing space.
Claims 3 – 5 and 8 – 10 are rejected for being dependent on claim 1.
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.
Claims 1, 3, 4 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Genevois et al. (US 9,080,567 – herein after Genevois).
In reference to claim 1, Genevois discloses a scroll compressor (see fig. 1), comprising:
an outer shell (3), provided with a gas inlet (18);
an inner shell (27), arranged in the outer shell (3);
a motor (“electric motor”, see col. 6, lines 1-3), arranged in the inner shell and comprising a stator (21) and a rotor (22) arranged in the stator; and
a scroll assembly (9+13), provided with a compression chamber (14) for compressing a refrigerant gas (see abstract) and configured to compress the refrigerant gas under control of the motor, wherein
an air gap is provided between the stator and the rotor and/or between the stator and the inner shell [see col. 7, lines 7-8: “…and on the other hand via the air gap existing between the stator 21 and the rotor 22..”], an upper chamber (29a) is formed in the inner shell (27) between the motor and the scroll assembly (9+13), and the upper chamber is provided with an upper inlet hole (array of holes 35, 38 – herein after referred as 35, 38); a lower chamber (29b) is formed in the inner shell (27) on a side (bottom side) of the motor away from the scroll assembly (9+13), the lower chamber is provided with a lower ventilation hole (array of holes 36, 39 – herein after referred as 36, 39), wherein the lower ventilation hole (36, 39; see fig. 1) comprises a lower inlet hole (36) and a lower outlet hole (39), and the lower outlet hole (39) is connected to the upper inlet hole (connected to the hole 38 of the asserted upper inlet hole 35, 38) through a space (as evident from fig. 1) between the inner shell (27) and outer shell (3);
refrigerant gas entering from the gas inlet (18) has a lower temperature than the motor (inherent feature in view of motor being cooled by the refrigerant), and the refrigerant gas entering from the gas inlet is configured to enter the compression chamber partly from the upper inlet hole (35, 38) through the upper chamber (29a), and partly enter the lower chamber (29b) from the lower inlet hole (36), wherein a part of the refrigerant gas entering the lower chamber (29b) is discharged from the lower outlet hole (39) and enter the space between the inner shell (27) and the outer shell (3), and the other part of the refrigerant gas entering the lower chamber (29b) completely enter the compression chamber from the air gap through the upper chamber (see col. 7, lines 55-67 and col. 8, lines 1-9), to absorb heat of the motor [Genevois teaches that (see fig. 1; col. 7, lines 55-67 and col. 8, lines 1-9) the portion of refrigerant routed into the internal air gap flows directly upward through the stator and rotor gap to the proximal chamber and into the compression state; structurally, there are no alternative exits, vents, or bypasses along Genevois’s internal motor air gap path that would prevent this sub-stream from entering the upper chamber and compression zone; thus, the other part of the refrigerant gas entering the lower chamber completely enter the compression chamber from the air gap through the upper chamber].
In reference to claim 3, Genevois discloses the scroll compressor, wherein (see fig. 1) the motor further comprises an upper wire wrap (winding 21a) and a lower wire wrap (winding 21b), the upper wire wrap (21a) is arranged in the upper chamber (29a) and the lower wire wrap (21b) is arranged in the lower chamber (29b), refrigerant gas in the upper chamber (29a) is configured to cool the upper wire wrap (21a),
the refrigerant gas in the upper chamber (29a) comprises
refrigerant gas entering the upper chamber (29a) from the gas inlet (18) through the lower chamber (29b) and the air gap (see fig. 1),
refrigerant gas entering the upper chamber (29a) from the gas inlet (18) through the upper inlet hole (through hole 35 of the asserted upper inlet hole 35, 38), and
refrigerant gas entering the upper chamber (29a) from the gas inlet (18) through the lower chamber (29b), the lower ventilation hole (hole 39 of the asserted lower ventilation hole 36, 39) and the upper inlet hole (hole 38 of the asserted upper inlet hole 35, 38), and
the refrigerant gas in the lower chamber (29b) is configured to cool the lower wire wrap (21b).
In reference to claim 4, Genevois discloses the scroll compressor, further comprising an air guiding portion (33; see figs. 1-2), wherein the air guiding portion (33) is arranged on the inner shell (27) or the outer shell and an end of the air guiding portion (bottom end of 33) is in connection with the lower inlet hole (36), and an opening of the other end of the air guiding portion (opening of top end of the air guiding portion 33) faces an export (distribution of refrigerant) of the gas inlet (18).
In reference to claim 10, Genevois discloses the scroll compressor, wherein the upper inlet hole (35, 38) and the lower ventilation hole (36, 39) are configured to be uniformly distributed around the circumferential direction of the inner shell (27) [in view of figs. 1-2: there are two circulation channels 33 circumferentially arranged on the inner shell 27, wherein each channel 33 communicates with corresponding asserted hole 35 of the upper inlet hole and corresponding hole 36 of the lower ventilation hole; there is one circulation duct 37 circumferentially arranged on the inner shell 27, wherein the duct defines space within for communication between hole 38 of the upper inlet hole and hole 39 of the lower ventilation hole; thus, the upper inlet hole and the lower ventilation holes (in view of figs. 1-2) are configured to be uniformly distributed around the circumferential direction of the inner shell].
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 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 5 is rejected under 35 U.S.C. 103 as being unpatentable over Genevois in view of Daussin et al. (US 2018/0355869 – herein after Daussin).
Genevois teaches the scroll compressor, wherein (see fig. 1) the air guiding portion (33) is arranged on the inner shell (27), an entry (entry corresponding to opening 34, see fig. 1) of the air guiding portion (33) directly faces an opening of the outer shell (top opening of the outer shell 3 that receives or is closed by body 5, see fig. 1), and a spacing (in radial direction, see fig. 1) between an outer contour of the air guiding portion (33) and an inner surface of the outer shell (3).
Genevois remains silent on the scroll compressor, wherein the spacing ranges from 2 mm to 15 mm.
However, Daussin teaches a scroll compressor, wherein a spacing is defined between an outer contour of an air guiding portion (35) and an inner surface of an outer shell (4). Daussin explicitly states that this distance is important for flow [see ¶42: “According to an embodiment of the invention, the scroll compressor further includes an inner shell surrounding the driving motor, the fluid deflecting and dividing device being secured to an outer surface of the inner shell. As the fluid deflecting and dividing device is not secured to the outer shell (which is the case for conventional scroll compressors) but to the inner shell, the distance between the refrigerant suction inlet and the fluid deflecting and dividing device is bigger. Thus securing the fluid deflecting and dividing device to the inner shell allows setting a high turning radius, which is lowering the pressure loss and lets some space to ensure a proper azimuthal distribution of the refrigerant”]. Thus, “spacing” between an outer contour of the air guiding portion and an inner surface of the outer shell is a result effective variable since varying it affects the distribution and properties of the fluid/refrigerant flowing through this space.
Thus, it would have been obvious to the person of ordinary skill in the art before the effective filing date of the invention to have the spacing “ranging from 2 mm to 15 mm” in the Genevois’s compressor since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Genevois.
Regarding claim 8,
Genevois teaches the scroll compressor having a sum of areas of upper inlet holes (35, 38) and a sum of areas of lower outlet holes (39).
Genevois does not explicitly disclose that the sum of areas of upper inlet holes is set to be less than the sum of areas of lower outlet holes.
However, Genevois states (see col. 7, lines 10-13) “According to another alternative embodiment of the invention, the proximal inlet openings 35 may have passage cross-sections smaller than those of the distal inlet openings 36”, and Genevois also discloses that there are two proximal inlet openings 35 (see col. 6, lines 61-62) and two distal inlet openings 36 (see col. 7, lines 1-2), which would result in the sum of areas of upper inlets holes set to be less than a sum of areas of lower outlet holes for an equal number of upper and lower inlets.
Regarding claim 9,
Genevois teaches the scroll compressor, wherein the number of the upper inlet holes [inlet holes are considered to be 35, 38; there are total of four (two holes 35 + two holes 38); see col. 6, lines 61-62: “..two proximal inlet openings 35..” and see col. 7, lines 36-37: “..two proximal windows 38..”] is greater than the number of the lower outlet holes [two lower outlet holes 39; see col. 7, line 40: “..two distal windows 39..”].
Genevois remains silent on the scroll compressor, wherein “an area of each of the upper inlet holes is smaller than an area of each of the lower outlet holes”.
However, Genevois states (see col. 7, lines 10-13) “According to another alternative embodiment of the invention, the proximal inlet openings 35 may have passage cross-sections smaller than those of the distal inlet openings 36”. Thus, “area” of the upper inlet hole(s) is a result effective variable since varying it affects the fluid flow flowing through it (see col. 7, lines 14-21).
Thus, it would have been obvious to the person of ordinary skill in the art before the effective filing date of the invention to have “an area of each of the upper inlet holes is smaller than an area of each of the lower outlet holes” in the Genevois’s compressor since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
. Response to Arguments
The arguments filed June 22, 2026 have been fully considered but they are not found to be persuasive.
The Applicant argues that Genevois requires a specific external channel (circulation channel 33) to introduce refrigerant into the distal chamber, whereas amended claim 1 allows refrigerant to enter the lower chamber from the lower inlet hole without passing through such a structural channel.
This argument is unpersuasive because the omission of a structure present in a reference does not establish a patentable structural difference when the claimed components are otherwise identical. In the context of the structure of Genevois, the array of openings 36 and 39 functions as the claimed lower ventilation hole, where the suction inlet 18 introduces refrigerant into the annular outer volume 28 that directly communicates with these openings via the fluid pathways. Claim 1 does not structurally exclude the presence of intervening guiding walls or channels between the gas inlet and the lower inlet hole; thus, the structural mapping established in the prior art rejection of the claim remains sound.
The Applicant notes that in Genevois, all refrigerant entering the distal chamber eventually moves toward the compression stage, whereas amended claim 1 requires that a part of the gas entering the lower chamber is discharged from a lower outlet hole into the space between the shells while the other part completely enters the compression chamber via the air gap.
This functional flow path distinction is structurally met by Genevois. In Genevois, the lower ventilation hole comprises openings 36 and 39. Refrigerant entering the distal chamber 29b (asserted lower chamber) splits into two structural paths: a first portion flows upwardly through the internal air gap between the stator 21 and rotor 22 toward the proximal chamber 29a (asserted upper chamber), while a second portion is discharged out of the distal chamber through the window/opening 39 into the external duct 37 (which is located within the space/gap between the intermediate casing and outer shell). Therefore, the structural arrangement of Genevois inherently performs the claimed flow splitting and distribution.
The Applicant contends that the present application eliminates multiple specific external channels found in Genevois, resulting in a simpler, lower-cost compressor configuration that should not be evaluated solely on the final flow result.
This argument is directed toward commercial or manufacturing advantages rather than a patentable structural distinction. Rejections under 35 USC 102 evaluate the literal structural boundaries of the pending claims against the reference. Because claim 1 is drafted using the open-ended transitioning phrase “comprising,” it does not structurally exclude the presence of the external circulation ducts or channels described in Genevois. Since every structural component recited in amended claim 1 is found within the Genevois architecture, a prima facie case of anticipation is maintained regardless of whether the reference contains additional structural refinements.
The Applicant argues that in Genevois, the two separate refrigerant streams enter the flow passages 41 of the body 5 before merging, rather than converging directly inside a dedicated upper chamber space as required by claim 1.
This distinction is unpersuasive. In Genevois, the upper inlet hole is structurally represented by the array of openings 35 and 38, which communicate with the proximal upper chamber 29a (asserted upper chamber). Refrigerant travelling upward through the internal motor air gap enters directly into the upper chamber 29a. Concurrently, the fluid routed through the external duct 37 (from lower outlet hole 39) enters the upper chamber 29a via the opening 38. Because both structural flow paths terminate inside the open space of the upper chamber 29a prior to entering the localized suction or compression channels of the stage, the proximal upper chamber inherently serves as the structural confluence point as defined by the claim.
The Applicant contends that the fluid deflecting and dividing device of Daussin is fundamentally different in function, structure, and topology from the external channels of Genevois, and that combining them would impermissibly destroy the cooling path and require an extensive structural redesign.
This argument is unpersuasive because it addresses an incorrect legal framework. The rejection of claim 1 is based on anticipation under 35 USC 102(a)(1) over Genevois, which stands alone as a single reference containing every claimed element. Daussin was not combined with Genevois to reject claim 1; rather, it was cited under 35 USC 103 to address the specific geometric limitation regarding the 2mm to 15mm spacing range in dependent claim 5. Therefore, the Applicant’s arguments concerning the physical compatibility or bodily incorporation of Daussin’s deflector into claim 1 do not point to any structural deficiency in the primary anticipation rejection of the independent claim.
Conclusion
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/CHIRAG JARIWALA/Examiner, Art Unit 3746
/ESSAMA OMGBA/Supervisory Patent Examiner, Art Unit 3746
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