DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 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.
Claims 1, 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over WO2020202495 to Watanabe et al., hereinafter referred to as Watanabe (see English language translation provided with the non-final Office action mailed March 6, 2026).
In reference to claim 1, Watanabe as modified discloses the claimed invention.
Watanabe discloses an outdoor unit (100) included in a heat pump apparatus, the outdoor unit comprising:
a housing (50) including a bottom plate,
the bottom plate (4) including:
a drain hole (40);
a side wall (42a) erected along a portion of an outer circumference of the drain hole (40), see figure 6; and
a lid (42b) extending from a tip end portion of the side wall to cover at least a portion of the drain hole,
wherein the drain hole includes a rectangular shaped portion being a rectangular shaped hole and the side wall is disposed along one side of the rectangular shaped portion of the drain hole, see underlined portion of page 7 of the English language translation).
Watanabe fails to disclose the side wall is disposed along three sides of the rectangular shaped portion of the drain hole. It is noted that the only difference between the disclosure of Watanable and the claimed invention is a difference in the shape of the side wall such that it is bent to extend around three sides of the drain hole. Further, Watanabe does disclose that the shape of the piece (41) is not limited to a rectangle and can be any shape, see underlined portion of page 7 of the English language translation. Further, there is no evidence of record that providing the side wall such that it was disposed along three sides of the drain hole would do anything more than what is predictable in the art. In light of these disclosures, it would have been an obvious matter of design choice to make the side wall (41) to be whatever form or shape was desired including a shape that extends around three sides of the rectangular drain hole. Further, a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al.149 USPQ 47. Accordingly, it would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed, to modify the shape of the side wall (41) such that it was disposed along three sides of the rectangular shaped portion of the drain hole, since a person of ordinary skill has good reason to pursue the known options within their technical grasp. If this leads to the anticipated success, it is likely that the product is not of innovation but of ordinary skill and common sense.
In reference to claim 2, Watanabe as modified discloses the claimed invention.
Watanabe discloses the side wall (42b) is disposed between the drain hole (40) and an electrical component (101) accommodated in the housing, see underlined portion of page 8 of the English language translation.
In reference to claim 4, Watanabe as modified discloses the claimed invention.
Watanabe discloses the bottom plate includes a plurality of drain holes including a first drain hole and a second drain hole, each of the first drain hole and the second drain hole being the drain hole, see underlined portion of page 10 of the English language translation; and
the bottom plate (4) is in a rectangular shape including a first edge and a second edge, the first edge and the second edge being adjacent to each other, see figure 5.
Watanabe fails to explicitly disclose the first drain hole and the second drain hole are disposed respectively in contact with the first edge and the second edge. However, it is noted that placing the plurality of drain holes in the claimed configuration is nothing more than a rearrangement of the parts of Watanabe that would not modify the operation of the device. It is further noted that the particular placement of the drain holes (40) within the bottom plate of Watanabe would not appear to alter the operation of the device as long as the holes are on the lower portion (4b) such that condensate can be communicated to the outside of the housing to discharge (see paragraph 3 o page 7). Accordingly, it would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed, to modify Watanabe such that the first drain hole and the second drain hole are disposed respectively in contact with the first edge and the second edge since rearranging the drain holes is an obvious rearrangement of parts as it appears that the outdoor unit of Watanabe would work equally well with the drain holes at any location and the operation of the device would not be modified as long as they were on the lower portion of the bottom plate, there being no evidence of the contrary, see MPEP 2144.04(VI)(C).
Response to Arguments
Applicant's arguments filed May 26, 2026 have been fully considered but they are respectfully not persuasive.
Specifically, Applicant argues on page 4 of the response that the cut-up piece of Watanabe cannot be disposed along three sides of the hole. This is respectfully not found persuasive. This contention is attorney argument lacking evidentiary support. Firstly, there is no evidence of record that a cut-up piece would not be able to meet the claimed limitations of being on three sides of a hole. Manufacturing capabilities of metals are vast and it is certainly possible to bend certain sections of a cut out and leave other sections attached. See US 2009/0004964 to Achen where louvers (22) are shown to be cut and bent such that the openings (32) are surrounded on three sides by the louver (see specifically figures 1-3). Thus, without evidence to the contrary, Applicant’s assertion that the cut-up piece cannot be disposed along three sides of the hole is not persuasive.
Further Applicant’s arguments that having the rectangular shaped portion of the drain hole have the side wall disposed along three sides would compromise the intended purpose of the hole since such a modification would impede the drainage function of the hole is respectfully not found persuasive. Since the opening is on the lowest part of base, water would still flow through the opening. Further, Watanabe expressly states that the cut-up piece 41 reflects the sound emitted from the compressor (see underlined portion of page 8 of the English language translation). Placing the cut-up portion on three sides would in fact, further impede any noise from transmitting to the to the outside of the drainage hole. Thus, the noise attenuating feature of the cut-up portion would be enhanced by such a modification. Further, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In this case, even though providing the claimed modification may provide for slightly inferior water drainage, the opening would still perform water drainage and would also gain the benefit of accentuated noise impedance. Accordingly, Applicant’s arguments that the proposed modification would result in slightly inferior water drainage is not found to be persuasive.
In response to applicant's argument that there is no teaching or suggestion about a structure whose configuration would prevent entry of water from below the structure, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
With respect to claim 4, Applicant argues that putting the holes further away would result in the reflection of sound to be less effective. This is respectfully not found to be persuasive. This contention is attorney argument lacking evidentiary support. It appears that as long as the cut-up portion of the opening was facing the compressor, then noise attenuation would indeed be performed to the extent necessary that Watanabe would still operate as intended.
Applicant further argues that the rearrangement of the openings would have advantageous technical effects of allowing the water in the machine region to be drained even when installed at an incline to a certain degree. This argument is respectfully not found persuasive. The examiner’s position is that Watanabe would not perform differently and the operation of the device would not have been modified by the particularly claimed arrangement of openings. It has specifically been held that when the arrangement of a part did not modify the operation of a device, then rearranging the particular components is obvious. There is no evidence that arranging the openings as claimed would modify the operation of Watanabe in any manner. The water would still effectively drain through the opening and as long a the cut up portions was facing the compressor, sound would still be impeded. Accordingly, even though Applicant has discovered that additional advantages which would flow naturally from following the suggestion of the prior art. Further, arranging the openings as claimed would have been routine, ordinary rearrangements that are well within the level of ordinary skill in the art.
Accordingly, the rejection of claims 1, 2, and 4 under 35 USC 103 as being unpatentable over Watanabe is considered proper and remains.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CASSEY D BAUER whose telephone number is (571)270-7113. The examiner can normally be reached Mon-Thurs: 10AM-8PM (ET).
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/CASSEY D BAUER/Primary Examiner, Art Unit 3763
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