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 .
Status of the Claims
Examiner acknowledges receipt of Applicant’s amendments and arguments filed with the Office on August 20th, 2026 in response to the Non-Final Office Action mailed on May 5th, 2026. Per Applicant's response, Claim 1 has been amended, Claims 3-4 & 7 have been cancelled, and Claims 8-9 have been newly added. All other claims have been left in their previously-presented form. Consequently, Claims 1-2, 5-6, & 8-9 now remain pending in the instant application. The Examiner has carefully considered each of Applicant’s amendments and/or arguments, and they will be addressed below.
Claim Rejections - 35 USC § 112
Claims 1-7 were 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. Applicant’s amendments have overcome the previous 112(a) rejection, rendering it moot.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-2, 5-6, & 8-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1, lines 26-27 recite the limitation “in the oil groove, the radial groove portion communicating only with the circumferential groove portion”; this limitation renders the claim indefinite because the required arrangement of the invention cannot be discerned. In this instance, the scope of this limitation cannot be discerned, given the originally filed specification, including the limitations recited in Claim 2. In Claim 1, the limitation in question appears to limit communication with the radial groove portion to only the circumferential groove portion (i.e. Claim 1 excludes communication between the radial groove portion and other portions of the compressor outside the oil groove). However, this appears to conflict with the scope recited in Claim 2, which recites “the radial groove portion communicating with the second back pressure space when the orbiting scroll tilts”. It is not understood how the limitation of Claims 1 & 2 could coexist with the exclusionary limitation recited in Claim 1. Further, it is not clear how (or if) the phrasing “in the oil groove” in Claim 1 would (or could) distinguish from the radial groove portion communicating with other portions of the compressor. As far as the examiner understands, if the radial groove portion communicates with another region of the compressor outside the oil groove (as recited in Claim 2), then that communication must exist, at least partially, in the oil groove as well. As such, the metes and bounds of the claim cannot be ascertained, rendering the claim indefinite. For examination purposes herein, and given the Examiner’s best understanding of the invention, the examiner has interpreted Claim 1 as allowing the radial groove portion of the oil groove to communicate with 1) the circumferential groove portion in the oil groove and 2) another portion of the compressor outside the oil groove.
Claim 2, lines 15-16 recite the limitation “the radial groove portion communicating with the second back pressure space when the orbiting scroll tilts”; this limitation renders the claim indefinite because the required arrangement of the invention cannot be discerned. In this instance, this limitation (which requires communication between the radial groove portion and a back pressure space) appears to conflict with the scope recited in Claim 1, which recites “in the oil groove, the radial groove portion communicating only with the circumferential groove portion”. It is not understood how the limitation of Claim 2 could coexist with the exclusionary limitation recited in Claim 1. Further, it is not clear how (or if) the phrasing “in the oil groove” in Claim 1 would (or could) distinguish from the radial groove portion communicating with other portions of the compressor. As far as the examiner understands, if the radial groove portion communicates with another region of the compressor, then that communication must exist, at least partially, in the oil groove. As such, the metes and bounds of the claim cannot be ascertained, rendering the claim indefinite. For examination purposes herein, the examiner has interpreted Claim 2 as requiring the radial groove portion of the oil groove to communicate, not only with the circumferential groove portion, but also with the back pressure chamber of the compressor.
Claim 8, lines 2-3 recite the limitation “a forward end portion”; this limitation renders the claim indefinite because the required arrangement of the invention cannot be discerned. In this instance, it is not made clear whether this limitation is 1) attempting to further define the “terminal end portion” recited in Claim 1 or 2) introducing another end portion altogether. As such, the metes and bounds of the claim cannot be ascertained, rendering the claim indefinite. For examination purposes herein, the examiner has applied the first interpretation.
Claim 9, line 4 recites the limitation “an end portion”; this limitation renders the claim indefinite because the required arrangement of the invention cannot be discerned. In this instance, it is not made clear whether this limitation is 1) attempting to further define the “terminal end portion” recited in Claim 1 or 2) introducing another end portion altogether. As such, the metes and bounds of the claim cannot be ascertained, rendering the claim indefinite. For examination purposes herein, the examiner has applied the first interpretation.
The term “near” in claim 9 is a relative term which renders the claim indefinite. The term “near” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In this case, the written description provides no dimensions (or exemplary dimensions) that would provide a degree of “nearness” the radial groove portion must be to the suction port. The figures provided (i.e. Figure 4) provide no scale or dimension either, and thus, do nothing to assist the written description in this regard. Therefore, the metes and bounds of the claim cannot be ascertained, rendering the claim indefinite. For examination purposes herein, the examiner has interpreted the limitation in question as simply requiring the “end portion” of Claim 9 to be disposed in the outer circumferential wall of the fixed scroll (which necessitates it being “near” the suction port).
Appropriate corrections are required.
Response to Arguments
Applicant’s arguments, see pages 5-10, filed August 20th, 2026, with respect to the rejection(s) of claim(s) 1-7 under 35 U.S.C. 102 using Liu have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Berning et al. Please refer to the new rejections below.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 6, & 8-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2018/0340536 to Berning et al.
In regards to independent Claim 1, and with particular reference to Figures 1-2 & 4, Berning et al. (Berning hereinafter) discloses:
1. A scroll compressor (10; Fig. 1) comprising: a casing (12); and a compression mechanism (20, 22) housed in the casing, the compression mechanism including a fixed scroll (22) and an orbiting scroll (20), the fixed scroll including: a fixed end plate (86), an outer circumferential wall provided on an outer edge of the fixed end plate (i.e. the radially outer portion of the fixed scroll 22 that forms the annular thrust surface 120; see Fig. 2), and a fixed wrap (88) that is spiral (para. 51) and provided inside the outer circumferential wall (Fig. 2), the orbiting scroll including: an orbiting end plate (73) with which distal ends of the fixed wrap and the outer circumferential wall are in sliding contact (Fig. 2; see also para. 54), and an orbiting wrap (74) that is spiral (para. 49), provided on a front surface (76) of the orbiting end plate (Fig. 2), and meshing with the fixed wrap (Fig. 2), the outer circumferential wall having a facing surface (102; Fig. 4) that faces the front surface (76) of the orbiting end plate (Figs. 2 & 4; para. 54), the facing surface having an oil groove (100, 130; Figs. 2 & 4) to which a lubricant (“oil”; paras. 5, 44) with a high pressure equivalent to a discharge pressure of the compression mechanism is supplied (i.e. via injection port 114; see para. 58; “discharge gas pressure in the lubricant supply area 70”), and the oil groove having: one circumferential groove portion (100; Fig. 4) extending in a circumferential direction of the fixed scroll (Fig. 4), and one radial groove portion (130; Fig. 4) extending outward in a radial direction of the fixed scroll (Fig. 4) and communicating with the circumferential groove portion (para. 61), the radial groove portion extending from a terminal end portion of the circumferential groove portion (i.e. the terminal end seen in Fig. 4) toward an outer periphery of the fixed scroll (apparent in Fig. 4), and in the oil groove, the radial groove portion communicating only with the circumferential groove portion (see the 112b rejections above; the radial groove portion 130 communicates with the circumferential groove portion 100 of the oil groove and another portion (i.e. back pressure chamber) of the compressor outside the oil groove; see Claim 2 below).
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In regards to Claim 2, Berning further discloses a housing (18) disposed on a back surface of the orbiting scroll (Figs. 1-2), the housing forming a back pressure space (70, 71) between the housing and the orbiting scroll (Fig. 2), and the housing having an annular ring groove in a surface facing the orbiting scroll (the annular, L-shaped groove labeled by the examiner in Fig. 2 immediately above); and a sealing ring (72) housed in the ring groove (Fig. 2 above), the sealing ring being in contact with the back surface of the orbiting scroll (apparent in Fig. 2) to partition the back pressure space into: a first back pressure space (70) on an inner circumference side of the ring groove, and a second back pressure space (71) on an outer circumference of the ring groove (both apparent in Fig. 2), the first back pressure space having a pressure equivalent to the discharge pressure of the compression mechanism (para. 58), the second back pressure space having a pressure equal to or higher than a pressure of a fluid sucked into the compression mechanism and lower than a pressure of a fluid discharged from the compression mechanism (para. 48), and the radial groove portion communicating with the second back pressure space when the orbiting scroll tilts (some degree of fluid communication would naturally occur between the radial groove 130 and the second back pressure space 71 (due to a loss of sealing) if/when the orbiting scroll 20 tilts enough to cause a gap therebetween).
In regards to Claim 6, Berning further discloses a refrigeration apparatus (“applications such as refrigeration systems, air conditioning systems, and heat pump systems”; para. 3; “a climate control system in which the compressor 10 is included”; para. 44) including the scroll compressor of claim 1 (apparent from paras. 1-5 & 44), the refrigeration apparatus further comprising: a refrigerant circuit through which a refrigerant compressed by the scroll compressor flows (implicit, given the disclosure at paras. 3 & 44).
In regards to Claim 8, the radial groove portion extends, toward the outer periphery of the fixed scroll, from a forward end portion (the end seen in Fig. 4), in an orbiting direction of the orbiting scroll, of the circumferential groove portion (the orbiting direction is made apparent from paras. 18 & 24).
In regards to Claim 9, the outer circumferential wall of the fixed scroll has a suction port (106; Fig. 4), and the radial groove portion extends, toward the outer periphery of the fixed scroll, from an end portion of the circumferential groove portion that is near the suction port (see the 112b rejection above; the end portion of Berning’s circumferential groove portion is disposed in the outer circumferential wall of the fixed scroll (which necessitates it being “near” the suction port 106; see also Figure 4, which makes this clear).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Berning (applied above).
In regards to Claim 5, Berning depicts a seal length dimension of a portion of the facing surface (102) from an end of the radial groove portion (130) to an outer edge (118) of the orbiting scroll (20) (in Berning, this seal length dimension is clearly seen in Figure 2, extending radially between the innermost edge of groove 104 and the side surface 118. While it appears to be apparent from Figure 2 that this dimension is at least 2mm in length, Berning does not specifically speak to the length of this seal dimension, and thus, does not specifically disclose it being “equal to or greater than 2 mm”, as claimed. However, the courts have held that where the only difference between the prior art and the claimed invention is the recitation of relative dimensions of the claimed device, the device having the claimed relative dimensions would not perform differently than the prior art device and is therefore not patentably distinct (See MPEP § 2144.04 - Paragraph IV.A). As noted above, Berning clearly depicts the claimed seal length, and Berning’s seal length provides sealing between the fixed and orbiting scrolls in the same manner described by Applicant at paragraph 61. In other words, because Berning and the claimed invention provide the same sealing functionality via the same structural arrangement, the claimed device having the claimed relative dimensions does not perform any differently than the prior art device and is therefore not patentably distinct. Furthermore, it has been held by the courts that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges (see In re AIler, 105 USPQ 233) or an optimum value of a result effective variable (see In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)) involves only routine skill in the art. Therefore, to one of ordinary skill desiring a well-sealed scroll interface, it would have been obvious to have formed Berning’s seal length dimension to be at least 2mm in length (as claimed), in order to ensure Berning’s scroll sealing functionality.
Conclusion
Applicant's amendments filed August 20th, 2026 have 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 ALEXANDER BRYANT COMLEY whose telephone number is (571)270-3772. The examiner can normally be reached Monday-Friday 9AM-6PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Laurenzi can be reached at 571-270-7878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER B COMLEY/Primary Examiner, Art Unit 3746
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