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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 16th, 2026 has been entered.
Status of the Claims
Examiner acknowledges receipt of Applicant’s amendments and arguments filed with the Office on April 1st, 2026 in response to the Final Office Action mailed on February 5th, 2026. Per Applicant's response, Claims 1 & 7 have been amended. All other claims have been left in their previously-presented form. Consequently, Claims 1-7 still 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
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 1-7 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. Applicant’s amendments to Claims 1 & 7 contain multiple instances of new matter. In particular, Claims 1 & 7 now define the radial groove portion as “extending only in the radial direction”; this limitation constitutes new matter that is not supported by the originally filed specification, and in fact, appears to conflict with the originally filed specification. In this instance, Applicant’s specification makes no mention of such language. Applicant’s assertion that “The amendments are fully supported in the published Specification at, for example, page 4, paragraphs 54-57; page 5, paragraph 70” is simply incorrect, as these disclosures do not disclose that the radial groove portion extends “only in the radial direction”. At best, the specification merely states “The fixed radial groove portion (82) is bent from the one end portion of the fixed circumferential groove portion (81) and extends toward the outer periphery of the fixed scroll (60)”. This disclosure is far broader than the newly-recited claim language, and does nothing to provide support for defining the radial groove portion in the very particular manner now being claimed. As such, it appears that Applicant may be relying solely on the supplied figures to provide support. As far as the examiner understands, the radial groove portion 82 is best shown in Figure 4, and constitutes a three-dimensional structure having not only a radial dimension, but also a width dimension and a height dimension. Stated another way, the radial groove portion 82 extends in the radial direction, the width direction, and the vertical direction, which clearly contradicts Applicant’s newly-recited language of requiring only a radial extension for the radial groove portion. For all of these reasons, this amendment clearly constitutes new matter. As far as the examiner understands, it appears that Applicant may be interpreting the claim limitation, as now recited, as requiring a longitudinal axis of the radial groove portion to extend through a central axis of the fixed scroll. However, such language is certainly not required (nor implied) by the currently recited claim language. If Applicant truly desires such an arrangement, it must be positively recited within the claim. For examination purposes herein, the examiner has interpreted this limitation as requiring the radial groove portion to have some dimension (any dimension) extending only in the radial direction. Additionally, Applicant has amended Claim 1 to now recite “the second end of the radial groove portion not being in fluid communication with another groove portion formed in the facing surface of the outer circumferential wall”, which also constitutes new matter. At the outset, this limitation constitutes a negative limitation. Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977) ("[the] specification, having described the whole, necessarily described the part remaining."). See also Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff’d mem., 738 F.2d 453 (Fed. Cir. 1984). The mere absence of a positive recitation is not basis for an exclusion. However, a lack of literal basis in the specification for a negative limitation may not be sufficient to establish a prima facie case for lack of descriptive support. Ex parte Parks, 30 USPQ2d 1234, 1236 (Bd. Pat. App. & Inter. 1993) (MPEP 2173.05(i)). In this case, the originally filed specification provides no basis for excluding the particular fluid communication now recited in Claim 1, and as such, this limitation also constitutes new matter. Applicant’s assertion that “The amendments are fully supported in the published Specification at, for example, page 4, paragraphs 54-57; page 5, paragraph 70” are simply incorrect, as none of these disclosure preclude the fluid communication now recited in Claim 1. Furthermore, it cannot be determined from the figures alone that the radial groove portion is not in fluid communication with another groove portion in the facing surface of the fixed scroll. For example, groove portions may communicate, not across the facing surface (as Applicant appears to be assuming), but through an internal passage of the outer circumferential wall itself. The specification simply provides no basis for positively excluding such an arrangement. For all of these reasons, this amendment also constitutes new matter. For examination purposes herein, the examiner has interpreted this limitation as requiring the radial groove portion to be in fluid communication with, of all groove portions formed in the facing surface of the fixed scroll, only the circumferential groove portion.
Appropriate corrections are required.
Claims 1-6 were 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. Applicant’s amendments have overcome the previous 112(b) rejections, rendering them moot.
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) 1-4 & 6-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 105782030 to Liu et al. (attached to previous office action).
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In regards to independent Claim 1, and with particular reference to Figures 1 & 3-5 (Fig. 3 above, as annotated by the Examiner for clarity), Liu et al. (Liu hereinafter) discloses:
1. A scroll compressor (Fig. 1) comprising: a casing (1; para. 2); and a compression mechanism (8, 9) housed in the casing, the compression mechanism including a fixed scroll (9) and an orbiting scroll (8), the fixed scroll including a fixed end plate (9a), an outer circumferential wall provided on an outer edge of the fixed end plate (i.e. the radially outer portion of fixed scroll 9 that contains oil groove 13; see the left side of fixed scroll 9 in Fig. 1), and a fixed wrap (9b) that is spiral (para. 32) and provided inside the outer circumferential wall (Figs. 1, 3-5), the orbiting scroll including an orbiting end plate (8a) with which distal ends of the fixed wrap and the outer circumferential wall are in sliding contact (Fig. 1), and an orbiting wrap (8b) that is spiral (para. 32), provided on a front surface of the orbiting end plate (Fig. 1), and meshing with the fixed wrap (Fig. 1; para. 37), the outer circumferential wall having a facing surface (the facing surface apparent at lead line 9a in Figs. 3-5) that faces the front surface of the orbiting end plate (Fig. 1), the facing surface having an oil groove (13, 13a; Figs. 1 & 3-5) to which a lubricant (“oil”; para. 42) with a high pressure equivalent to a discharge pressure of the compression mechanism is supplied (Fig. 4; “high pressure”; para. 48; “exhaust pressure Pd”; para. 59), and the oil groove having: a circumferential groove portion (13) extending in a circumferential direction of the fixed scroll (Figs. 3-5), and a radial groove portion (13a) extending outward in a radial direction of the fixed scroll (Figs. 3-5) and communicating with the circumferential groove portion (para. 60); and the radial groove portion (13a) extending only in the radial direction (see the dotted line in Fig. 3 above, as annotated by the examiner for clarity, which clearly shows that at least one dimension of the radial groove portion 13a extends only in the radial direction; see also the 112b rejection above) and having a first end (i.e. a radially inner end of 13a) located inward in the radial direction of the fixed scroll and a second end (i.e. a radially outer end of 13a) located outward in the radial direction of the fixed scroll, the first end of the radial groove portion communicating with the circumferential groove portion (apparent in Fig. 3), and the second end of the radial groove portion not being in fluid communication with another groove portion formed in the facing surface of the outer circumferential wall (as clearly shown in Fig. 3, the distal end (i.e. second end) of the radial portion 13a is connected only to the circumferential groove portion, and thus, is not connected to any other passages different from the circumferential groove portion within the facing surface of the fixed scroll 9; see also the 112b rejection above).
7. A scroll compressor (Fig. 1) comprising: a casing (1; para. 2); and a compression mechanism (8, 9) housed in the casing, the compression mechanism including a fixed scroll (9) and an orbiting scroll (8), the fixed scroll including a fixed end plate (9a), an outer circumferential wall provided on an outer edge of the fixed end plate (i.e. the radially outer portion of fixed scroll 9 that contains oil groove 13; see the left side of fixed scroll 9 in Fig. 1), and a fixed wrap (9b) that is spiral (para. 32) and provided inside the outer circumferential wall (Figs. 1, 3-5), the orbiting scroll including an orbiting end plate (8a) with which distal ends of the fixed wrap and the outer circumferential wall are in sliding contact (Fig. 1), and an orbiting wrap (8b) that is spiral (para. 32), provided on a front surface of the orbiting end plate (Fig. 1), and meshing with the fixed wrap (Fig. 1; para. 37), the outer circumferential wall having a facing surface (the facing surface apparent at lead line 9a in Figs. 3-5) that faces the front surface of the orbiting end plate (Fig. 1), the facing surface having an oil groove (13, 13a; Figs. 1 & 3-5) to which a lubricant (“oil”; para. 42) with a high pressure equivalent to a discharge pressure of the compression mechanism is supplied (Fig. 4; “high pressure”; para. 48; “exhaust pressure Pd”; para. 59), the oil groove having: a circumferential groove portion (13) extending in a circumferential direction of the fixed scroll (Figs. 3-5), and a radial groove portion (13a) extending outward in a radial direction of the fixed scroll (Figs. 3-5) and communicating with the circumferential groove portion (para. 60); the radial groove portion (13a) extending only in the radial direction (see the dotted line in Fig. 3 above, as annotated by the examiner for clarity, which clearly shows that at least one dimension of the radial groove portion 13a extends only in the radial direction; see also the 112b rejection above) and having a first end (i.e. a radially inner end of 13a) located inward in the radial direction of the fixed scroll and a second end (i.e. a radially outer end of 13a) located outward in the radial direction of the fixed scroll, the first end of the radial groove portion communicating with the circumferential groove portion (apparent in Fig. 3), and the second end of the radial groove portion constituting a portion of the oil groove that is located outermost in the radial direction of the fixed scroll (apparent in Fig. 3)
In regards to Claim 2, Liu further discloses a housing (19) disposed on a back surface of the orbiting scroll (Fig. 1), the housing forming a back pressure space (11, 12) between the housing and the orbiting scroll (Fig. 1), and the housing having an annular ring groove in a surface facing the orbiting scroll (the groove receiving seal 10, clearly seen in Fig. 1); and a sealing ring (10) housed in the ring groove (Fig. 1), the sealing ring being in contact with the back surface of the orbiting scroll (apparent in Fig. 1) to partition the back pressure space into a first back pressure space (11) on an inner circumference side of the ring groove and a second back pressure space (12) on an outer circumference of the ring groove (both apparent in Fig. 1), the first back pressure space having a pressure equivalent to the discharge pressure of the compression mechanism (“exhaust pressure Pd”; paras. 37, 40), 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 (“a certain pressure Pb between the intake and exhaust pressures”; para. 40), and the radial groove portion communicating with the second back pressure space when the orbiting scroll tilts (see paras. 39-40, which describe tilt of the orbiting scroll 8 and a corresponding “refrigerant leakage”; as such, some degree of fluid communication would naturally occur between the radial groove portion 13a and the second back pressure space 12 (due to a loss of sealing) if/when the orbiting scroll 8 tilts enough to cause a gap therebetween).
In regards to Claims 3-4, the radial groove portion is located at an end (i.e. the radially outer end) of the circumferential groove portion (Figs. 3-5).
In regards to Claim 6, Liu further discloses a refrigeration apparatus (“for sucking in, compressing and discharging refrigerant gas”; para. 36; see also the external refrigerant piping connected to the compressor in Figs. 1 & 6-7) including the scroll compressor of claim 1 (apparent from para. 36), the refrigeration apparatus further comprising: a refrigerant circuit (seen in Figs. 1 & 6-7) through which a refrigerant compressed by the scroll compressor flows (a refrigeration circuit is also implicit, given the disclosure at para. 36).
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 Liu (applied above).
In regards to Claim 5, Liu depicts a seal length dimension of a portion of the facing surface from an end of the radial groove portion (13a) to an outer edge of the orbiting scroll (8) (in Liu, this seal length dimension is clearly seen in Figures 3-5, extending radially between the outermost edge of groove 13a and the dotted line 8a. While it appears to be apparent from Figure 3 that this dimension is at least 2mm in length, Liu 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, Liu clearly depicts the claimed seal length, and Liu seal length provides sealing between the fixed and orbiting scrolls in the same manner described by Applicant at paragraph 61. In other words, because Liu 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 Liu’s seal length dimension to be at least 2mm in length (as claimed), in order to ensure Liu’s scroll sealing functionality.
Conclusion
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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/ALEXANDER B COMLEY/Primary Examiner, Art Unit 3746
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