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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/10/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Claim Objections
Claim(s) 1-6 is/are objected to because of the following informalities:
In claim 1, line 2, “a high-pressure chamber type hermetic container in which refrigerant containing hydrofluoroolefin refrigerant …” should read “a high-pressure chamber type hermetic container in which a refrigerant containing hydrofluoroolefin refrigerant …”.
A similar issue is found in claim 5, line 2; and claim 6, line 7.
In claim 3, “the hydrofluoroolefin refrigerant contains first refrigerant which is at least one of R1234yf or R1234ze, and second refrigerant which is at least one of R1132 (E) or R1123” should read “the hydrofluoroolefin refrigerant contains a first refrigerant which is at least one of R1234yf or R1234ze, and a second refrigerant which is at least one of R1132 (E) or R1123”.
Appropriate correction is required.
Claim(s) 2-4 is/are objected to for their dependency on an objected base claim.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
a. compression mechanism in at least claim 1.
b. expansion mechanism in at least claim 6.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
a. compression mechanism is interpreted to cover a frame, a crankshaft (drive shaft), a main bearing, and a turning bearing as per para [0016] of applicant specification; and equivalents thereof.
b. expansion mechanism is interpreted to cover an expansion valve as per para [0038] of applicant specification; and equivalents thereof.
If applicant does not intend 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 avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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.
Claim(s) 1-6 is/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 pre-AIA the applicant regards as the invention.
Claim 1 calls for the limitation “a high-pressure chamber type hermetic container” in line 2; which limitation is indefinite for the following reasons:
I. the term “high-pressure chamber” is purely subjective, and it boundaries are not reasonably clear. In other words, it is unclear as to what falls within the scope of “high-pressure chamber”; and what falls out of the scope of “high-pressure chamber”. Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014), the U.S. Supreme Court established that patent claims using terms of degree (or subjective, performance-based language) must provide objective boundaries.
II. it is unclear what the word "type" in “a high-pressure chamber type” is intended to convey. The scope of the term “a high-pressure chamber type” is not understood when read in light of the specification. Is “high-pressure chamber type” referring only to a high-pressure chamber only? Or does it encompass other structures different than a high-pressure chamber? It is uncertain. See Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955) and MPEP 2173.05(b).
A similar issue is found in each of claims 5 and 6. Claims 5 and 6 should be addressed accordingly.
Claim 5 calls for the limitation “a compression mechanism housed in the hermetic container and having a sliding portion formed on a surface made of an iron-based material and sliding on a surface of a film containing fluorine derived from the hydrofluoroolefin refrigerant”; which limitation is indefinite as it is unclear which previously recited limitation the term “and sliding” is referring to. Is it (i) the compression mechanism housed in the hermetic container? Or (ii) the sliding portion formed on a surface made of an iron-based material? Appropriate correction is required.
For examination, the limitation above will be interpreted as “a compression mechanism housed in the hermetic container and having a sliding portion formed on a surface made of an iron-based material, said sliding portion sliding on a surface of a film containing fluorine derived from the hydrofluoroolefin refrigerant”.
Claim(s) 2-4 is/are indefinite for their dependency on an indefinite base claim.
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 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 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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishizono (US 9169839 B2) in view of Itano (US 20200216735 A1).
Regarding claims 1-3:
Ishizono discloses a compressor (Fig. 1) comprising:
a high-pressure chamber type hermetic container (col. 4, L 49-63) in which refrigerant containing hydrofluoroolefin refrigerant of 50 mass % or more and refrigerator oil are sealed (the limitation “in which refrigerant containing hydrofluoroolefin refrigerant of 50 mass % or more and refrigerator oil are sealed” constitutes an intended use limitation that does not further limit the structure of the claimed invention. See MPEP 2114. It has been held that “apparatus claims cover what a device is, not what a device does. Hewett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). The refrigerant has not been claimed as part of the invention. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Reading col. 3, line 48 to col. 4, line 10 and col. 11, lines 40-44 of Ishizono, the compressor can accommodate a refrigerant containing hydrofluoroolefin refrigerant of 50 mass % or more and refrigerator oil are sealed. Also see alternate rejection below); and
a compression mechanism housed in the hermetic container and having a sliding portion (col. 4, L 49-66) sliding on a surface made of an iron-based material (analogously as pointed out above, the limitation “sliding on a surface made of an iron-based material” constitutes an intended use limitation that does not further limit the structure of the claimed invention. “A surface made of an iron-based material” has not been claimed as part of the invention. Nonetheless, Ishizono teaches this feature in col. 5, L 6-19),
wherein the refrigerator oil includes at least one refrigerator oil of polyvinyl ether or polyol ester (analogously, the limitation “wherein the refrigerator oil includes at least one refrigerator oil of polyvinyl ether or polyol ester” constitutes an intended use limitation that does not further limit the structure of the claimed invention. “The refrigerator oil” has not been claimed as part of the invention. Nonetheless, Ishizono teaches this feature in col. 11, L 40-44), and
a kinematic viscosity of the refrigerator oil at 40° C. is 10 mm2/s or more and 40 mm2/s or less (analogously, this limitation constitutes an intended use limitation that does not further limit the structure of the claimed invention. “The refrigerator oil” has not been claimed as part of the invention. Nonetheless, Ishizono teaches this feature in col. 11, L 40-48).
For sake of compact prosecution, even if it were to be assumed that Ishizono does not disclose wherein
the hydrofluoroolefin refrigerant contains at least one of R1234yf or R1234ze, and the refrigerant contains R32 as at least part of the refrigerant other than the hydrofluoroolefin refrigerant; or the hydrofluoroolefin refrigerant contains first refrigerant which is at least one of R1234yf or R1234ze, and second refrigerant which is at least one of R1132 (E) or R1123, and the first refrigerant is contained at a ratio of 50 mass % or more and the second refrigerant is contained at a ratio of less than 50 mass % in the entire hydrofluoroolefin refrigerant; the examiner submits that these specific mixtures and ratio are well known in the art. See Itano; para [0094] & claim 1: “a refrigerant oil with a kinematic viscosity of 5 to 400 cSt at 40° C. is preferable from the standpoint of lubrication” & “a composition comprising a refrigerant, the refrigerant comprising difluoromethane (R32), trifluoroethylene (R1123), and 2,3,3,3-tetrafluoropropene (R1234yf), wherein the three components have a mass ratio that falls within a region surrounded by lines a, c, and d, which connect the following 3 points in a ternary composition diagram of FIG. 1 whose vertices represent the three components: point A (R32/R1123/R1234yf=25.6/13.4/61.0 mass %); point B (R32/R1123/R1234yf=25.6/3.4/71.0 mass %); and point C (R32/R1123/R1234yf=3.9/36.5/59.6 mass %)”.
Under MPEP § 2144.06, substituting one element for another is obvious if the prior art recognizes them as equivalents for the same purpose.
Thus, it would have been obvious for one of ordinary skills in the art before the effective filing date to have provided the apparatus of Ishizono with the refrigerant composition above.
One of ordinary skills would have recognized that doing so would have provided a system with a refrigerant composition that is comprehensively excellent in various properties such as low GWP, stability, and minimized temperature glide as suggested by Itano (abstract).
Regarding claim 4:
Ishizono further discloses wherein the iron-based material is carbon steel or chromium molybdenum steel (col. 5, L 6-19).
Regarding claims 5-6:
The subject matter claimed here is substantially similar to that of claim 1. Thus, for sake of simplicity, conciseness, and brevity, please refer to the rejection of claim 1 above for the rejection of claims 5-6.
Note: the features of a compressor, a condenser, an expansion mechanism, and an evaporator are standards in a refrigeration air-conditioner in which the compressor of Ishizono is designed to operate (see Ishizono; col. 1, L 13-14).
With respect to claim 5, the usage of R-1234yf inherently causes the sliding portion to be sliding on a surface of a film containing fluorine when in operation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Minor (US 20220389298 A1), Spletzer (US 20220235254 A1), Seemeyer (US 9896641 B2), and Ueno (US 20160369146 A1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIONEL W NOUKETCHA whose telephone number is (571)272-8438. The examiner can normally be reached on Mon - Fri: 08:00 AM - 04:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frantz Jules can be reached on 571-272-6681. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIONEL NOUKETCHA/Primary Examiner, Art Unit 3763
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