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 .
DETAILED ACTION
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.
CLAIM INTERPRETATION
The presence of claim limitations that are preceded by the phrases “wherein” often raises a question as to the limiting effect of the claim limitations (see MPEP §2111.04). The Examiner has interpreted the limitations following the phrase “wherein” as positively being claimed (i.e. the claim limitations are required and/or the claim limitations following the “wherein clause” limits the structure), where “wherein” is being used as a transitional phrase.
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 driving member in claim 1.
The driving member is disclosed to be (3) and is shown in Figures 28-30 for the elected Species.
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.
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.
Specification
The amendment to the specification received on July 9, 2026 is acceptable. The specification objections are hereby withdrawn.
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 and 50 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DOEPKER (U.S. Patent 10,280,922 B2).
Regarding claim 1, DOEPKER discloses: a scroll compressor (410) (see Figure 4), comprising:
a first scroll (476) comprising a first end plate (480) and a first scroll wrap (482) extending downward from the first end plate (see Figure 4);
a second scroll (478) comprising a second end plate (486) and a second scroll wrap (488) extending upward from the second end plate (see Figure 4), the second scroll and the first scroll cooperating to form a compression chamber for compressing a medium (see Figure 4, Column 11, lines 44-60);
a motor (420, 506);
a driving member (510, 512) located below the second scroll (see Figure 4 that shows (512) is below the second scroll), the motor driving the first scroll to rotate through the driving member (see Figure 4, Column 12, lines 10-22), and the first scroll driving the second scroll to rotate (see Figure 4, Column 12, lines 10-22 that discloses the Oldham coupling can be keyed to both the first and second end plates (480, 486) thereby, when the first scroll rotates this would then cause the second scroll to rotate); and
a bracket (see Marked up Figure 4 of DOEPKER), the driving member being rotatably supported on the bracket (see Marked up Figure 4 of DOEPKER that shows the bracket supporting (512) of the driving member).
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Regarding claim 50, DOEPKER discloses: an air suction channel is provided on a side of the first scroll away from the second scroll (see Figure 4, where the air enters at (496) and then enters at the side of the first scroll, Column 12, lines 23-36), and used for sucking the medium into the compression chamber (see Figure 4, Column 12, lines 23-36).
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.
Claims 19, 25, and 31 are rejected under 35 U.S.C. 103 as being unpatentable over DOEPKER in view of GUANG-DE (Taiwan Patent Publication TW M270266U, a machine translation was provided with the foreign publication in the IDS filed on 1/28/2025 and is utilized in the rejection below).
Regarding claim 19, DOEPKER discloses: the driving member comprises: a hub portion (see Marked up Figure 4 of DOEPKER) having an inner hole (see Marked up Figure 4 of DOEPKER), the hub portion comprising a first end portion (see Marked up Figure 4 of DOEPKER) and a second end portion (see Marked up Figure 4 of DOEPKER) opposite to each other (see Figure 4); and a flange portion (see Marked up Figure 4 of DOEPKER) extending radially outward from the first end portion of the hub portion of the driving member (see Marked up Figure 4 of DOEPKER), the second end plate of the second scroll being rotatably supported on the flange portion of the driving member (see Marked up Figure 4 of DOEPKER that shows the second end plate is rotatably supported on the flange portion of the driving member and even has a seal interface via (530)), and
the flange portion has an upper surface (see Figure 4 that shows an upper surface of the flange portion), and the second end plate of the second scroll has a lower surface (see Figure 4 that shows a lower surface of the second scroll).
DOEPKER fails to disclose one of the upper surface of the flange portion and the lower surface of the second end plate of the second scroll has an annular thrust surface and an oil groove.
Regarding claim 19, GUANG-DE teaches: one of the upper surface of the flange portion and the lower surface of the second end plate of the second scroll has an annular thrust surface (see Figures 2, 3, 5, and 6, claim 1, Page 2) and an oil groove (15d) (see Figures 2, 3, 5, and 6).
It would have been obvious to a person having ordinary skill in the art at the time of the invention was made to have one of the upper surface of the flange portion and the lower surface of the second end plate of the second scroll has an annular thrust surface and an oil groove in the scroll compressor of DOEPKER, in order to provide both support and reducing the friction between the thrust surface and the component that it slides on (see bottom of Page 1 of GUANG-DE). Utilizing known methods to address thrust and friction (i.e. by having one of the upper surface of the flange portion and the lower surface of the second end plate of the second scroll has an annular thrust surface and an oil groove) requires only routine skill in the art and produces predictable results (i.e. support and a reduction of friction, which also reduces heat generated from the rubbing between the scroll and the component that it slides on).
Regarding claim 25, GUANG-DE further teaches: the oil groove further comprises: a second oil groove (15b) provided, on the radially outer side of the annular thrust surface (see Figure 5), on one of the upper surface of the flange portion and the lower surface of the second end plate of the second scroll (see Figure 5), the second oil groove extending around the annular thrust surface (see Figure 5).
Regarding claim 31, DOEPKER discloses: the driving member further comprises one of two features:
an eccentric ring hole (the eccentric ring hole contains (530) in Figure 4) in the upper surface of the flange portion (see Figure 4).
Regarding claim 31, GUANG-DE further teaches: the upper surface of the flange portion has the annular thrust surface (see Figure 5), and the second oil groove (15b) is provided on the upper surface of the flange portion (see Figure 5); and
the driving member further comprises one of two features:
a part of the second oil groove (15b) corresponding to the eccentric ring hole (there are multiple rings (15b)) being located on an inner side of the eccentric ring hole in a radial direction of the hub portion (see Figure 5).
The combination of DOEPKER with GUANG-DE would obviously have a part of the second oil groove corresponding to the eccentric ring hole being located on an inner side of the eccentric ring hole in a radial direction of the hub portion in the modified scroll compressor of DOEPKER, in order to keep the oil within a certain area of the sliding surface and control the oil from being sucked into the scroll compressor.
Allowable Subject Matter
Claims 2-8, 12-14, 37, and 41-49 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed July 9, 2026 have been fully considered but they are not persuasive.
Applicant argues that the rotor is part of the motor, and therefore, the elements of the “driving member” 510, 512 (part of the rotor) are not separate or distinct from the motor. The claim does not specifically disclose that the motor components have to be separate component from the driving member, and therefore, the claim limitation as broadly interpreted would allow the rotor of the motor to meet the claimed limitations. The “driving member” (510, 512) is “located below the second scroll” (512 is located below the second scroll in Figure 4). “The motor driving the first scroll to rotate through the driving member”, which is a true functional limitation on how the first scroll rotates due to movement of the driving member/rotor (510, 512). Applicant’s interpretation of the limitation is different from the Examiner’s. This Applicant considers that the motor “comprising a stator and rotor” (not claimed) are “separate” from the “driving member”. The Examiner reading this limitation can broadly interpreted as the motor driving the first scroll to rotate through the rotor of the motor (“driving member”). The Examiner would also like to note that applicants’ “driving member” is “fixed” to the rotor (see ¶0125 of the PG Publication of the current application), and therefore, would rotate with the rotor as a “single unit”.
Applicant further argues that the driving member is “rotatably supported on the bracket”. Applicant argues the relationship of the rotor (506) to the first scroll to the hub and the first bearing, and therefore states that there is no rotatable support relationship with the structure that the Examiner has claimed is the bracket. The Examiner respectfully disagrees. The Examiner has marked up Figure 4 to specifically point to the ”bracket” that is under 512 (the driving member as defined by the Examiner), that “rotatably supports the driving member” (since the driving member rotates directly above and adjacent to the bracket, so it is rotatably supported), thereby meeting the claimed limitation.
Claims 19, 25, 31, and 50 depend from claim 1. Applicant argues that the additional prior art does not have the argued limitations from claim 1. The Examiner has addressed these arguments above, where the cited prior art does have these claimed limitations.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARY DAVIS whose telephone number is (571)272-9965. The examiner can normally be reached M-F, 8 am-4pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Essama Omgba can be reached at (469) 295-9278. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Mary A Davis/Primary Examiner, Art Unit 3746
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