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 Application
This Office action is in response to the amendment of May 7, 2026 which provided amended drawings, a substitute specification and amended claims 1, 2, 7, 8 and 10.
Drawings
The drawings were received on May 7, 2026. These drawings are approved.
Specification
The substitute specification filed May 7, 2026 has not been entered because it does not conform to 37 CFR 1.125(b) and (c) because: the statement as to a lack of new matter under 37 CFR 1.125(b) is missing, and a marked-up copy of the substitute specification has not been supplied (in addition to the clean copy).
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: the “compression part” in claims 1 and 8.
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.
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.
Claim 7 is 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. The claim includes an unbound range, i.e., the distance…”is at least 1 mm.” The applicant has not shown possession of the outer limits of the claimed range, such as the distance being 1 m. The claim has amended/added the following limitation: “and smaller than a distance between the outer circumferential surface of the sealing plate and a maximum protruding point of the plurality of bolt seating portions in a center direction”. Upon further review, since the outer circumferential surface size or diameter has not been provided or defined this does not set on outer bound for the range. Additionally, this amendment adds to the material that the material that the applicant has not shown possession of, that is that the diameter of the outer circumferential surface is unbound and could have sizers such as 1.002 m.
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 1-7 and 9-15 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 is vague and indefinite because in the last line the phrase “wherein the sealing plate has a smaller diameter than the portion of the muffler” is confusing. First, it is noted that it is unclear what dimension of the portion of the muffler the diameter of the sealing plate is being compared to. As written a width or a diameter or a thickness could be the comparing dimension. It is also noted that shapes of the sealing plate and the portion of the muffler have not been set forth and it is unclear if a circular shape is to be assumed. Secondly, it is unclear if the diameter is limited to being an outer diameter or dimension of the sealing plate or if it could be any diameter or dimension of the sealing plate.
Claims not specifically mentioned are indefinite since they depend from one of the above claims.
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 and 2, as understood, is/are rejected under 35 U.S.C. 102a1 as being anticipated by Byun et al (KR 20090012841A, cited by applicant)
With regards to claim 1, Byun et al disclose a rotary compressor (see Fig. 12) comprising: a casing (101); a motor (110) to be disposed inside the casing; a compression part (120, 121) to be disposed below the motor; a lower flange (161) to be disposed below the compression part; a muffler (171), having a portion that is flat (171B), to be disposed on a lower surface of the lower flange; and a sealing plate (G1, G2) to be disposed between the muffler and the lower flange (each of G1 and G2 are between the muffler and the lower flange). As shown in the annotated section of Fig. 12 below Byun et al disclose the sealing plate (G2) having a diameter (inner diameter labeled below) that is smaller than a portion of the muffler (the outer width of the muffler, labeled below).
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With regards to claim 2, as set forth above Byun et al discloses the rotary compressor as set forth in claim 1 and further discloses, wherein the portion (171B) that is flat is an upper end of the muffler does not protrude (see Fig. 12) above the lower surface of the lower flange.
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) 3-7 and 11-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Byun et al in view of Morishita et al (USPAP 2017/0175742) and Lee et al (KR20200020203A, cited by applicant).
With regards to claim 3, Byun et al substantially suggest the claimed invention but only discloses the compression part, sealing plate and muffler in cross section and therefore do not fully teach that the muffler is formed in a dome shape and includes a plurality of concave portions formed at regular intervals along a circumferential direction of the muffler on a side surface of the muffler, and wherein the sealing plate is formed in a ring shape and includes an inner circumferential surface formed concavely and convexly corresponding to the muffler.
Morishita et al discloses a similar compressor wherein the muffler is formed in a dome shape (labeled in annotated Fig. 2 below) and includes a plurality of concave portions (labeled in annotated Fig. 2 below) formed at regular intervals (clear from Fig. 2) along a circumferential direction of the muffler on a side surface of the muffler. And Lee et al teach wherein the sealing plate (820 in Fig. 3) is formed in a ring shape (clearly shown) and includes an inner circumferential surface formed concavely (between the bolt holes) and convexly (around the bolts holes) corresponding to the muffler.
At the time of the effective filing date of the application it would have been obvious to one of ordinary skill in the art to substitute the dome and ring shaped muffler of Morishita et al for the similarly disclosed muffler of Byun et al since each of these mufflers are recognized as equivalence for their use in the compressor noise dampening art and selection of either of these known equivalents to dampen noise from the compressor would be within the level of ordinary skill in the art (Note MPEP 2144.06). Further it would have been obvious to make the sealing plate of Byun et al as taught by the Lee et al since a ring shaped sealing plate would completely prevent the discharged compressed gas from escaping the discharge chamber and leaking to the atmosphere, thus increasing efficiency.
With regards to claims 4 and 14, as set forth above Byun et al in view of Morishita et al and Lee et al disclose the rotary compressor as set forth in claim 3 and further disclose wherein the lower flange includes a plurality of lower refrigerant holes (labeled in annotated Fig. 2 below) and a plurality of first bolt holes (labeled in annotated Fig. 2 below) formed along an edge of the lower flange, and wherein the muffler includes a plurality of second bolt holes (labeled in annotated Fig. 2 below) formed corresponding to the plurality of first bolt holes of the lower flange at positions corresponding (note the 2nd bolt holes are between and alternate with the concave portions and therefore correspond to the concave portions) to the plurality of concave portions along an edge of the muffler. Claim 14 is similarly rejected.
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With regards to claim 5, as set forth above Byun et al in view of Morishita et al and Lee et al disclose the rotary compressor as set forth in claim 4 and further disclose wherein the sealing plate includes a plurality of bolt seats (labeled in annotated Fig. 2 above) formed to protrude toward a center of the sealing plate from an inner circumferential surface of the sealing plate and having a plurality of third bolt holes (labeled in annotated Fig. 2 above) corresponding to the plurality of second bolt holes of the muffler.
With regards to claim 6, as set forth above Byun et al in view of Morishita et al and Lee et al disclose the rotary compressor as set forth in claim 5, wherein the sealing plate is formed so as not to cover the plurality of lower refrigerant holes of the lower flange (clear from Fig. 2 of Morishita et al and Fig. 1 of Byun et al).
With regards to claim 7, as set forth above Byun et al in view of Morishita et al and Lee et al disclose the rotary compressor as set forth in claim 6, but does not disclose that the distance between a concave portion of the sealing plate and an outer circumferential surface of the sealing plate is at least 1mm, however, it would have been obvious to make the sealing plate thick enough at the noted location in order to withstand the elevated pressures of the discharge chamber/muffler chamber, further such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 CCPA 1955).
With regards to claim 11, as set forth above Byun et al in view of Morishita et al and Lee et al discloses the rotary compressor as set forth in claim 1 and further disclose wherein the lower flange (161) comprises: a flange part (161A) formed in a disk shape (160S in Fig. 2 of Morishita et al); a boss (161B) extending vertically from the flange part and including a through hole (having the shaft therein); and a bearing (the surface holding the shaft) disposed in the through hole of the boss, and wherein the muffler comprises: a fixing plate (171B) formed in a ring shape (made obvious by Morishita et al as set forth above) and fixed to the flange part of the lower flange; a caulking portion (the portion abutting G1 in Byun et al) fixed to one end of the boss (see Fig. 12 of Byun et al); and a muffler portion (between G1 and G2) provided between the fixing plate and the caulking portion.
With regards to claim 12, as set forth above Byun et al in view of Morishita et al and Lee et al disclose the rotary compressor as set forth in claim 11 and further disclose wherein the muffler portion includes a plurality of concave portions (labeled in annotated Fig. 2 of Morishita et al above) formed at regular intervals in a circumferential direction of the muffler.
With regards to claim 13, as set forth above Byun et al in view of Morishita et al and Lee et al disclose the rotary compressor as set forth in claim 12 and further disclose wherein the wherein the fixing plate includes a plurality of protrusions (around the bolt holes of annotated Fig. 2 above) corresponding to the plurality of concave portions of the muffler portion (note the 2nd bolt holes are between and alternate with the concave portions and therefore correspond to the concave portions).
With regards to claim 15, as set forth above Byun et al in view of Morishita et al and Lee et al disclose the rotary compressor as set forth in claim 14 and further disclose wherein an inner circumferential surface of the sealing plate includes a plurality of bolt seats (labeled in annotated Fig. 3 of Lee et al above) formed to correspond to the plurality of protrusions of the fixing plate (the portions around the 2nd bolt holes as labeled in annotated Fig. 2 of Morishita et al above) and a plurality of refrigerant grooves (the concave portions as labeled in annotated Figs. 2 and 3 above) formed so as not to cover the plurality of lower refrigerant holes of the flange part (clear from Fig. 2 of Morishita et al and Fig. 1 of Byun et al).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Byun et al in view of Ortiz (USPN 4,881,879).
With regards to claim 9, as set forth above Byun et al discloses the rotary compressor as set forth in claim 1 and further discloses wherein oil is received in a lower portion of the casing (note Fig. 9 which teaches that the lower end of the shaft has a central opening 113h with an oil pump mounted therein and that the end of the shaft forms an inlet). Byun et al do not disclose that the muffler is immersed in the oil.
Ortiz discloses a similar rotary compressor and in Fig. 1 shows that oil 114 submerges the muffler 92 and the end of a similar shaft and pump 112).
At the time of the effective filing date it would have been obvious to one of ordinary skill in the art to have enough oil in the bottom of the casing to submerge the muffler so that the inlet to the pump is always supplied with oil and therefore lubrication of the bearings continuously occurs during operation.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Byun et al in view of Hirano et al (USPN 5,328,338).
With regards to claim 10, as set forth above Byun et al discloses the rotary compressor as set forth in claim 1 but does not specifically disclose that the sealing plate is formed of one of heat-resistant resin, steel, copper, and a material in which at least two of the heat-resistant resin, the steel, and the copper are laminated.
Hirano et al disclose a compressor having a muffler (700, 710) including a sealing plate 550 that is formed of a heat-resistant resin (see col. 9 lines 54-58 describing that the part 550 can be formed of elastic synthetic resin).
At the time of the effective filing date it would have been obvious to one of ordinary skill in the art to make the sealing plate of heat-resistant resin as taught by Hirano et al, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Allowable Subject Matter
Claim 8 is allowed.
Response to Arguments
Applicant's arguments filed May 7, 2026 have been fully considered but they are not persuasive. As noted above there clarity issues with regards to the newly amended portion of claim 1. As discussed in the interview of April 29, 2026 the amended portion was discussed as if it was limited to being an outer diameter of the sealing plate. After further review the claim language does not limit the claimed invention to being this outer diameter. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the diameter being an outer diameter of the sealing plate, see page 12 of the Remarks) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
It is further noted that there is no criticality provided for the outer diameter being smaller than an outer diameter of the flat portion of the muffler. Therefore, the claimed invention is merely a modification of the size of the outer diameter and such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 CCPA 1955). Further, sealing plates of such sizes are known from the prior art, see Fig. 4 of the Sato reference cited below.
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 CHARLES G FREAY whose telephone number is (571)272-4827. The examiner can normally be reached Mon - Fri: 8:00 - 5:00.
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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/CHARLES G FREAY/ Primary Examiner, Art Unit 3746
CGF
June 4, 2026
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