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.
Specification
The amendment to the specification received on June 11, 2026 is acceptable. The specification objections are hereby withdrawn.
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 3-7, 10-20, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over SHIMIZU (U.S. Patent 4,936,756) in view of HARAKAWA (U.S. Patent Publication US 2001/0012489 A1).
Regarding claim 3, SHIMIZU discloses: a scroll compressor (see Figures 2 and 3) for a refrigerant (see title), having a machine housing (10) having a longitudinal axis (see Figures 2 and 3, that has a longitudinal axis along the center of the shaft (13)) and an inlet (85) and an outlet (86) for the medium, wherein, provided in the machine housing along the longitudinal axis is a drive unit (40, 41, 42, 13) having a drive shaft (13) which is mounted on the machine housing by a first bearing unit (12) and a second bearing unit (11),
a first spiral unit (30) having a spiral channel (see Figures 2 and 3, that shows the first spiral unit with a spiral channel) which is formed by a first spiral rib (32) and has an inner end region (see Figures 2 and 3, that shows an inner end region near the center of the first spiral unit near (24)) and an outer end region (see Figures 2 and 3 that shows an outer end region at the area near the outer area of the first spiral rib),
a second spiral unit (20) having a spiral channel (see Figures 2 and 3, that shows the first spiral unit with a spiral channel) which is formed by a second spiral rib (22) and has an inner end region (see Figures 2 and 3, that shows an inner end region near the center of the second spiral unit near (24)) and an outer end region (see Figures 2 and 3 that shows an outer end region at the area near the outer area of the second spiral rib), and wherein the first spiral unit and the second spiral unit engage one another to form pressure chambers (see Figures 2 and 3),
wherein the first spiral unit can be moved by means of the drive shaft through the drive unit along an orbital path relative to the second spiral unit (see Figures 2 and 3, Column 3, lines 8-20),
wherein the inlet is in fluid communication with the outer end regions and the outlet is in fluid communication with the inner end regions (see Figures 2 and 3), characterized in that the medium in the machine housing can flow along a plurality of flow paths from the inlet to the outer end regions, and in that the drive shaft has a hollow shaft portion (81) (see Figures 2 and 3 that shows the drive shaft has a hollow shaft portion and the movement of refrigerant thru the hollow shaft portion, Column 4, lines 1-25) through which one of the flow paths extends (see Figures 2 and 3), and
wherein the drive unit has at least one axial opening (see Figures 2 and 3 that shows the drive unit has at least one axial opening between the rotor (43) and the stator (41)) and/or at least one axial groove, and in that the at least one axial opening and/or the at least one axial groove defines one of the flow paths (see Figures 2 and 3, where the flow exits (84) and then flow thru the motor via the axial opening between the rotor and stator of the motor, in addition Figures 2 and 3 shows an opening in the first bearing unit),
characterized in that the second bearing unit includes a main bearing housing (12) and a main bearing body (14),
characterized in that the main bearing body (14) includes an inner bearing ring (see Marked up Figure 2 of SHIMIZU) and an outer bearing ring (see Marked up Figure 2 of SHIMIZU) spaced from said inner bearing ring (see Marked up Figure 2 of SHIMIZU), the outer bearing ring surrounding the inner bearing ring (see Marked up Figure 2 of SHIMIZU), characterized in that the outer bearing ring of the main bearing body is disposed between the main bearing housing and the inner bearing ring of the main bearing body (see Marked up Figure 2 of SHIMIZU), characterized in that at least two flow paths coming from the inlet (85) lead through the second bearing unit (Path A – shown in Marked up Figure 2 of SHIMIZU) into the space (62), one of the flow paths extending through a separating distance between the inner bearing ring and the outer bearing ring of the main bearing body (Path A – shown in Marked up Figure 2 of SHIMIZU).
SHIMIZU discloses an other flow path, however, fails to disclose the other of the flow paths being guided through at least one entry opening formed as a through-hole in the main bearing housing.
Regarding claim 3, HARAKAWA teaches: the other of the flow paths (the other flow path is show in Figure 1, where refrigerant enters in the inlet (151) and guided through at least one entry opening (107a)) being guided through at least one entry opening (107a) formed as a through-hole in the main bearing housing (107).
It would have been obvious to a person having ordinary skill in the art at the time of the invention was made to have the other of the flow paths being guided through at least one entry opening formed as a through-hole in the main bearing housing in the scroll compressor of SHIMIZU, in order to provide refrigerant from the inlet to the outer end regions of the scroll compressor thereby allowing refrigerant to enter and be compressed by the first and second spiral units. Utilizing well known methods to provide refrigerant from the inlet to the suction area of the first and second spiral units requires only routine skill in the art and produces predictable results (i.e. allowing for the desired refrigerant to flow to the suction of the spiral units).
Regarding claim 4, SHIMIZU discloses: in that the hollow shaft portion is formed by a blind hole (see Figures 2 and 3), and in that the drive shaft has at least one radial bore (84, 82) which perforates the drive shaft from the hollow shaft portion (see Figures 2 and 3, Column 4, lines 1-25).
Regarding claim 5, SHIMIZU discloses: a rotor (42) of the drive unit is arranged between the first bearing unit and the second bearing unit (see Figures 2 and 3), and in that the drive shaft has the at least one radial bore between the first bearing unit and the rotor and/or between the second bearing unit and the rotor (see Figures 2 and 3).
Regarding claim 6, SHIMIZU discloses: between inlet and drive shaft a flow path branches into two flow paths connected in parallel, one of the flow paths extending through the hollow shaft portion and the other of the flow paths being guided through the first bearing unit (see Figures 2 and 3).
Regarding claim 7, SHIMIZU discloses: the second bearing unit and the first spiral unit enclose a space (62, 64) and in that at least one of the flow paths leads through the space (see Figures 2 and 3, where the space than leads to (60)).
Regarding claim 10, HARAKAWA further teaches: in the main bearing housing includes a plurality of entry openings (107a) arranged symmetrically around a circumference of said main bearing housing (see Figures 1 and 2 that shows the entry openings (107a) are located symmetrically around the circumference of the main bearing housing).
Regarding claim 11, SHIMIZU discloses: the drive shaft projects into the space and has a compensating mass and/or an eccentric drive in the space (see Figures 2 and 3, where an eccentric drive (see (16) that is an eccentric pin of the drive shaft, where the limitation is either both or either one, and therefore, SHIMIZU meets the claimed limitation).
Regarding claim 12, SHIMIZU discloses: the space has at least one exit opening (see Figures 2 and 3 that shows an exit opening), and in that the exit opening defines a flow path which connects the space to the outer end regions (see Figures 2 and 3, where the flow path connects with (60) that connects with the suction chamber (60).
Regarding claim 13, SHIMIZU discloses: the at least one exit opening is provided as a radially oriented axial cut-out on the side facing the first spiral unit (see Figures 2 and 3, where the radially orientated axial cut-out for the at least one exit opening also includes a bearing (34)).
Regarding claim 14, SHIMIZU discloses: the at least one exit opening has a radially oriented first bore portion and an axially oriented second bore portion (see Figures 2 and 3, where the radially orientate first bore portion is shown (part of (62) and the axially orientated second bore portion is shown extending axially from (62) and contains the bearing (34)).
Regarding claim 15, the modified scroll compressor of SHIMIZU/ HARAKAWA would inherently have the at least one exit opening is offset in the circumferential direction with respect to the at least one entry opening since HARAKAWA teaches the at least one entry opening being offset from (120), where (120) is a similar component to (34) of SHIMIZU.
Regarding claim 16, SHIMIZU discloses: the at least one exit opening, on the side facing the first spiral unit, opens partially or completely within a surface which is traversed when the first spiral unit moves completely along the orbital path (see Figures 2 and 3).
Regarding claim 17, SHIMIZU discloses: the first spiral unit has, on the side facing the at least one exit opening (see Figures 2 and 3), a recessed portion which is arranged within a surface and traverses the at least one exit opening during a complete movement along the orbital path (see Figures 2 and 3).
Regarding claim 18, SHIMIZU discloses the claimed invention, however, fails to disclose a ring-pin coupling is provided, and in that one of the flow paths is guided through the ring-pin coupling. SHIMIZU uses a rotation prevention device (34) that utilizes a ball (see Figures 2 and 3).
Regarding claim 18, HARAKAWA teaches: a ring-pin coupling (132) is provided, and in that one of the flow paths is guided through the ring-pin coupling (see Figure 1).
It would have been obvious to a person having ordinary skill in the art at the time of the invention was made to have a ring-pin coupling is provided, and in that one of the flow paths is guided through the ring-pin coupling in the scroll compressor of SHIMIZU, since a substitution of one known element (i.e. a rotation prevention mechanism with a ball as disclosed by SHIMIZU) for another known element (i.e. a rotation prevention device using a ring-pin coupling) requires only routine skill in the art and would have produced predictable results (i.e. the ability to have the spiral unit orbit and compress the refrigerant).
Regarding claim 19, SHIMIZU discloses: the second spiral unit is stationary (see Figures 2 and 3, Column 2, line 64 – Column 3, line 7).
Regarding claim 20, SHIMIZU discloses: the pressure connection piece (25) (see Marked up Figure 2 of SHIMIZU) is in operative contact with the intermediate bottom piece (see Marked up Figure 2 of SHIMIZU, where ) in a contact region (the contact region is between the pressure connection piece to the intermediate bottom piece, see Marked up Figure 2 of SHIMIZU) to form the back-flow region (see Marked up Figure 2 of SHIMIZU, where back-flow occurs due to the fluid exits the passage and is forced to go down in Figure 2 and then up to go out thru (86), and therefore is considered as a back-flow region), and in that the contact region, on an imaginary connecting line, is arranged between the pressure connection piece and the passage (see Marked up Figure 2 of SHIMIZU) in a plane perpendicular to the longitudinal axis (see Marked up Figure 2 of SHIMIZU).
Regarding claim 22, SHIMIZU discloses in the prior art that a refrigeration system comprising a scroll machine (Column 1, lines 20-26).
SHIMIZU does not specifically disclose the scroll machines of Figures 2 and 3 are part of a refrigeration system.
It would have been obvious to a person having ordinary skill in the art at the time of the invention was made to have used the scroll compressors of Figures 2 and 3 of SHIMIZU in a refrigeration system as taught by the prior art in SHIMIZU (Column 1, lines 20-26), since utilizing scroll compressors in a refrigeration system are well-known in the art, as evidence by the prior art disclosed by SHIMIZU. Utilizing well-known components (such as a scroll compressor) in a refrigeration system requires only routine skill in the art and produces predictable results (i.e. having a refrigeration system for cooling).
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Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over the modified scroll compressor of SHIMIZU/ HARAKAWA as applied to claim 3 above, and further in view of DOEPKER (U.S. Patent Publication US 2018/0223843 A1).
Regarding claim 21, the modified scroll compressor of SHIMIZU/ HARAKAWA discloses: the claimed invention, however, fails to disclose the pressure connection piece comprises a bushing with a non-return valve.
Regarding claim 21, DOEPKER teaches: the pressure connection piece (32, 34) comprises a bushing (see Figure 1 that shows a bushing in the pressure connection piece) with a non-return valve (34) (see Figure 1, ¶0058)
It would have been obvious to a person having ordinary skill in the art at the time of the invention was made to have the pressure connection piece comprises a bushing with a non-return valve in the modified scroll compressor of SHIMIZU/ HARAKAWA, in order to prevent fluid from entering the discharge chamber through the pressure connection piece (see ¶0058, where the discharge outlet fitting and valve of DOEPKER is interpreted as the pressure connection piece as recited in claim 21 that has a bushing and non-return (check) valve).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 3, 7, 10, and 20 are each rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9/8/7/6/1 of U.S. Patent No. 12,331,742 B2 in view of SHIMIZU and in view of HARAKAWA. U.S. Patent No. 12,331,742 B2 discloses the claimed invention, however, fails to disclose that the main bearing body includes an inner bearing ring and an outer bearing ring spaced from said inner bearing ring, the outer bearing ring surrounding the inner bearing ring, characterized in that the outer bearing ring of the main bearing body is disposed between the main bearing housing and the inner bearing ring of the main bearing body, characterized in that at least two flow paths coming from the inlet lead through the second bearing unit into the space, one of the flow paths extending through a separating distance between the inner bearing ring and the outer bearing ring of the main bearing body.
Regarding claim 3, SHIMIZU discloses: characterized in that the main bearing body (14) includes an inner bearing ring (see Marked up Figure 2 of SHIMIZU) and an outer bearing ring (see Marked up Figure 2 of SHIMIZU) spaced from said inner bearing ring (see Marked up Figure 2 of SHIMIZU), the outer bearing ring surrounding the inner bearing ring (see Marked up Figure 2 of SHIMIZU), characterized in that the outer bearing ring of the main bearing body is disposed between the main bearing housing and the inner bearing ring of the main bearing body (see Marked up Figure 2 of SHIMIZU), characterized in that at least two flow paths coming from the inlet (85) lead through the second bearing unit (Path A – shown in Marked up Figure 2 of SHIMIZU) into the space (62), one of the flow paths extending through a separating distance between the inner bearing ring and the outer bearing ring of the main bearing body (Path A – shown in Marked up Figure 2 of SHIMIZU).
It would have been obvious to a person having ordinary skill in the art at the time of the invention was made to have the main bearing body includes an inner bearing ring and an outer bearing ring spaced from said inner bearing ring, the outer bearing ring surrounding the inner bearing ring, characterized in that the outer bearing ring of the main bearing body is disposed between the main bearing housing and the inner bearing ring of the main bearing body, characterized in that at least two flow paths coming from the inlet lead through the second bearing unit into the space, one of the flow paths extending through a separating distance between the inner bearing ring and the outer bearing ring of the main bearing body in the scroll compressor of SHIMIZU, in order to provide refrigerant from the inlet to the outer end regions of the scroll compressor thereby allowing refrigerant to enter and be compressed by the first and second spiral units. Utilizing well known methods to provide refrigerant from the inlet to the suction area of the first and second spiral units requires only routine skill in the art and produces predictable results (i.e. allowing for the desired refrigerant to flow to the suction of the spiral units, as well as, to lubricate the bearings with the refrigerant that contains oil).
Response to Arguments
The amendments to the claims have resolved the 112(b) rejections, which are hereby withdrawn.
The amendment to independent claim 3 and arguments presented were persuasive. The rejection now has been modified to SHIMIZU in view of HARAKAWA. The Examiner would like to note that the applicant argues that HARAKAWA fails to cure the deficiency of SHIMIZU, however, the Examiner disagrees. The Examiner has put forth a revised rejection based on the amendments (see rejection above).
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).
Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on July 9, 2026 also prompted the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS ALSO MADE FINAL DUE TO THE SUBMITTED IDS. See MPEP § 609.04(b). 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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