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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
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`13/632,311
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`10/01/2012
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`Shinji FUKUI
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`ISS0016US
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`1655
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`01/08/2016
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`7590
`234”
`CANTOR COLB URN LLP
`20 Church Street
`22nd Floor
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`Hartford, CT 06103
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`CLEVELAND, TIMOTHY c
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`1774
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`01/08/2016
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`ELECTRONIC
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`Please find below and/0r attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
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`usptopatentmail @ cantorcolburn.com
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`PTOL—90A (Rev. 04/07)
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`

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`
`
`Applicant(s)
`Application No.
` 13/632,311 FUKUI ET AL.
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`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office Action Summary
`
`TIMOTHY CLEVELAND figtus 1774
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136( a).
`after SIX () MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1 .704(b).
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`In no event, however, may a reply be timely filed
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`Status
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`1)IZI Responsive to communication(s) filed on 12 December 2015.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|:l This action is non-final.
`2a)|Z| This action is FINAL.
`3)|:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)IZI Claim(s) 1-18 is/are pending in the application.
`5a) Of the above claim(s) 7-18 is/are withdrawn from consideration.
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`is/are allowed.
`6)|:I Claim(s)
`7)|Z| Claim(s)_1-6is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
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`are subject to restriction and/or election requirement.
`9)|:I Claim((s)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
`hit z/thvvvtlsnto. ovI’ atentS/init events/
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`
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`iindex.‘3 or send an inquiry to PPI-iieedback{®usgtc.00v.
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`Application Papers
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`10)I:l The specification is objected to by the Examiner.
`11)I:l The drawing(s) filed on
`is/are: a)I:I accepted or b)|:l objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
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`12)I:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)I:l All
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`b)|:l Some” c)I:l None of the:
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`1.I:I Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`
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`3) D Interview Summary (PTO-413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) E InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date 11/04/2015.
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`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20160104
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`

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`Application/Control Number: 13/632,311
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`Page 2
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`Art Unit: 1774
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1.
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`The present application is being examined under the pre-AIA first to invent
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`provisions.
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`Claim Rejections - 35 USC § 103
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`2.
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`The text of those sections of Title 35, U.S. Code not included in this action can
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`be found in a prior Office action.
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`3.
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`Claims 1-6 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable
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`over Yokoi et al. (WO 2010/021139 using the English-language translation provided
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`with IDS 01/02/2014; hereinafter "Yokoi") in view of Shibauchi et al. (US 5078976;
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`hereinafter “Shibauchi”).
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`4.
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`In regard to claims 1, 3 and 4, Yokoi discloses a hydrogen peroxide gas
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`generator 402 comprising an atomizing unit (vaporization section 420) configured to
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`atomize hydrogen peroxide solution stored in a storage portion (cup 414) by applying
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`ultrasonic vibration with an ultrasonic transducer 413; a heater 422 provided above the
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`atomizing unit, the heater configured to heat and gasify the hydrogen peroxide solution
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`atomized in the atomizing unit; an internal cylindrical portion (heating tube 421) whose
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`internal space has the heater arranged therein, the internal cylindrical portion configured
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`to guide upward the hydrogen peroxide solution atomized in the atomizing unit flowing
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`together with a carrier gas from opening 452; and an internal fin (path forming plate
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`423) capable of regulating a flow direction of the atomized hydrogen peroxide solution,
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`the internal fin attached between an internal wall surface of the internal cylindrical
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`Application/Control Number: 13/632,311
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`Page 3
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`Art Unit: 1774
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`portion and the heater. See figure 2 and pages 5 and 6 of the English-language
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`translation.
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`5.
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`Yokoi is silent with regard to an external cylindrical portion whose internal space
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`has the internal cylindrical portion arranged therein, having a gas flow path for the
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`carrier gas flowing downward toward the storage portion formed between the external
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`cylindrical portion and the internal cylindrical portion, the carrier gas flowing through the
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`gas flow path caused to contact the internal cylindrical portion heated by the heater, the
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`heated carrier gas introduced to the storage portion.
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`6.
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`Shibauchi discloses a vaporizing apparatus for vaporizing hydrogen peroxide
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`having an external cylindrical portion (upper outer cylinder 2) whose internal space has
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`an internal cylindrical portion (inner cylinder 7) arranged therein, having a gas flow path
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`for the carrier gas flowing downward toward the storage portion formed between the
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`external cylindrical portion and the internal cylindrical portion, the carrier gas flowing
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`through the gas flow path caused to contact the internal cylindrical portion. Shibauchi
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`further discloses the structure of an external fin (flange 7A having opening 78) capable
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`of regulating a flow direction of the carrier gas, the external fin attached between an
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`external wall surface of the internal cylindrical portion and an internal wall surface of the
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`external cylindrical portion. See Figure 2 and col. 4, lines 12-55.
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`7.
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`It would have been obvious for one of ordinary skill in the art at the time of the
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`invention to have modified the apparatus of Yokoi to have the carrier gas inlet pipe
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`surrounding an inner cylinder as disclosed by Shibauchi without creating any new or
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`Application/Control Number: 13/632,311
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`Page 4
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`Art Unit: 1774
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`unexpected results for the purpose of fitting a desired form factor of the main
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`components being formed in line with one another.
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`8.
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`In regard to claim 2, Yokoi discloses wherein the storage portion (cup 414)
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`includes a concave portion concave in an inverted truncated conical shape.
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`9.
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`Yokoi and Shibauchi are silent with regard to the internal cylindrical portion being
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`configured with a cylindrical member having a lower end portion cut diagonally with
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`respect to a longitudinal direction of the cylindrical member, and the lower end portion
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`having a tip portion arranged at a height close to an inclined surface of the concave
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`portion so that a flow velocity of the carrier gas passing along the tip portion of the lower
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`end portion becomes higher than a flow velocity of the carrier gas passing along other
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`portions of the lower end portion. However, Shibauchi does disclose wherein the flow of
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`carrier gas is passed through an opening 78, which would necessarily function to
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`increase the velocity of the carrier gas flow. The Courts have held that the change in
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`form or shape, without any new or unexpected results, is an obvious engineering
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`design. See In re Dai/ey, 149 USPQ 47 (CCPA 1976) (see MPEP § 2144.04).
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`Therefore, it is viewed that the above combination of Yokoi and Shibauchi is functionally
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`equivalent to the claimed structure and therefore, the claimed configuration is merely an
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`obvious engineering design which would not produce any new or unexpected result.
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`10.
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`In regard to claim 5, Yokoi and Shibauchi are silent with regard to the thermal
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`conductivity of the internal and external cylinders. However, the Courts have held that
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`the selection of a known material, which is based upon its suitability for the intended
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`use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ
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`Application/Control Number: 13/632,311
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`Page 5
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`Art Unit: 1774
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`416 (CCPA 1960) (see MPEP § 2144.07). Therefore, it would have been within the
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`ambit of one of ordinary skill in the art to have selected an appropriate metallic material
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`as claimed to construct each of the cylinders without creating any new or unexpected
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`result.
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`It is viewed that having the external cylinder being constructed of a material
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`having a larger thermal conductivity than the material forming the internal cylinder would
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`not result in any new or unexpected result.
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`11.
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`In regard to claim 6, Yokoi is silent with regard to a preheating heater.
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`12.
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`Shibauchi discloses that the carrier gas is desired to be heated (i.e. "preheated”)
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`when entering the disclosed apparatus. See col. 2, lines 33-44 and 56-58.
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`13.
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`Therefore, it would have been obvious to one of ordinary skill in the art to have
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`configured a preheating heater structure at some point along the pipe for delivering the
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`carrier gas at the inlet port in the combined apparatus of Yokoi and Shibauchi without
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`creating any new or unexpected result.
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`Response to Arguments
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`14.
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`Applicant's arguments filed 12 December 2015 have been fully considered but
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`they are not persuasive.
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`15.
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`In response to applicant's arguments against the references individually, one
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`cannot show nonobviousness by attacking references individually where the rejections
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`are based on combinations of references. See In re Keller, 642 F.2d 413, 208
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`USPQ 871 (CCPA 1981); In re Merck& 00., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir.
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`1986). Thus, the argument that Yokoi does not disclose a double-pipe configuration
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`Application/Control Number: 13/632,311
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`Page 6
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`Art Unit: 1774
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`and that Shibauchi does not disclose a heater within the inner cylinder are not
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`persuasive.
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`16.
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`Applicant argues in the fourth paragraph of page 10 of the remarks that the
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`combination of Yokoi and Shibauchi would result in an apparatus different than the
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`claimed apparatus. The Examiner respectfully disagrees. The Examiner notes that
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`Applicant did not specifically point out how the combination of the prior art apparatuses
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`would result in an apparatus different from the claimed invention. Therefore, the
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`rejection is maintained as Applicant did not show how the rejection presented by the
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`Examiner failed to meet the claimed invention.
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`Conclusion
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`17.
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`Applicant's amendment necessitated the new ground(s) of rejection presented in
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`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
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`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
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`CFR1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action.
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`In the event a first reply is filed within
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`TWO MONTHS of the mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTH shortened statutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
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`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the date of this final action.
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