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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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`
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`14/ 127,635
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`12/19/2013
`
`Hajime Tanihara
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`MAT—10608US
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`4163
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`RATNERPRESTIA
`PO. BOX 980
`VALLEY FORGE, PA 19482-0980
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`GRAVINI, STEPHEN MICHAEL
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`ART UNIT
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`3744
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`PAPER NUIVIBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`08/06/2015
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`ELECTRONIC
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`Please find below and/or 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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`ptocorrespondence @ratnerprestia.c0m
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`PTOL—90A (Rev. 04/07)
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`

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`
`
`Applicant(s)
`Application No.
` 14/127,635 TANIHARA, HAJIME
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`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`3744Stephen M. Gravini a?”
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`-- 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 0137 CFR 1.136(a).
`after SIX (6) 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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`-
`-
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`Status
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`1)IXI Responsive to communication(s) filed on December 19 2015.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)lX| This action is non-final.
`2a)I:| This action is FINAL.
`3)I: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)|:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`3) D Interview Summary (PT0_413)
`1) E 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)
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`Paper No(s)/Mai| Date .
`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 20150731
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`Disposition of Claims*
`5)|XI Claim(s) L5is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`s L5 is/are rejected.
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`is/are objected to.
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`) )
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`_
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`are subject to restriction and/or election requirement.
`9)|:l Claim(s
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`* 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
`htt
`://www.usoto. ov/ atents/init events"
`h/index.‘s
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`
`
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`, or send an inquiry to PF"I-Ifeedback{<‘buspto.qov.
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`Application Papers
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`10)I:I The specification is objected to by the Examiner.
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`11)|Z| The drawing(s) filed on December 19 2015 is/are: a)IXI accepted or b)I:I 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
`12)IZI 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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`b)I:I Some** c)I:I None of the:
`a)le All
`1.IZI Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`33.le 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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`Application/Control Number: 14/127,635
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`Page 2
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`Art Unit: 3744
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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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`DETAILED ACTION
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`Claim Rejections - 35 USC § 102
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`In the event the determination of the status of the application as subject to AIA 35
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`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any
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`correction of the statutory basis for the rejection will not be considered a new ground of
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
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`the same under either status.
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`The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C.
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`102 that form the basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(b) the invention was patented or described in a printed publication in this or a foreign country
`or in public use or on sale in this country, more than one year prior to the date of application
`for patent in the United States.
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`Claims 1-3 are rejected under pre-AIA 35 U.S.C. 102(b) as being as being
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`anticipated by Harris (EP 2 229 980). The claims are reasonably and broadly
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`construed, in light of the accompanying specification, to be disclosed by Harris as
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`teaching:
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`a resin curing device for curing photo-curing resin applied to a nail by exposing
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`the photo-curing resin to irradiated light, the resin curing device (see title and abstract)
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`comprising:
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`a light source 14; and
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`Application/Control Number: 14/127,635
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`Page 3
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`Art Unit: 3744
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`a controller 16 for controlling the irradiated light to the photo-curing resin (the “for
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`controlling recitation” is construed as a statement of intended use that the structure and
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`function of Harris are disclosed to meet that use),
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`wherein the controller changes an irradiated light quantity in an irradiation period
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`of the irradiated light to adjust a gloss level when the photo-curing resin is cured
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`(paragraph [0015] and the recitation “to adjust a gloss level” is a statement of intended
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`use such that the teachings of Harris can be used to adjust a gloss level as claimed).
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`Harris also discloses the light source is a flash lamp that emits a pulsed light, and the
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`controller changes an emission quantity of the pulsed light to change the irradiated light
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`quantity in the irradiation period of the irradiated light (paragraph [0016]), wherein the
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`controller changes a flash time of the pulsed light in each predetermined period of the
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`irradiation period, the pulsed light being emitted multiple times in the irradiation period
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`(paragraph [0017]).
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
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`for all obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102 of this title, if the differences between the subject matter sought to
`be patented and the prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains. Patentability shall not be negatived by the manner in which the
`invention was made.
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`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
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`USPQ 459 (1966), that are applied for establishing a background for determining
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`obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
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`Application/Control Number: 14/127,635
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`Page 4
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`Art Unit: 3744
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating
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`obviousness or nonobviousness.
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`Claims 4-6 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable
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`over Harris in view of Liu et al. (US 8,312,641). Harris discloses the claimed invention,
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`as rejected above, except for the recited specific divided irradiation periods.
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`It would
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`have been an obvious matter of design choice to recite that feature since the teachings
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`of Harris would perform the invention, as claimed, regardless of the divided irradiation
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`period. Furthermore, Harris discloses the claimed invention, except for the recited
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`changing the light period to adjust. Liu, another method of photo curing, discloses that
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`feature at column 5 line 27 through column 6 line 5.
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`It would have been obvious to one
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`skilled in the art to combine the teachings of Harris with the features of Liu for the
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`purpose of allowing gel hardening in as little as thirty seconds.
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`Double Parenting
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`The nonstatutory double patenting rejection is based on a judicially created
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`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
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`unjustified or improper timewise extension of the “right to exclude” granted by a patent
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`and to prevent possible harassment by multiple assignees. A nonstatutory double
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`patenting rejection is appropriate where the claims at issue are not identical, but at least
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`one examined application claim is not patentably distinct from the reference claim(s)
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`Application/Control Number: 14/127,635
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`Page 5
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`Art Unit: 3744
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`because the examined application claim is either anticipated by, or would have been
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`obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d
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`1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir.
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`1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum,
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`686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
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`(CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) or 1.321(d)
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`may be used to overcome an actual or provisional rejection based on a nonstatutory
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`double patenting ground provided the reference application or patent either is shown to
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`be commonly owned with this application, or claims an invention made as a result of
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`activities undertaken within the scope of a joint research agreement. A terminal
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`disclaimer must be signed in compliance with 37 CFR 1.321 (b).
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`The USPTO internet Web site contains terminal disclaimer forms which may be
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`used. Please visit http://www.uspto.gov/forms/. The filing date of the application will
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`determine what form should be used. A web-based eTerminal Disclaimer may be filled
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`out completely online using web-screens. An eTerminal Disclaimer that meets all
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`requirements is auto-processed and approved immediately upon submission. For more
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`information about eTerminal Disclaimers, refer to
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`http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
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`Claims 1-5 are provisionally rejected on the ground of nonstatutory double
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`patenting as being unpatentable over claims 1, 3, and 5-11 of copending Application
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`No. 14/112268. Although the claims at issue are not identical, they are not patentably
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`Application/Control Number: 14/127,635
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`Page 6
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`Art Unit: 3744
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`distinct from each other because it would have been an obvious matter of design choice
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`to recite the current claimed invention without the copending specific wavelengths
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`and/or frequencies since both inventions perform as claimed regardless of the
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`copending claimed features.
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`This is a provisional nonstatutory double patenting rejection because the
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`patentably indistinct claims have not in fact been patented.
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`Conclusion
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`The prior art made of record and not relied upon is considered pertinent to
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`applicant's disclosure. Other prior art reference cited in this action teach one or more
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`claimed features but are not relied upon in rejecting the claims.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Stephen M. Gravini whose telephone number is
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`(571)272-4875. The examiner can normally be reached on normal weekday business
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`hours (east coast time).
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Cheryl J. Tyler can be reached on 571 272 4834. The fax phone number for
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`the organization where this application or proceeding is assigned is 571-273-8300.
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