`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMlVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
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`
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`14/500,517
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`09/29/2014
`
`Yasuhiko Yokoi
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`120509A
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`9318
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`02/02/2016 —WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP m
`7590
`38834
`1250 CONNECTICUT AVENUE, NW
`SPAMER’ DONALD R
`SUITE 700
`WASHINGTON, DC 20036
`
`PAPER NUMBER
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`1799
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`NOTIFICATION DATE
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`DELIVERY MODE
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`02/02/2016
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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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`patentmail @ tha.c0m
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`PTOL—90A (Rev. 04/07)
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`

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`
`
`Applicant(s)
`Application No.
` 14/5oo,517 YOKOI ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office Action Summary
`
`DONALD SPAMER its“ 1799
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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 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 1/6/2016.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|ZI This action is non-final.
`2a)|:l 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)|:| 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) 1-14 is/are pending in the application.
`5a) Of the above claim(s) 13 and 14 is/are withdrawn from consideration.
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`is/are allowed.
`6)I:I Claim(s)
`7)|Z| Claim(s)_1-14is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
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`are subject to restriction and/or election requirement.
`9)I: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
`:/'I’\WIIW.usnto. ovI’ atentS/init events/
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`iindex.‘s 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)|Xl The drawing(s) filed on 9/29/2014 is/are: a)lX| 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
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`12)IXI 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)IZl 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) 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)
`Paper No(s)/Mai| Date 9/29/2014 and 7/21/2015.
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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 20160126
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`

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`Application/Control Number: 14/500,517
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`Art Unit: 1799
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`Page 2
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`1.
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`The present application is being examined under the pre-AIA first to invent provisions.
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`DETAILED ACTION
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`Election/Restrictions
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`2.
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`3.
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`Applicant’s election without traverse of claims 1-12 in the reply filed on 1/6/2016 is acknowledged.
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`Claims 13 and 14 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being
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`drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made
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`without traverse in the reply filed on 1/6/2016.
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`Information Disclosure Statement
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`4.
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`The information disclosure statement filed 9/29/2014 fails to comply with 37 CFR 1.98(a)(2),
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`which requires a legible copy of each cited foreign patent document; each non-patent literature
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`publication or that portion which caused it to be listed; and all other information or that portion which
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`caused it to be listed.
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`It has been placed in the application file, but the information referred to therein has
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`not been considered. No copy of EP 1886697, EP 2210618, DE 3523310, JP 2003-339829, and the
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`extended European search report is provided.
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`Claim Rejections - 35 USC § 103
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`5.
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`Claims 1-12 are rejected under 35 U.S.C. 103(a) as being unpatentable over Yokoi et al. (US
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`Patent Application Publication 2010/0189607) and further in view of Kawasaki et al. (JP 2006-116095 —
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`English language machine translation), Hill (US Patent Application Publication 2007/0253859), and
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`Watling (US Patent 7,186,371).
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`With regards to claim 1, Yokoi et al. teaches an isolator (abstract). The isolator has a chamber
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`(workroom 10) in which work is to be done (para [0023]). Yokoi et al. teaches a control unit (300) for
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`controlling the system including valves and decontamination supply (para [0065] and fig 1).
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`Yokoi et al. teaches that the decontaminating gas supply unit has an atomizer (210) configured to
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`atomize a decontamination material in the working chamber, a decontaminant solution reservoir (260),
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`Application/Control Number: 14/500,517
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`Art Unit: 1799
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`Page 3
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`and a pump (264) to supply the decontamination material to the atomizer (fig 1). Yokoi et al. teaches that
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`the supply unit uses an atomizing unit (210) and a vaporizer (220) to first generate a mist and then
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`vaporize the decontaminant (para [0026]-[0046]). Yokoi et al. teaches using ultrasonic vibrations to
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`generate the mist (para [0028]) and not an atomizing nozzle as claimed. Hill teaches a decontaminant
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`vapor supply unit (hydrogen peroxide) for use in a decontamination process (title, abstract, fig 4). Hill
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`teaches the use of an atomizing nozzle (432) connected by pipes (pipe 423 and pipe 192) to a source of
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`compressed air and a reservoir of liquid decontaminant (reservoir 170). Hill uses a pump (426) to pump
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`the liquid from the reservoir to the atomizer/vaporizer (para [0090], [0092], [0104], fig 3 and fig 8). A
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`person having ordinary skill in the art at the time of the invention would have found it obvious to substitute
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`one known atomizing means for producing a vaporized decontaminant (nozzle) for another (ultrasonic
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`vibrations) with the expectation of successfully producing a atomized mist to be vaporized. The
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`combination results in the decontaminating gas supply unit, includes an atomizer (Hill fig 8) connected to
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`a compressed air source and to the decontamination material supply.
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`The combination of Yokoi et al. and Hill do not teach what the specific source of compressed gas
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`is.
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`It is thus necessary and therefore obvious to look to the prior art for a known source of compressed
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`air. Kawasaki et al. teaches that it is known to use a compressor to supply compressed air to a
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`decontamination solution vaporizer (para [0033], [0046] and fig 1). A person having ordinary skill in the
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`art at the time of the invention would have found it obvious to use a compressor as a source of
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`compressed gas as taught by Kawasaki et al. motivated by the expectation of successfully practicing the
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`combined invention by supplying compressed gas. The combination results in a compressor configured
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`to supply air to the atomizer.
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`Yokoi et al. teaches a desire to regulate pressure and to maintain a positive pressure
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`environment but does not explicitly state the use of a pressure sensor configured to measure an internal
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`pressure of the chamber to be decontaminated (para [0055]). Watling teaches the use of a pressure
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`sensor to be used with a control module to adjust the internal pressure of the enclosure (column 3, lines
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`45-50). A person having ordinary skill in the art at the time of the invention would find it obvious to modify
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`the isolator taught by Yokoi et al. with the addition of a pressure sensor coupled to the control unit as
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`Application/Control Number: 14/500,517
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`Art Unit: 1799
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`Page 4
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`taught by Watling in order to adjust and maintain the desired pressure in the isolator. The combination
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`results in a pressure sensor configured to measure an internal pressure of the working chamber.
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`While it is taken that the control unit of Yokoi et al. is taught to control the components of the
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`system, the following is also presented in case the applicant traverses this assertion. A person having
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`ordinary skill in the art at the time of the invention would have found it obvious to have made the controller
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`taught by Yokoi et al. control all the components of the system in order to automate the operation of the
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`isolator system. That the general purpose controller is configured to perform a leak test as claimed is
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`intended use of the isolator. As long as the prior art teaches the claimed structural components and
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`those components are capable of the intended use then the claim limitations are met (MPEP 2114). The
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`controller taught by Yokoi et al. is capable of the claimed intended leak test.
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`With regards to claim 2, the combination does not teach a valve between the atomizer and the
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`pump. Yokoi et al. teaches using valves in order to control fluid flow throughout the system (see whole
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`document). A person having ordinary skill in the art at the time of the invention would have found it
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`obvious to have added a valve between the atomizer and the pump in order to control flow of the
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`decontamination fluid into the atomizer. The combination results in a first valve as claimed.
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`As discussed above the combination teaches that the control unit controls the system including
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`the valves. That the control unit is configured to close the first valve and then conduct the leak test is an
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`intended use of the isolator. The isolator taught by the combination is capable of the claimed use.
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`With regards to claim 3, that the control unit is configured to, after conducting the leak test, drive
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`the pump and open the first valve, thereby mixing the air and the decontamination material in the
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`atomizer, to be injected into the working chamber is an intended use of the isolator. The isolator taught
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`by the combination is capable of the claimed use.
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`With regards to claims 4-6, the combination does not teach a valve between the atomizer and the
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`compressor. Yokoi et al. teaches using valves in order to control fluid flow throughout the system (see
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`whole document). A person having ordinary skill in the art at the time of the invention would have found it
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`obvious to have added a valve between the atomizer and the compressor in order to control flow of the air
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`into the atomizer. The combination results in a second valve as claimed. As discussed above the
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`Application/Control Number: 14/500,517
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`Art Unit: 1799
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`Page 5
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`combination teaches that the control unit controls the system including the valves. That the control unit is
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`configured to open the second valve and then conduct the leak test is an intended use of the isolator.
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`The isolator taught by the combination is capable of the claimed use.
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`With regards to claims 7-12, the combination above does not teach a filter between the atomizer
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`and the compressor. Kawasaki et al. teaches a filter (84) between the conversion of the decontamination
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`fluid and the air stream from the compressor (at vaporizer 34) in order to provide clean air (para [0036]).
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`A person having ordinary skill in the art at the time of the invention would have found it obvious to have
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`placed a filter between the compressor and the conversion of the decontamination fluid and the air stream
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`from the compressor in order to provide clean air. A person having ordinary skill in the art at the time of
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`the invention would have found it obvious to have placed the filter anywhere along the flow to the
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`evaporator/converging point motivated by an expectation of successfully providing clean air to the
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`chamber. The combination results in a filter provided between the atomizer and the compressor.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the examiner should
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`be directed to DONALD SPAMER whose telephone number is (571 )272—3197. The examiner can
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`normally be reached on Monday through Friday, 9 to 5.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
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`Michael Marcheschi can be reached on 571-272—1374. The fax phone number for the organization where
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`this application or proceeding is assigned is 571-273-8300.
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`Application/Control Number: 14/500,517
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`Art Unit: 1799
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`Page 6
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`1000.
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`/DONALD SPAMER/
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`Examiner, Art Unit 1799
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`/SEAN E CONLEY/
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`Primary Examiner, Art Unit 1799
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`