`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www .uspto.gov
`
`APPLICATION NO.
`
`14/500,517
`
`
`
`
` FILING DATE
`
`
`09/29/2014
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKETNO.
`
`CONFIRMATIONNO.
`
`Yasuhiko Yokoi
`
`120509A
`
`9318
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP Coxe
`
`1250 CONNECTICUT AVENUE, NW
`SUITE 700
`WASHINGTON, DC 20036
`
`SPAMER, DONALD R
`
`1799
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/27/2016
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`patentmail @ whda.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Status
`1)X] Responsive to communication(s)filed on 4/6/2016.
`LJ A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiledon__
`2a)X] This action is FINAL.
`2b)L] This action is non-final.
`3)L] Anelection was made bythe applicant in responsetoarestriction requirementset forth during the interview on
`
`___} the restriction requirement and election have been incorporated into this action.
`4)[] Since this application is in condition for allowance exceptfor formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5) Claim(s) 1-74 is/are pending in the application.
`5a) Of the above claim(s) 13 and 14 is/are withdrawn from consideration.
`
`6)L] Claim(s)
`is/are allowed.
`7) Claim(s) 1-12 is/are rejected.
`8)L] Claim(s)____is/are objectedto.
`
`9)L] Claim(s)
`are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`
`nito/www. uspte.gov/natenis/init events/poh/index.isp
`
`or send an inquiry to PPHieedback@uspte.aov.
`
`Application Papers
`10)L] The specification is objected to by the Examiner.
`
`11)L] The drawing(s)filed on
`is/are: a)L_] 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).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12)[] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`a)L] All
`b)[-] Some** c)L] None ofthe:
`1..] Certified copies of the priority documents have been received.
`2.L] Certified copies of the priority documents have been received in Application No.
`3.L] Copies of the certified copies of the priority documents have been receivedin this National Stage
`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.
`
`
`
`Applicant(s)
`Application No.
` 14/500,517 YOKOI ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`1799DONALD SPAMER Na
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 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).
`Anyreply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`In no event, however, may a reply betimely filed
`
`Attachment(s)
`3) CT] Interview Summary (PTO-413)
`1) CT] Notice of References Cited (PTO-892)
`Paper No(s)/Mail Date.
`:
`.
`4) Ol Other:
`2) X Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date 4/6/2076.
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20160418
`
`

`

`Application/Control Number: 14/500,517
`
`Art Unit: 1799
`
`Page 2
`
`DETAILED ACTION
`
`1.
`
`2.
`
`The present application is being examined under the pre-AlAfirst to invent provisions.
`
`Claim amendmentsfiled 4/6/2016 are acknowledged. Claims 1-14 remain pending with claims 13
`
`and 14 being withdrawn.
`
`Information Disclosure Statement
`
`3.
`
`The applicant correctly pointed out the reference to the parent application in which copies of the
`
`foreign and non patent literature not considered along with the previous action. The IDS submitted
`
`4/6/2016 is considered including the previously non considered references.
`
`4.
`
`Argumentsfiled 4/6/2016 have been considered.
`
`Response to Arguments
`
`Applicant argues that the Federal Circuit opinion in In re Gianelli (Fed. Cir. Jan. 13,2014)
`
`supersedes MPEP 2114 and thus a control meansfor performing a leak test should be given more weight
`
`than “simply capable”of or “suitable for’. The examiner disagrees.
`
`In in re Gianelli, the court made a fact
`
`specific determination that in that instance “adapted for” required more than “capable of" or “suitable for’.
`
`The court noted that “adapted for” can be synonymouswith “capable of" and “suitable for’. This does not
`
`amount to a broad overturning of the current guidance set forth in MPEP 2114.
`
`In the present case, the specification lacks support for a controller that is programmed or even
`
`programmable. Thus the present case does not require the more weight given to "adapted", “configured”,
`
`or “programmed”that such supportin the specification would confer on the limitations. Do to the lack of a
`
`disclosure of programming or a programmable controller the present case falls outside the scope of
`
`Typhoon Touch Techs., inc. v. Dell, inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (holding that "capable of
`
`required capable without further orogramming when the functional language is associated with
`
`programming).
`
`inthe present case the proper standard is that of a general ourpose controller that is generally
`
`“capable ofar "suitable for” carrying out the recited intended use as set forth in MPEP 2114.
`
`

`

`Application/Control Number: 14/500,517
`
`Art Unit: 1799
`
`Page 3
`
`5.
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112/(a):
`
`Claim Rejections - 35 USC § 112
`
`INGENERAL.—The specification shall contain a written description of the
`(a)
`invention, and of the manner and process of making and usingit, in suchfull, clear, concise,
`and exact terms as to enable any personskilled in the art to whichit pertains, or with whichit
`is most nearly connected, to make and use the same, and shall set forth the best mode
`contemplated by the inventor or joint inventor of carrying out the invention.
`
`The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention, and of the
`manner and process of making and usingit, in suchfull, clear, concise, and exact termsas to
`enable any person skilled in the art to whichit pertains, or with which it is most nearly
`connected, to make and use the same, and shall set forth the best mode contemplated by the
`inventor of carrying out his invention.
`
`6.
`
`Claims 1-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AlA), first paragraph, as
`
`failing to comply with the written description requirement. The claim(s) contains subject matter which was
`
`not described in the specification in such a way as to reasonably convey to one skilled in the relevantart
`
`that the inventor or a joint inventor, or for pre-AlA the inventor(s), at the time the application wasfiled, had
`
`possession of the claimed invention.
`
`The language“control means for performing”is taken to invoke 112 6" paragraph. The
`
`specification, however, does not support the full breadth of “control means for performing". The
`
`specification as originally filed teaches a control unit. Control unit is a defined structural element within
`
`the control art. "Control means for performing", as it invokes the provisions of 112 6th, is broader in thatit
`
`covers the structures disclosed in the specification for performing the function (control unit) and their
`
`functional equivalents. The specification only supports the use of a control unit.
`
`Claims 2-12 are dependenton claim 1 and are rejected for the same reason.
`
`Claim Rejections - 35 USC § 103
`
`7.
`
`Claims 1-12 are rejected under 35 U.S.C. 108(a) as being unpatentable over Yokoi et al. (US
`
`Patent Application Publication 2010/01 89607) and further in view of Kawasaki et al. (JP 2006-116095 —
`
`

`

`Application/Control Number: 14/500,517
`
`Art Unit: 1799
`
`Page 4
`
`English language machine translation), Hill (US Patent Application Publication 2007/0253859), and
`
`Watling (US Patent 7,186,371).
`
`With regards to claim 1, the language “control means for performing”is taken to invoke 112 6"
`
`paragraph. For the purpose of examination the “control means for performing” is taken to be a control
`
`unit.
`
`Yokoi et al. teaches an isolator (abstract). The isolator has a chamber (workroom 10) in which
`
`workis to be done (para [0023]). Yokoi et al. teaches a control unit (300) for controlling the system
`
`including valves and decontamination supply (para [0065] and fig 1).
`
`Yokoi et al. teaches that the decontaminating gas supply unit has an atomizer (210) configured to
`
`atomize a decontamination material in the working chamber, a decontaminant solution reservoir (260),
`
`and a pump (264) to supply the decontamination material to the atomizer (fig 1). Yokoi et al. teaches that
`
`the supply unit uses an atomizing unit (210) and a vaporizer (220) to first generate a mist and then
`
`vaporize the decontaminant(para [0026]-[0046]). Yokoi et al. teaches using ultrasonic vibrations to
`
`generate the mist (para [0028]) and not an atomizing nozzle as claimed. Hill teaches a decontaminant
`
`vapor supply unit (hydrogen peroxide) for use in a decontamination process(title, abstract, fig 4). Hill
`
`teaches the use of an atomizing nozzle (482) connected by pipes (pipe 423 and pipe 192) to a source of
`
`compressedair and a reservoir of liquid decontaminant (reservoir 170). Hill uses a pump (426) to pump
`
`the liquid from the reservoir to the atomizer/vaporizer (para [0090], [0092], [0104], fig 3 and fig 8). A
`
`person having ordinary skill in the art at the time of the invention would have found it obvious to substitute
`
`one known atomizing means for producing a vaporized decontaminant (nozzle) for another (ultrasonic
`
`vibrations) with the expectation of successfully producing a atomized mist to be vaporized. The
`
`combination results in the decontaminating gas supply unit, includes an atomizer (Hill fig 8) connected to
`
`a compressed air source and to the decontamination material supply.
`
`The combination of Yokoi et al. and Hill do not teach what the specific source of compressed gas
`
`is.
`
`Itis thus necessary and therefore obviousto look to the prior art for a known source of compressed
`
`air. Kawasakiet al. teaches thatit is known to use a compressor to supply compressed air to a
`
`decontamination solution vaporizer (para [0033], [0046] and fig 1). A person having ordinary skill in the
`
`

`

`Application/Control Number: 14/500,517
`
`Art Unit: 1799
`
`Page 5
`
`art at the time of the invention would have found it obvious to use a compressor as a Source of
`
`compressed gas as taught by Kawasaki et al. motivated by the expectation of successfully practicing the
`
`combined invention by supplying compressed gas. The combination results in a compressor configured
`
`to supply air to the atomizer.
`
`Yokoi et al. teaches a desire to regulate pressure and to maintain a positive pressure
`
`environment but does not explicitly state the use of a pressure sensor configured to measure aninternal
`
`pressure of the chamber to be decontaminated (para [0055]). Watling teaches the use of a pressure
`
`sensor to be used with a control module to adjust the internal pressure of the enclosure (column 3, lines
`
`45-50). A person having ordinary skill in the art at the time of the invention would find it obvious to modify
`
`the isolator taught by Yokoi et al. with the addition of a pressure sensor coupled to the control unit as
`
`taught by Watling in order to adjust and maintain the desired pressure in the isolator. The combination
`
`results in a pressure sensor configured to measure an internal pressure of the working chamber.
`
`While it is taken that the control unit of Yokoi et al. is taught to control the components of the
`
`system, the following is also presented in case the applicant traverses this assertion. A person having
`
`ordinary skill in the art at the time of the invention would have found it obvious to have made the controller
`
`taught by Yokoi et al. control all the components of the system in order to automate the operation of the
`
`isolator system. That the general purpose controller is configured to perform a leak test as claimed is
`
`intended useofthe isolator. As long as the prior art teaches the claimed structural components and
`
`those components are capable of the intended use then the claim limitations are met (MPEP 2114). The
`
`controller taught by Yokoi et al. is capable of the claimed intended leak test including outputting a control
`
`signal.
`
`With regards to claim 2, the combination does not teach a valve between the atomizer and the
`
`pump. Yokoi et al. teaches using valves in order to control fluid flow throughout the system (see whole
`
`document). A person having ordinary skill in the art at the time of the invention would have foundit
`
`obvious to have added a valve between the atomizer and the pump in order to control flow of the
`
`decontamination fluid into the atomizer. The combination results in a first valve as claimed.
`
`

`

`Application/Control Number: 14/500,517
`
`Art Unit: 1799
`
`Page 6
`
`As discussed above the combination teaches that the control unit controls the system including
`
`the valves. That the control unit functions to output a control signal to close the first valve and then
`
`conductthe leak test is an intended use of the isolator. The isolator taught by the combination is capable
`
`of the claimed use.
`
`With regards to claim 3, that the control unit functions to output a control signal to, after
`
`conducting the leak test, drive the pump and open the first valve, thereby mixing the air and the
`
`decontamination material in the atomizer, to be injected into the working chamber is an intended useof
`
`the isolator. The isolator taught by the combination is capable of the claimed use.
`
`With regards to claims 4-6, the combination does not teach a valve between the atomizer and the
`
`compressor. Yokoi et al. teaches using valves in order to control fluid flow throughout the system (see
`
`whole document). A person having ordinary skill in the art at the time of the invention would have foundit
`
`obvious to have added a valve between the atomizer and the compressor in order to control flow of the air
`
`into the atomizer. The combination results in a second valve as claimed. As discussed above the
`
`combination teachesthat the control unit controls the system including the valves. That the control unit
`
`functions to output a control signal to open the second valve and then conductthe leak test is an intended
`
`use of the isolator. The isolator taught by the combination is capable of the claimed use.
`
`With regards to claims 7-12, the combination above doesnot teacha filter between the atomizer
`
`and the compressor. Kawasaki et al. teachesa filter (84) between the conversion of the decontamination
`
`fluid and the air stream from the compressor (at vaporizer 34) in order to provide clean air (para [0036)).
`
`A person having ordinary skill in the art at the time of the invention would have foundit obvious to have
`
`placedafilter between the compressor and the conversion of the decontamination fluid and the air stream
`
`from the compressor in order to provide clean air. A person having ordinary skill in the art at the time of
`
`the invention would have found it obvious to have placed the filter anywhere along the flow to the
`
`evaporator/converging point motivated by an expectation of successfully providing clean air to the
`
`chamber. The combination resultsinafilter provided between the atomizer and the compressor.
`
`

`

`Application/Control Number: 14/500,517
`
`Art Unit: 1799
`
`Page 7
`
`Conclusion
`
`8.
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in this Office
`
`action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of
`
`the extension of time policy as set forth in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE MONTHS from
`
`the mailing date of this action.
`
`In the event a first replyis 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 shortenedstatutory period will expire on the date the advisory action
`
`is mailed, and any extension fee 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 date ofthis final action.
`
`Any inquiry concerning this communication or earlier communications from the examiner should
`
`be directed to DONALD SPAMER whosetelephone number is (571)272-3197. The examiner can
`
`normally be reached on Mondaythrough Friday, 9 to 5.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor,
`
`Michael Marcheschi can be reached on 571-272-1374. The fax phone number for the organization where
`
`this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent Application
`
`Information Retrieval (PAIR) system. Status information for published applications may be obtained from
`
`either Private PAIR or Public PAIR. Status information for unpublished applications is available through
`
`Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on accessto the Private PAIR system, contact the Electronic Business Center (EBC)
`
`at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative
`
`or accessto the automatedinformation system, call 800-786-9199 (IN USA OR CANADA)or 571-272-
`
`1000.
`
`

`

`Application/Control Number: 14/500,517
`
`Page 8
`
`Art Unit: 1799
`
`/DONALD SPAMER/
`Examiner, Art Unit 1799
`
`/SEAN E CONLEY/
`Primary Examiner, Art Unit 1799
`
`