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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`wwwusptogov
`
`
`
`
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`14/666,115
`
`03/23/2015
`
`Hironobu SEKINE
`
`092122—0042
`
`6633
`
`20277
`7590
`01’0”)”
`MCDERMOTT WILL&EMERY LLP —
`The McDermott Building
`BOWERS, NATHAN ANDREW
`500 North Capitol Street, NW.
`WASHINGTON, DC 20001
`
`PAPER NUMBER
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`1799
`
`NOTIFICATION DATE
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`DELIVERY MODE
`
`01/05/2017
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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):
`
`ipdocketmwe @ mwe.com
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 14/666,115 SEKINE ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office Action Summary
`
`NATHAN BOWERS $2213 1799
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`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).
`
`In no event, however, may a reply be timely filed
`
`Status
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`1)IZI Responsive to communication(s) filed on 23 March 2015.
`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) 1-13 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
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`is/are allowed.
`6)I:I Claim(s)
`7)|Z| Claim(s)_1-13 is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
`
`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.LIsnto. ovI’ atentS/init events/
`
`
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`iindex.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)|Xl The drawing(s) filed on 23 March 2015 is/are: a)IZI 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).
`
`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.IXI Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`SIXI 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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`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 4/12/2016 3/25/2015.
`
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
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`Part of Paper No./Mai| Date 20161004
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`

`

`Application/Control Number: 14/666,115
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`Page 2
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`Art Unit: 1799
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`Claim Rejections - 35 USC § 1 12
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`The following is a quotation of 35 U.S.C. 112(b):
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`(b) CONCLUSION—The specification shall conclude with one or more claims particularly
`pointing out and distinctly claiming the subject matter which the inventor or a joint inventor
`regards as the invention.
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`Claims 3, 7-10 and 12 are rejected under 35 U.S.C. 112(b) as being indefinite
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`for failing to particularly point out and distinctly claim the subject matter which
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`the inventor or a joint inventor regards as the invention.
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`Claims 3, 7-10 and 12 recite the limitation "the elastic member". There is
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`insufficient antecedent basis for this limitation in the claims.
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`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.
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`

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`Application/Control Number: 14/666,115
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`Page 3
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`Art Unit: 1799
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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 35 U.S.C. 103 are summarized as follows:
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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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`This application currently names joint inventors. In considering patentability of the
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`claims the examiner presumes that the subject matter of the various claims was
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`commonly owned as of the effective filing date of the claimed invention(s) absent any
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`evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
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`point out the inventor and effective filing dates of each claim that was not commonly
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`owned as of the effective filing date of the later invention in order for the examiner to
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`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
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`prior art against the later invention.
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`Claims 1-3 and 6-13 are rejected under 35 U.S.C. 103 as being unpatentable
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`over Yokoi (US 20110212513) in view of Urban (US 20140106657), Elesa SpA (DE
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`20315860) and Kondo (JP 8-317516).
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`With respect to claim 1, Yokoi discloses an isolator box (Figure 2:10) comprising
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`gloves (Figure 2:19B). The isolator includes a main body case (Figure 2:11) comprising
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`

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`Application/Control Number: 14/666,115
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`Page 4
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`Art Unit: 1799
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`a work space (Figure 2:16) isolated from an exterior thereof. A work plate (Figure 2:42)
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`is provided within the main body case and includes an opening portion that connects the
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`work space and a device space (Figure 2:20) located below the main body case. The
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`opening portion is covered by a first cover member (Figure 3:20A). This is described in
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`at least paragraph [0058]. The first cover member is openable and closeable with
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`respect to the opening portion. Yokoi, however, does not expressly state that the first
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`cover member has a hole portion configured to interact with an operator's finger or that
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`a second cover member is provided to open and close the hole portion.
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`Urban discloses an isolator (Figure 1 :10) comprising gloves (Figure 1:108). The
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`isolator includes a main body case (generally, Figure 1:140) defining a work space
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`(generally, Figure 1:144). The main body case is connected to a plurality of secondary
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`containment spaces via a plurality of corresponding doors (Figure 1:115). From the
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`Figures, it appears that each door includes a graspable hole portion (Figure 1:123) to be
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`manipulated by the operator through the gloves.
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`The Elesa SpA company a first cover member (Figure 2:1) mounted onto a
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`housing (e.g. an equipment box) to provide an opening into the housing. The first cover
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`member includes a hole portion (Figure 3:3) that is accessed by an operator's finger. A
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`second cover member (Figure 2:4) is mounted to the first cover member in a manner
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`openable and closeable with respect to the hole portion.
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`Kondo discloses a first cover member (Figure 7:23) mounted onto a housing (e.g.
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`breaker box having a distribution board) to provide an opening into the housing (Figure
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`7:22). The provided English Derwent summary states that the first cover member is
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`

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`Application/Control Number: 14/666,115
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`Page 5
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`Art Unit: 1799
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`connected to the housing by a hinge. Kondo additionally states that the first cover
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`member includes a hole portion (Figure 7:25) that is accessed by an operator's finger.
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`A second cover member (Figure 7:26) is mounted to the first cover member in a manner
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`openable and closeable with respect to the hole portion.
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`Before the effective filing date, it would have been obvious to ensure that the
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`Yokoi isolator included a first cover member comprising a hole portion protected by a
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`second cover member. As evidenced by Urban, the subdivision of an isolator body into
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`multiple compartments is known in the art, as is the use of doors comprising finger-
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`accessible hole portions. The Elesa reference and Kondo show further that second
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`cover members may be provided over these hole portions to protect them from the
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`accumulation of dirt and dust when not in use. Combining prior art elements according
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`to known methods to yield predictable results is prima facie obvious. See MPEP 2143.
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`With respect to claims 2 and 3, Yokoi, Urban, Elesa and Kondo disclose the
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`combination as described above. The Elesa reference and Kondo each teach an elastic
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`hinge member configured to push the second cover member upward with respect to the
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`first cover member. The Elesa reference and Kondo state that the second cover
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`member is pushed downward by an operator’s finger, and when released, will revert
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`back to an original position by action of the elastic hinge member.
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`With respect to claims 6-8, Yokoi, Urban, Elesa and Kondo disclose the
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`combination as described above. Yokoi and Urban each show first cover members
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`

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`Application/Control Number: 14/666,115
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`Page 6
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`Art Unit: 1799
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`provided substantially on the same plane as a supporting work plate. The Elesa
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`reference and Kondo teach that second cover members may be provided over
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`corresponding second cover members on substantially a common plane. The Elesa
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`and Kondo second cover members are shown as being just slightly above their
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`respective first cover members.
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`With respect to claims 9 and 10, Yokoi, Urban, Elesa and Kondo disclose the
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`combination as described above. Minor changes to size, shape or position that do not
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`substantially affect device functionality or operation are considered to be prima facie
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`obvious. See MPEP 2144.04. Adjusting the thickness or location of a second cover
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`member added to the Yokoi system so that its bottom surface is positioned below the
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`upper surface of an adjoined first cover member would not have impacted how either
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`cover member is used. Absent a showing of criticality, the position of the bottom
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`surface of the second cover member relative to the position of the upper surface of the
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`first cover member appears to be purely a matter of design choice.
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`With respect to claims 11 and 12, Yokoi, Urban, Elesa and Kondo disclose the
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`combination as described above. The Elesa reference additionally teaches that a
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`restraint portion (Figure 1 :7) is used to restrain rotational movement of the second cover
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`member with respect to the first cover member. The restraint portion 7 is connected to
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`the elastic member 5, 6, and therefore functions to at least partially fix the elastic
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`member to the cover portions.
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`Application/Control Number: 14/666,115
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`Page 7
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`Art Unit: 1799
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`With respect to claim 13, Yokoi, Urban, Elesa and Kondo disclose the
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`combination as described above. The Elesa reference further shows that the elastic
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`member includes a first portion 6 mounted to the first cover member and a second
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`portion 5 mounted to the second cover member. The second elastic portion 5 appears
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`in Fig. 3 to abut a surface of the first cover member when the second cover member is
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`brought into a rest state.
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`Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over
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`Yokoi (US 20110212513) in view of Urban (US 20140106657), Elesa SpA (DE
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`20315860) and Kondo (JP 8-317516) as applied to claim 1, and further in view of
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`Hammelbacher (WO 2011124209)1 and/or Polsky (US 20110126498).
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`Yokoi, Urban, Elesa and Kondo disclose the combination in claim 1, however do
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`not expressly state that the gap between the first cover member and the second cover
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`member is greater than a thickness of a material in the fingertips of the glove.
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`Hammelbacher discloses an isolator comprising work gloves. Paragraph [0059]
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`states that the items, such as the keypads, within the isolator are appropriately sized in
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`accordance with the gloves.
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`Polsky discloses an isolator comprising work gloves. See Fig. 1. Polsky teaches
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`in paragraph [0052] that accidental removal of a glove from an operator's hand is a
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`known problem.
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`1 All citations made to this reference will be in view of the US 2014/0055248 publication, which is an
`English language translation
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`

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`Application/Control Number: 14/666,115
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`Page 8
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`Art Unit: 1799
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`Before the effective filing date of the claimed invention, it would have been
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`obvious to ensure that the first and second cover members of the modified Yokoi
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`system are sized with the glove shape and thickness in mind. As evidenced by Polsky,
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`one of ordinary skill would have not wanted the Yokoi gloves to be inadvertently
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`removed for any reason, including, for example, being accidentally pinched off in the
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`gap between first and second cover members. Hammelbacher is evidence that simple
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`modifications to isolator system equipment to compensate for glove bulkiness is well
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`within the ability of one of ordinary skill.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to NATHAN BOWERS whose telephone number is
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`(571 )272—861 3. The examiner can normally be reached on Monday-Friday 7 AM to 4
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`PM.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Michael Marcheschi can be reached on (571) 272-1374. The fax phone
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`number for the organization where this application or proceeding is assigned is 571 -
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`273-8300.
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`

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`Application/Control Number: 14/666,115
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`Page 9
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`Art Unit: 1799
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
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`/NATHAN BOWERS/
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`Primary Examiner, Art Unit 1799
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`