UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`15/719,323
`
`09/28/2017
`
`Hironobu SEKINE
`
`065933-0733
`
`8226
`
`12/14/2018
`759°
`20277
`MCDERMOTT WILL & EMERY LLP
`
`The MeDermott Building
`500 North Capitol Street, NW.
`WASHINGTON DC 20001
`
`HASSAN' ”BAN M
`
`1799
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/14/2018
`
`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
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`following e—mail address(es):
`
`ipdoeketmwe @ mwe. com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Off/09 A0170” Summary
`
`Application No.
`15/719,323
`Examiner
`LIBAN M HASSAN
`
`Applicant(s)
`SEKINEetal.
`Art Unit
`1799
`
`AIA Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 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 CFR 1. 136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f 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).
`
`Status
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`1). Responsive to communication(s) filed on 28 September 2017.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set 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 except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
`
`5)
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`Claim(s) fl is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
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`Claim(s) fl is/are rejected.
`
`[:1 Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
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`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabie. 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
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10)[:] The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 28 September 2017 is/are: a). accepted or b)D 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). All
`
`b)D Some”
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`C)D None of the:
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`1.. Certified copies of the priority documents have been received.
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`2.[:] 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
`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.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mai| Date 09/28/2017 and 02/28/2018_
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20181210
`
`

`

`Application/Control Number: 15/719,323
`Art Unit: 1799
`
`Page 2
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`DETAILED CORRESPONDENCE
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`Notice ofPre-AIA 0r AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
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`Claim Objections
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`2.
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`Claims 1—4 are objected to because of the following informalities: regarding claim 1, the
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`limitation “an incubation space” in line 4 should probably read “the incubation space”.
`
`Regarding claim 2, the limitation “an incubation space” in line 3 should probably read “the
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`incubation space”. Regarding claim 3, the limitation “an incubation space” in line 3 should
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`probably read “the incubation space”. Regarding claim 4, the limitation “4 incubation space” in
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`line 3 should probably read “the incubation space”.
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`3.
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`Appropriate correction is required.
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`4.
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`The following is a quotation of 35 U.S.C. 112(f):
`
`Claim Interpretation
`
`(f) Element in Claim for a Combination. , An element in a claim for a combination may be expressed
`as a means or step for performing a specified function without the recital of structure, material, or acts
`in support thereof, and such claim shall be construed to cover the corresponding structure, material, or
`acts described in the specification and equivalents thereof.
`
`The following is a quotation of pre—AIA 35 U.S.C. 112, sixth paragraph:
`
`An element in a claim for a combination may be expressed as a means or step for performing a
`specified function without the recital of structure, material, or acts in support thereof, and such claim
`shall be construed to cover the corresponding structure, material, or acts described in the specification
`and equivalents thereof.
`
`

`

`Application/Control Number: 15/719,323
`Art Unit: 1799
`
`Page 3
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`5.
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`This application includes one or more claim limitations that do not use the word “means,”
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`but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth
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`paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with
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`functional language without reciting sufficient structure to perform the recited function and the
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`generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
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`humidifying in claim 1.
`
`Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or
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`pre—AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the
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`corresponding structure described in the specification as performing the claimed function, and
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`equivalents thereof.
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`If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C.
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`112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph, applicant may:
`
`(1) amend the claim
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`limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112,
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`sixth paragraph (e. g., by reciting sufficient structure to perform the claimed function); or (2)
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`present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform
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`the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre—AIA
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`35 U.S.C. 112, sixth paragraph.
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`Claim Rejections - 35 US C § 112
`
`6.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.7The 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.
`
`The following is a quotation of 35 U.S.C. 112 (pre—AIA), second paragraph:
`
`

`

`Application/Control Number: 15/719,323
`Art Unit: 1799
`
`Page 4
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`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`7.
`
`Claims 1—4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre—AIA), second
`
`paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject
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`matter which the inventor or a joint inventor, or for pre—AIA the applicant regards as the
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`invention.
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`8.
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`Regarding claims 1 and 4, claim limitation “control unit” invokes 35 U.S.C. 112(f) or
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`pre—AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the
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`corresponding structure, material, or acts for performing the entire claimed function and to
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`clearly link the structure, material, or acts to the function.
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`The instant specification as originally filed discloses a control unit for the magnitude of
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`electric power (see paragraph 8 of the instant specification). However, the specification as filed
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`fails to disclose what structure constitutes the control unit that can tilt the base (i.e., what
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`structure does the control unit comprise?). For examination purposes, the “control unit” is
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`interpreted to be any device capable of controlling the magnitude of an electric power. Therefore,
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`the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre—AIA 35 U.S.C. 112, second
`
`paragraph.
`
`Applicant may:
`
`(a)
`
`Amend the claim so that the claim limitation will no longer be interpreted as a limitation
`
`under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph;
`
`(b)
`
`Amend the written description of the specification such that it expressly recites what
`
`structure, material, or acts perform the entire claimed function, without introducing any
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`new matter (35 U.S.C. 132(a)); or
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`

`

`Application/Control Number: 15/719,323
`Art Unit: 1799
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`Page 5
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`(c)
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`Amend the written description of the specification such that it clearly links the structure,
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`material, or acts disclosed therein to the function recited in the claim, without introducing
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`any new matter (35 U.S.C. 132(a)).
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`If applicant is of the opinion that the written description of the specification already
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`implicitly or inherently discloses the corresponding structure, material, or acts and clearly links
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`them to the function so that one of ordinary skill in the art would recognize what structure,
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`material, or acts perform the claimed function, applicant should clarify the record by either:
`
`(a)
`
`Amending the written description of the specification such that it expressly recites the
`
`corresponding structure, material, or acts for performing the claimed function and clearly
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`links or associates the structure, material, or acts to the claimed function, without
`
`introducing any new matter (35 U.S.C. 132(a)); or
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`(b)
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`Stating on the record what the corresponding structure, material, or acts, which are
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`implicitly or inherently set forth in the written description of the specification, perform
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`the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o)
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`and 2181.
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`9.
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`The term "near" in claim 2 is a relative term which renders the claim indefinite. The term
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`"near" is not defined by the claim, the specification does not provide a standard for ascertaining
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`the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the
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`scope of the invention.
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`10.
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`Claims 2—3 are rejected as being dependent upon a rejected base claim.
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`

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`Application/Control Number: 15/719,323
`Art Unit: 1799
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`Page 6
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`Claim Rejections - 35 US C § 102
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`11.
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`In the event the determination of the status of the application as subject to AIA 35 U.S.C.
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`102 and 103 (or as subject to pre—AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the
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`statutory basis for the rejection will not be considered a new ground of rejection if the prior art
`
`relied upon, and the rationale supporting the rejection, would be the same under either status.
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`12.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
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`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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`(a)(l) the claimed invention was patented, described in a printed publication, or in public use, on sale or
`otherwise available to the public before the effective filing date of the claimed invention.
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`13.
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`Claim(s) 1-4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yuichi
`
`et al. (US 5,519,188) (hereinafter “Yuichi”).
`
`14.
`
`Regarding claim 1, Yuichi discloses an insulated box (outer box (2)) including an
`
`incubation space surrounded by a plurality of inner faces (incubation space includes at least four
`
`inner faces; see FIGS. 1—2; col. 2, 11. 43—65);
`
`a humidifying unit that humidifies the incubation space (a humidifying tray (8) disposed
`
`on the bottom portion of the inner boxy (4); see col. 3, 11. 3—5; FIGS. 1—2);
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`a plurality of heating units that respectively heat the plurality of inner faces, with electric
`
`power supplied (heaters (17A—C) configured to heat the inner faces of the incubation space; see
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`FIGS. 1—2; col. 3, 11. 20—29); and
`
`a control unit that controls the magnitude of electric power supplied to each of the
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`plurality of heating units, wherein the control unit periodically and repeatedly changes the
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`magnitude of electric power supplied to the plurality of heating units, at timing different for each
`
`of the plurality of inner faces (Yuichi discloses a control unit (19) in communication with the
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`

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`Application/Control Number: 15/719,323
`Art Unit: 1799
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`Page 7
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`heaters and capable of performing PID control or the like, and the control unit (19)
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`independently controls each of the plurality of heaters; see col. 3, lines 30—55).
`
`It is noted that a recitation directed to the manner in which a claimed apparatus is
`
`intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art
`
`has the capability to so perform. Apparatus claims must distinguish from the prior art in terms of
`
`structure rather than function (see MPEP 2114). The control unit of the Yuichi is structurally the
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`same as the instant control unit, i.e., the control unit controls each of the plurality of heaters
`
`independently by controlling duration and heating amount (see col. 4, line 66 to col. 5, line 50).
`
`Thus, the intended uses of the control unit do not further define any structural features to the
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`claimed control unit but rather only define how the control unit may be used. The prior art
`
`discloses all of the structural features of the claimed control nit and thus since the structure is the
`
`same, the claimed functions are apparent.
`
`15.
`
`Regarding claim 2, Yuichi further discloses among the plurality of heating units (heaters
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`17A—C), the heating unit that heats a bottom face of the incubation space among the plurality of
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`inner faces is defined as a first heating unit (bottom face of the incubation space includes a heater
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`17A ;
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`the humidifying unit is provided near the bottom face (a humidifying tray (8) is disposed
`
`on the bottom portion of the incubation space (4); see col. 3, 11. 3—5; FIGS. 1—2); and
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`the control unit provides control so that electric power supplied to the first heating unit is
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`greater than electric power supplied to each of the plurality of heating units except the first
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`heating unit (Yuichi discieses wherein the heat generation of the hettom heater (17A) is higher
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`than that of the other heaters ( l7B—C; see mi. 5, lines 15—50). Further, the mntroi unit ( i9)
`
`

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`Application/Control Number: 15/719,323
`Art Unit: 1799
`
`Page 8
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`independentty controls the power supply to each of the heaters, and thus fully capahie of
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`supplying desired electric pewer.
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`16.
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`Regarding claim 3, Yuichi further discloses arming the phirality of l‘ieating units, the
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`heating unit that heats a tep heard of the incahation space ginning the pitirality (if inner faces is
`
`defined as a first heating unit {Yuichi discteses wherein the heaters (t Tia-£3) heat the air inside
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`the ineuhatien space and thus heat the top pcti‘tiOIi ef the incubation space; and any one at the
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`heaters (1'7B~C) will satisfy the claimed first heating unit; see eel. 4, lines 112(3); and
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`the central unit provides centre} s0 that electric power supplied to: the first heating unit is
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`iess than eiectric pewer supplied to each 0f the pitirality of heating units except the first heating
`
`unit (Yuichi discloses a control unit (19) in communication with the heaters and capable of
`
`performing PID control or the like, and the control unit (19) independently controls the electric
`
`power supply to each of the plurality of heaters; see col. 3, lines 30—55).
`
`It is noted that a recitation directed to the manner in which a claimed apparatus is
`
`intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art
`
`has the capability to so perform. Apparatus claims must distinguish from the prior art in terms of
`
`structure rather than function (see MPEP 2114). The control unit of the Yuichi is structurally the
`
`same as the instant control unit, i.e., the control unit controls each of the plurality of heaters
`
`independently by controlling duration and heating amount (see col. 4, line 66 to col. 5, line 50).
`
`Thus, the intended uses of the control unit do not further define any structural features to the
`
`claimed control unit but rather only define how the control unit may be used. The prior art
`
`discloses all of the structural features of the claimed control nit and thus since the structure is the
`
`same, the claimed functions are apparent.
`
`

`

`Application/Control Number: 15/719,323
`Art Unit: 1799
`
`Page 9
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`17.
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`Regarding claim 4, Yuichi discloses an insulated box (outer box (2)) including an
`
`incubation space surrounded by a plurality of inner faces (incubation space includes at least four
`
`inner faces; see FIGS. 1—2; col. 2, 11. 43—65);
`
`a humidifying unit that humidifies the incubation space (a humidifying tray (8) disposed
`
`on the bottom portion of the inner boxy (4); see col. 3, 11. 3—5; FIGS. 1—2);
`
`a plurality of heating units that respectively heat the plurality of inner faces (heaters
`
`(17A—C) configured to heat the inner faces of the incubation space; see FIGS. 1—2; col. 3, ll. 20—
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`29); and
`
`a control unit that controls the magnitude of electric power supplied to each of the
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`plurality of heating units,
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`wl'ierein the camtrol unit c:{_n'ttr{_ils electric pewer supplied to each {if the plurality of
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`heating units so as to repeatedly change the temperature (ii attribution on the plurality 0f inner
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`faces at predetermined timing (Yuichi discloses a control unit (19) in communication with the
`
`heaters and capable of performing PID control or the like, and the control unit (19)
`
`independently controls the electric power supply to each of the plurality of heaters; see col. 3,
`
`lines 30-55).
`
`It is noted that a recitation directed to the manner in which a claimed apparatus is
`
`intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art
`
`has the capability to so perform. Apparatus claims must distinguish from the prior art in terms of
`
`structure rather than function (see MPEP 2114). The control unit of the Yuichi is structurally the
`
`same as the instant control unit, i.e., the control unit controls each of the plurality of heaters
`
`independently by controlling duration and heating amount (see col. 4, line 66 to col. 5, line 50).
`
`Thus, the intended uses of the control unit do not further define any structural features to the
`
`

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`Application/Control Number: 15/719,323
`Art Unit: 1799
`
`Page 10
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`claimed control unit but rather only define how the control unit may be used. The prior art
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`discloses all of the structural features of the claimed control nit and thus since the structure is the
`
`same, the claimed functions are apparent.
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`18.
`
`No claim is allowed.
`
`Conclusion
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`19.
`
`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to LIBAN M HASSAN whose telephone number is (571)270—7636.
`
`The examiner can normally be reached on 8:30 — 5:00 PM.
`
`Examiner interviews are available via telephone, in—person, and video conferencing using
`
`a USPTO supplied web—based collaboration tool. To schedule an interview, applicant is
`
`encouraged to use the USPTO Automated Interview Request (AIR) at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Michael Marcheschi can be reached on 5712721374. The fax phone number for the
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`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 access to the Private PAIR
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`