www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/792,045
`
`07/11/2022
`
`Hiroyuki INOUE
`
`083710-368 1
`
`9783
`
`Rimon PC - Panasonic Corporation
`8300 Greensboro Dr.
`Suite 500
`McLean, VA 22102
`
`ZHOU, QINGZHANG
`
`3752
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/24/2024
`
`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):
`USPTOmail @rimonlaw.com
`
`eofficeaction @appcoll.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Office Action Summary
`
`Application No.
`17/792,045
`Examiner
`JOEL ZHOU
`
`Applicant(s)
`INOUE etal.
`Art Unit
`3752
`
`AIA (FITF) Status
`Yes
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom 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) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 7/11/2022.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)(2) 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 Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-5 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`C] Claim(s)
`is/are allowed.
`Claim(s) 1-5 is/are rejected.
`(] Claim(s)__ is/are objectedto.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)( The specification is objected to by the Examiner.
`11) The drawing(s) filed on 7/11/2022 is/are: a)(¥) accepted or b)() 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:
`_—_c)L) None ofthe:
`b)L) Some**
`a)Y) All
`1.) Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No. |
`3.2.) 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.
`
`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)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240923
`
`

`

`Application/Control Number: 17/792,045
`Art Unit: 3752
`
`Page 2
`
`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
`
`The present application, filed on or after March 16, 2013, is being examined under the
`
`first inventor to file provisions of the AIA.
`
`Claim Interpretation
`
`The following is a quotation of 35 U.S.C. 112(f):
`
`(f) Elementin Claim fora Combination. -An elementin aclaim for a combination may be
`expressed as a meansorstep for performing a specified function without the recital of
`structure, material, or acts in supportthereof, and such claim shall be construed to cover the
`corresponding structure, material, or acts describedin the specification and equivalents
`thereof.
`
`The following is a quotation of pre-AlA 35 U.S.C. 112, sixth paragraph:
`
`An elementinaclaim fora combination may be expressed as a meansor step for performing
`a specified function without the recital of structure, material, or acts in supportthereof, and
`such claim shall be construed to cover the corresponding structure, material, or acts
`describedin the specification and equivalents thereof.
`
`The claimsin this application are given their broadest reasonable interpretation using the
`
`plain meaning of the claim language in light of the specification as it would be understood by
`
`one of ordinaryskill in the art. The broadest reasonable interpretation of aclaim element(also
`
`commonly referred to as a claim limitation) is limited by the description in the specification when
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`35 U.S.C. 112(f) or pre-AlA 35 U.S.C. 112, sixth paragraph, is invoked.
`
`As explained in MPEP § 2181, subsection I, claim limitations that meet the following
`
`three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AlIA 35 U.S.C. 112, sixth
`
`paragraph:
`
`(A)
`
`the claim limitation uses the term “means”or “step” or a term used as a substitute for
`
`“means”that is a generic placeholder (also called a nonce term or a non-structural term
`
`having no specific structural meaning) for performing the claimed function;
`
`

`

`Application/Control Number: 17/792,045
`Art Unit: 3752
`
`Page 3
`
`(B)
`
`the term “means”or “step” or the generic placeholder is modified by functional language,
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`typically, but not always linked by the transition word “for” (e.g., “means for’) or another
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`linking word or phrase, such as “configured to” or “so that”; and
`
`(C)
`
`the term “means”or “step” or the generic placeholder is not modified by sufficient
`
`structure, material, or acts for performing the claimed function.
`
`Use of the word “means”(or “step”) in aclaim with functional language creates a
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`rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C.
`
`112(f) or pre-AlA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is
`
`interpreted under 35 U.S.C. 112(f) or pre-AlA 35 U.S.C. 112, sixth paragraph, is rebutted when
`
`the claim limitation recites sufficient structure, material, or acts to entirely perform the recited
`
`function.
`
`Absence of the word “means”(or “step”) in aclaim creates a rebuttable presumption that
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`the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AlA 35 U.S.C.
`
`112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35
`
`U.S.C. 112(f) or pre-AlA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation
`
`recites function without reciting sufficient structure, material or acts to entirely perf orm the
`
`recited function.
`
`Claim limitations in this application that use the word “means”(or “step”) are being
`
`interpreted under 35 U.S.C. 112(f) or pre-AlA 35 U.S.C. 112, sixth paragraph, except as
`
`otherwise indicated in an Office action. Conversely, claim limitations in this application that do
`
`not use the word “means”(or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AlA
`
`35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
`
`This application includes one or moreclaim limitations that do not use the word “means,”
`
`but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AlA 35 U.S.C. 112, sixth
`
`paragraph, becausethe claim limitation(s) uses a generic placeholder that is coupled with
`
`functional language without reciting sufficient structure to perform the recited function and the
`
`

`

`Application/Control Number: 17/792,045
`Art Unit: 3752
`
`Page 4
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`generic placeholder is not preceded by astructural modifier. Such claim limitation(s) is/are:
`
`“laser irradiation unit’, “mist generation unit” in claim 1.
`
`Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or
`
`pre-AlA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the
`
`corresponding structure described in the specification as performing the claimed function, and
`
`equivalents thereof.
`
`In light of the specification, the limitation “laser irradiation unit” has been interpreted to
`
`cover the structure of “light emitting unit 101, first lens 102, second lens 103,thirdlens 104,
`
`galvano mirror 105, and adjustment unit 106” disclosed in paragraph 0035.
`
`In light of the specification, the limitation “mist generation unit” has been interpreted to
`
`cover the structure of“liquid supply unit 91 discharge electrode 92, and counter electrode 93”
`
`disclosed in paragraph 0034.
`
`If applicant does notintend to havethis/theselimitation(s) interpreted under 35 U.S.C.
`
`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may:
`
`(1) amend the claim
`
`limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AlA 35 U.S.C. 112,
`
`sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2)
`
`present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform
`
`the claimed function so asto avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA
`
`35 U.S.C. 112, sixth paragraph.
`
`Claim Rejections - 35 USC § 112
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.—The specification shall concludewith one or more claims particularly
`pointing out and distinctly claiming the subject matter which the inventor ora jointinventor
`regards as the invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AlA), second paragraph:
`The specification shall conclude with one or more claims particulary pointing out and distinctly
`claiming the subject matter which the applicant regards ashis invention.
`
`

`

`Application/Control Number: 17/792,045
`Art Unit: 3752
`
`Page5S
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`Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), second
`
`paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject
`
`matter which the inventor or ajoint inventor (or for applications subject to pre-AlA 35 U.S.C.
`
`112, the applicant), regards as the invention.
`
`Claim 4 contains the trademark/trade name “Peltier element”. Where atrademark or
`
`trade name is used ina claim as a limitation to identify or describe a particular material or
`
`product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112
`
`(pre-AlA), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The
`
`claim scopeis uncertain since the trademarkor trade name cannot be used properlyto identify
`
`any particular material or product. A trademark or trade name is used to identify asourceof
`
`goods, and not the goods themselves. Thus, atrademark or trade name does notidentify or
`
`describe the goods associated with the trademark or trade name.
`
`In the present case, the
`
`trademark/trade nameis used to identify/describe a thermoelectric phenomenonand,
`
`accordingly, the identification/description is indefinite.
`
`Claim Rejections - 35 USC § 102
`
`In the event the determination of the status of the application as subject to AIA 35 U.S.C.
`
`102 and 103 (or as subject to pre-AlA 35 U.S.C. 102 and 103) is incorrect, any correction of the
`
`statutory basis (i.e., changing from AIA to pre-AlA)for the rejection will not be considered anew
`
`ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would
`
`be the same under either status.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
`
`basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless —
`
`

`

`Application/Control Number: 17/792,045
`Art Unit: 3752
`
`Page 6
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`(a)(1) the claimed invention was patented, described in a printed publication, or in public use,
`on sale, or otherwise available to the public beforethe effectivefiling date of the claimed
`invention.
`
`Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Omura
`
`(JP2019126747A).
`
`With regard to claim 1, Omura discloses a cosmetic component spraying device (100)
`
`that has a mixture having a cosmetic component and a matrix, and an air blower that blowsair
`
`to the cosmetic component (Fig. 3), the cosmetic component spraying device comprising: a
`
`laser irradiation unit (“uitraviciet irraciation treaiment, excimer irradiation treatment} that
`
`irradiates the mixture with a laser light; and a mist generation unit (130) that generates mist(Fig.
`
`3).
`
`With regard to claim 2, the device of Omuradiscloses the invention as disclosed in the
`
`rejection of claim 1 above. Omura further discloses that the mist generated by the mist
`
`generation unit has a same polarity as a polarity of the cosmetic component (the discharge
`
`electrode 134 is capable of generating asamepolarity as the plurality of the cosmetic
`
`component, see Para. [0049)).
`
`With regard to claim 3, the device of Omuradiscloses the invention as disclosed in the
`
`rejection of claim 2 above. Omura further discloses that the mist generation unit (130) includes a
`
`discharge electrode (134), and generates the mist by electric power flowing through the
`
`discharge electrode (Para. [0020]).
`
`With regard to claim 4, the device of Omuradiscloses the invention as disclosed in the
`
`rejection of claim 3 above. Omura further discloses that the mist generation unit (130) includes a
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`liquid supply unit (moisture in surrounding air by fan 123) that supplies a liquid to the discharge
`
`electrode, and the liquid supply unit is at least one of a Peltier element and a tank that stores
`
`the liquid (Para. [(0020, 0021)).
`
`

`

`Application/Control Number: 17/792,045
`Art Unit: 3752
`
`Page 7
`
`With regard to claim 5, the device of Omuradiscloses the invention as disclosed in the
`
`rejection of claim 3 above. Omura further discloses that the discharge electrode (134) captures
`
`a substance having a polarity different from the polarity of the cosmetic component(the
`
`discharge electrode 134is capable of capturing asubstance having a polarity different from the
`
`polarity of the cosmetic component, see Para. [0049)).
`
`Double Patenting
`
`The nonstatutory double patenting rejection is based on a judicially created doctrine
`
`groundedin public policy (a policy reflected in the statute) so as to prevent the unjustified or
`
`improper timewise extension ofthe “right to exclude” granted by apatent and to prevent
`
`possible harassment by multiple assignees. A nonstatutory double patenting rejection is
`
`appropriate wherethe conflicting claims are not identical, but at least one examined application
`
`claim is not patentably distinct from the reference claim(s) because the examined application
`
`claim is either anticipated by, or would have been obvious over, the reference claim(s). See,
`
`e.g., Inre Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d
`
`1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir.
`
`1985); Inre Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d
`
`438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA
`
`1969).
`
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be
`
`used to overcomean actual or provisional rejection based on nonstatutory double patenting
`
`provided the reference application or patent either is shown to be commonly ownedwith the
`
`examined application, or claims an invention made as a result of activities undertaken within the
`
`scopeof ajoint research agreement. See MPEP§ 717.02 for applications subject to
`
`examination under the first inventorto file provisions of the AIA as explained in MPEP§ 2159.
`
`See MPEP§ 2146 et seq.for applications not subject to examination under the first inventor to
`
`

`

`Application/Control Number: 17/792,045
`Art Unit: 3752
`
`Page 8
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`file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR
`
`1.321(b).
`
`The filing of aterminal disclaimer by itself is not a complete reply to a nonstatutory
`
`double patenting (NSDP)rejection. A complete reply requires that the terminal disclaimer be
`
`accompanied by a reply requesting reconsideration of the prior Office action. Even where the
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`NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection |.B.1.
`
`For areply to anon-final Office action, see 37 CFR 1.111(a). For areplyto final Office action,
`
`see 37 CFR 1.113(c). A requestfor reconsideration while not provided for in 37 CFR 1.113(c)
`
`maybe filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
`
`The USPTOInternet website contains terminal disclaimer forms which may be used.
`
`Please visit www.uspto.gov/patent/patents-forms. The actualfiling date of the application in
`
`which the formis filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or
`
`PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may befilled out completely
`
`online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-
`
`processed and approved immediately upon submission. For more information about eTerminal
`
`Disclaimers, refer to www.uspto.gov/patents/apply/applying -online/eterminal-disclaimer.
`
`Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as
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`being unpatentable over claims 1-5 of copending Application No. 17/794,160 (reference
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`application). Although the claims at issue are notidentical, they are not patentably distinct from
`
`each other becauseboth the instant application and the copending application claim a cosmetic
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`component spraying device comprising a laser irradiation unit and a mist generation unit, the
`
`mist generation unit includes aliquid supply unit that supplies a liquid to the discharge
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`electrode, and the mist generated by the mist generation unit has the samepolarity as the
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`polarity of the cosmetic component from the liquid.
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`This is a provisional nonstatutory double patenting rejection because the patentably
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`indistinct claims have notin fact been patented.
`
`

`

`Application/Control Number: 17/792,045
`Art Unit: 3752
`
`Page 9
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`Conclusion
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`Anyinquiry concerning this communication or earlier communications from the examiner
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`should be directed to JOEL ZHOU whose telephone number is (571)270-1163. The examiner
`
`can normally be reached Mon-Fri 9AM-5PM.
`
`Examiner interviews are available via telephone, in-person, and video conferencing
`
`using a USPTOsupplied 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, ARTHUR HALL can be reached on 5712701814. The fax phone number for the
`
`organization wherethis application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be
`
`obtained from Patent Center. Unpublished application information in Patent Center is available
`
`to registered users. Tofile and manage patent submissions in Patent Center, visit:
`
`https://patentcenter.uspto.gov. Visit httos://www.uspto.gov/patents/apply/patent-center for more
`
`information about Patent Center and https://www.uspto.gov/patents/docxfor information about
`
`filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC)at
`
`866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service
`
`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`JOEL . ZHOU
`Primary Examiner
`Art Unit 3752
`
`

`

`Application/Control Number: 17/792,045
`Art Unit: 3752
`
`/QINGZHANG ZHOU/
`Primary Examiner, Art Unit 3752
`
`Page 10
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`