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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
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`
`
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`13/632,311
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`10/01/2012
`
`Shinji FUKUI
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`ISS0016US
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`1655
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`08/12/2015
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`7590
`234”
`CANTOR COLB URN LLP
`20 Church Street
`22nd Floor
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`Hartford, CT 06103
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`CLEVELAND, TIMOTHY c
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`1774
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`08/12/2015
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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):
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`usptopatentmail @ cantorcolburn.com
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`PTOL—90A (Rev. 04/07)
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`

`

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`Application No.
`Applicant(s)
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` 13/632,311 FUKUI ET AL.
`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office ACtion summary
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`1774TIMOTHY CLEVELAN D it?“
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 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).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
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`In no event, however, may a reply be timely filed
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`-
`-
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`Status
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`1)IXI Responsive to communication(s) filed on 14 July 2015.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)lX| This action is non-final.
`2a)I:| 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)|:I 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 EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`1) E Notice of References Cited (PTO-892)
`3) I] Interview Summary (PTO-413)
`.
`.
`Paper No(s)/Mai| Date.
`2) E Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date 10/01/2012 and 01/02/2014. 4) D Other: —-
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`US. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20150728
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`Disposition of Claims*
`5)|XI CIaim(s)1-_18is/are pending in the application.
`5a) Of the above claim(s) 7-_18is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`s L6 is/are rejected.
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`is/are objected to.
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`) )
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`_
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`are subject to restriction and/or election requirement.
`9)|:l 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
`://www.usnto. ov/ atents/init events/
`h/index.‘s
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`
`
`
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`or send an inquiry to PF"I-Ifeedback-fi‘buspto.qov.
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`Application Papers
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`10)IXI The specification is objected to by the Examiner.
`11)|:I The drawing(s) filed on _ is/are: a)I:I accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
`12)IZI 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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`b)I:I Some” c)I:I None of the:
`a)le All
`1.IZI Certified copies of the priority documents have been received.
`2.|:| Certified copies of the priority documents have been received in Application No.
`3.I:I 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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`Attach ment(s)
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`
`

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`Application/Control Number: 13/632,311
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`Page 2
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`Art Unit: 1774
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1.
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`The present application is being examined under the pre-AlA first to invent
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`provisions.
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`Election/Restrictions
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`2.
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`Applicant's election with traverse of Group I, claims 1-6 in the reply filed on 14
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`July 2015 is acknowledged. The traversal is on the ground(s) that there is no “serious
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`burden” present in examining the remaining claims. This is not found persuasive
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`because the Applicant did not respond to the Examiner's rationale that a serious search
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`and/or examination burden would be present if restriction were not required as the
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`invention would require a different field of search and searches using different key
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`words. As Applicant did not provide any rationale beyond citing MPEP § 803, the
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`restriction is viewed to be proper.
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`The requirement is still deemed proper and is therefore made FINAL.
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`3.
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`Claims 7-18 are withdrawn from further consideration pursuant to 37 CFR
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`1.142(b), as being drawn to a nonelected invention, there being no allowable generic or
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`linking claim.
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`Specification
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`4.
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`The specification is objected to as failing to provide proper antecedent basis for
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`the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01 (0). Correction
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`of the following is required: the “tip portion" of claim 2 does not have proper antecedent
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`

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`Application/Control Number: 13/632,311
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`Page 3
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`Art Unit: 1774
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`basis in the specification. The closest reference to the limitation is found on pages 25
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`and 26 using the term “the top portion 553”.
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`Claim Rejections - 35 USC § 1 12
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`5.
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`The following is a quotation of 35 U.S.C. 112(b):
`(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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`The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph:
`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.
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`6.
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`Claims 1-6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA),
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`second paragraph, as being indefinite for failing to particularly point out and distinctly
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`claim the subject matter which the inventor or a joint inventor, or for pre-AIA the
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`applicant regards as the invention.
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`7.
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`In regard to claim 1, the limitation regarding the external cylindrical portion being
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`“double-pipe constructed" is indefinite.
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`It is unclear whether the phrase is referring to
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`the combined structure of the internal and external cylindrical portions, whether the
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`external cylinder portion has two connected pipes, or whether the external cylinder
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`portion is formed by two pipe walls. For the purpose of examination, the phrase is
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`interpreted as referring to the combined structure of the internal and external cylindrical
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`portions.
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`8.
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`In regard to claim 6, the phrase “some midpoint” renders the claim indefinite.
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`It is
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`unclear if the heater is sized so only to be located at a single "point" or if the midpoint is
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`of the center of the cross section of pipe or the center of the length of the pipe. For the
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`Application/Control Number: 13/632,311
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`Page 4
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`Art Unit: 1774
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`purpose of examination, the limitation will be given the broadest reasonable
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`interpretation.
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`Claim Rejections - 35 USC § 103
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`9.
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`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
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`for all obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102 of this title, if the differences between the subject matter sought to
`be patented and the prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains. Patentability shall not be negatived by the manner in which the
`invention was made.
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`10.
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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 pre-AIA 35 U.S.C. 103(a) 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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`11.
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`This application currently names joint inventors. In considering patentability of the
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`claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter
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`of the various claims was commonly owned at the time any inventions covered therein
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`were made absent any evidence to the contrary. Applicant is advised of the obligation
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`under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was
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`not commonly owned at the time a later invention was made in order for the examiner to
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`Application/Control Number: 13/632,311
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`Page 5
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`Art Unit: 1774
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`consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C.
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`102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
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`12.
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`Claims 1-6 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable
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`over Yokoi et al. (WO 2010/021139 using the English-language translation provided
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`with IDS 01/02/2014; hereinafter "Yokoi") in view of Shibauchi et al. (US 5078976;
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`hereinafter “Shibauchi”).
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`13.
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`In regard to claims 1, 3 and 4, Yokoi discloses a hydrogen peroxide gas
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`generator 402 comprising an atomizing unit (vaporization section 420) configured to
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`atomize hydrogen peroxide solution stored in a storage portion (cup 414) by applying
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`ultrasonic vibration with an ultrasonic transducer 413; a heater 422 provided above the
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`atomizing unit, the heater configured to heat and gasify the hydrogen peroxide solution
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`atomized in the atomizing unit; an internal cylindrical portion (heating tube 421) whose
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`internal space has the heater arranged therein, the internal cylindrical portion configured
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`to guide upward the hydrogen peroxide solution atomized in the atomizing unit flowing
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`together with a carrier gas from opening 452; and an internal fin (path forming plate
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`423) capable of regulating a flow direction of the atomized hydrogen peroxide solution,
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`the internal fin attached between an internal wall surface of the internal cylindrical
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`portion and the heater. See figure 2 and pages 5 and 6 of the English-language
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`translation.
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`14.
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`Yokoi is silent with regard to an external cylindrical portion whose internal space
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`has the internal cylindrical portion arranged therein, having a gas flow path for the
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`carrier gas flowing downward toward the storage portion formed between the external
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`Application/Control Number: 13/632,311
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`Page 6
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`Art Unit: 1774
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`cylindrical portion and the internal cylindrical portion, the carrier gas flowing through the
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`gas flow path caused to contact the internal cylindrical portion heated by the heater, the
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`heated carrier gas introduced to the storage portion.
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`15.
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`Shibauchi discloses a vaporizing apparatus for vaporizing hydrogen peroxide
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`having an external cylindrical portion (upper outer cylinder 2) whose internal space has
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`an internal cylindrical portion (inner cylinder 7) arranged therein, having a gas flow path
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`for the carrier gas flowing downward toward the storage portion formed between the
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`external cylindrical portion and the internal cylindrical portion, the carrier gas flowing
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`through the gas flow path caused to contact the internal cylindrical portion. Shibauchi
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`further discloses the structure of an external fin (flange 7A having opening 78) capable
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`of regulating a flow direction of the carrier gas, the external fin attached between an
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`external wall surface of the internal cylindrical portion and an internal wall surface of the
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`external cylindrical portion. See Figure 2 and col. 4, lines 12-55.
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`16.
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`It would have been obvious for one of ordinary skill in the art at the time of the
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`invention to have modified the apparatus of Yokoi to have the carrier gas inlet pipe
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`surrounding an inner cylinder as disclosed by Shibauchi without creating any new or
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`unexpected results for the purpose of fitting a desired form factor of the main
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`components being formed in line with one another.
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`17.
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`In regard to claim 2, Yokoi discloses wherein the storage portion (cup 414)
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`includes a concave portion concave in an inverted truncated conical shape.
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`18.
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`Yokoi and Shibauchi are silent with regard to the internal cylindrical portion being
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`configured with a cylindrical member having a lower end portion cut diagonally with
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`Application/Control Number: 13/632,311
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`Page 7
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`Art Unit: 1774
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`respect to a longitudinal direction of the cylindrical member, and the lower end portion
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`having a tip portion arranged at a height close to an inclined surface of the concave
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`portion so that a flow velocity of the carrier gas passing along the tip portion of the lower
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`end portion becomes higher than a flow velocity of the carrier gas passing along other
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`portions of the lower end portion. However, Shibauchi does disclose wherein the flow of
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`carrier gas is passed through an opening 78, which would necessarily function to
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`increase the velocity of the carrier gas flow. The Courts have held that the change in
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`form or shape, without any new or unexpected results, is an obvious engineering
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`design. See In re Dai/ey, 149 USPQ 47 (CCPA 1976) (see MPEP § 2144.04).
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`Therefore, it is viewed that the above combination of Yokoi and Shibauchi is functionally
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`equivalent to the claimed structure and therefore, the claimed configuration is merely an
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`obvious engineering design which would not produce any new or unexpected result.
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`19.
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`In regard to claim 5, Yokoi and Shibauchi are silent with regard to the thermal
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`conductivity of the internal and external cylinders. However, the Courts have held that
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`the selection of a known material, which is based upon its suitability for the intended
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`use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ
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`416 (CCPA 1960) (see MPEP § 2144.07). Therefore, it would have been within the
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`ambit of one of ordinary skill in the art to have selected an appropriate metallic material
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`as claimed to construct each of the cylinders without creating any new or unexpected
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`result.
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`It is viewed that having the external cylinder being constructed of a material
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`having a larger thermal conductivity than the material forming the internal cylinder would
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`not result in any new or unexpected result.
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`

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`Application/Control Number: 13/632,311
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`Page 8
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`Art Unit: 1774
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`20.
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`In regard to claim 6, Yokoi is silent with regard to a preheating heater.
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`21.
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`Shibauchi discloses that the carrier gas is desired to be heated (i.e. "preheated”)
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`when entering the disclosed apparatus. See col. 2, lines 33-44 and 56-58.
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`22.
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`Therefore, it would have been obvious to one of ordinary skill in the art to have
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`configured a preheating heater structure at some point along the pipe for delivering the
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`carrier gas at the inlet port in the combined apparatus of Yokoi and Shibauchi without
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`creating any new or unexpected result.
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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 TIMOTHY CLEVELAND whose telephone number is
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`(571)270-5041. The examiner can normally be reached on Monday-Friday 9-5:3O EST.
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`lf attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Walter Griffin can be reached on (571 )272-1447. The fax phone number for
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`the organization where this application or proceeding is assigned is 571 -273-8300.
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`