`
`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 22313-1450
`www.uspto.gov
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`APPLICATION NO.
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`
`
`
` FILING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`
`
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`CONFIRMATIONNO.
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`14/022,725
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`09/10/2013
`
`Hideshi MIKI
`
`2013-1129A
`
`2001
`
`52349
`
`7590
`
`07/02/2014
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`WENDEROTH.LIND & PONACK LLP.
`1030 15th Street, N.W.
`Suite 400 East
`Washington, DC 20005-1503
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`
`
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`SIEFKE, SAMUEL P
`
`1779
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`PAPER NUMBER
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`
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`NOTIFICATION DATE
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`DELIVERY MODE
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`07/02/2014
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`ELECTRONIC
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`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.
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`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`ddalecki @ wenderoth.com
`eoa@ wenderoth.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 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, evenif 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
`
`-
`-
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` Attachment(s)
`
`
`Application No.
`Applicant(s)
`14/022,725
`MIKI ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventor to File)
`SAM P. SIEFKE
`1779
`StatusNo
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address--
`Period for Reply
`
`Office Action Summary
`
`Status
`1) Responsive to communication(s) filed on
`L] A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filedon___
`2a)L] This action is FINAL.
`2b)X] This action is non-final.
`3)L] An election was made bythe applicant in responseto a restriction requirementset forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`4)L] Sincethis application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordancewith the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)K] Claim(s) 7-14 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`6)L] Claim(s)
`is/are allowed.
`7)K] Claim(s) 7-14 is/are rejected.
`8)L] Claim(s)___ is/are objectedto.
`
`9)L] Claim(s)
`are subjectto restriction and/or election requirement.
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`nito:/www. usote.gov/natenis/init events/
`
`
` nvindex.isp or send an inquiry to PPHfeecback@uspto.aoy.
`
`Application Papers
`10) The specification is objected to by the Examiner.
`
`11) The drawing(s) filed on
`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)L] Acknowledgment is made ofa claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`a)LJ All
`b)[] Some** c)L] None ofthe:
`1.) Certified copies of the priority documents have been received.
`2.L] Certified copies of the priority documents have been received in Application No.
`3.L] Copies of the certified copies of the priority documents have been 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.
`
`3) TC Interview Summary (PTO-413)
`1) C Notice of References Cited (PTO-892)
`Paper No(s)/Mail Date.
`;
`,
`4 O Oth
`2) X Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`
`Paper No(s)/Mail Date ther
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20140626
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`

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`Application/Control Number: 14/022,725
`Art Unit: 1779
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`Page 2
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`DETAILED ACTION
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`The present application is being examined underthe pre-AlA first to invent
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`provisions.
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`Claim Rejections - 35 USC § 102
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`The following is a quotation of the appropriate paragraphs of pre-AlA 35 U.S.C.
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`102 that form the basis for the rejections under this section madein this Office action:
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`A personshall be entitled to a patent unless —
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`(b) the invention was patented or described in a printed publication in this or a foreign country
`or in public use or on sale in this country, more than one yearprior to the date of application
`for patent in the United States.
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`Claims 7-11 are rejected underpre-AlA 35 U.S.C. 102b as being anticipated by
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`Hiranakaet al. (US 2011/0228276).
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`Hiranaka discloses a nitrogen oxide concentration measurementdevice for
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`measuring nitrogen oxide concentration, said device comprising:
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`a light source (16) configured to shine light on a nitrogen oxide concentration
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`measurement sensor (10a) that supports porphyrin (sensing film 11, para. 3884) and
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`cobalt as a cetntral metal (para 38);
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`a light quantity detector (17) configured to detect the amountoflight having a
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`specific wavelength (para 84 regarding wavelength) outofall the light transmitted or
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`reflected on the nitrogen oxide concentration measurement sensor; and
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`a controller (19, para 42) configured to calculate a computation value using the
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`amountoflight of a specific wavelength detected by the light quantity detector during
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`

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`Application/Control Number: 14/022,725
`Art Unit: 1779
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`Page 3
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`zero gas exposure, and controls the computation value so as to Suppress variancein
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`the computation value.
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`Hiranaka inherently provides a memory for storing results and the program used
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`to calculate the concentration of nitrogen oxide.
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`Regarding claims 7-11, these claims include processor intended uselimitations
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`("configured to” language, “controlling” and functional lag, which do notfurther delineate
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`the structure of the claimed apparatus from that of the prior art. Since these claims are
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`drawn to an apparatus statutory class of invention, it is the structurallimitations of the
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`apparatus, as recited in the claims, which are considered in determining the
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`patentability of the apparatus itself. These recited process or intended uselimitations
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`are accorded no patentable weight to an apparatus. Processlimitations do not add
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`patentablility to a structure, which is not distinguished from the prior art. A recitation of
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`the intended use of the claimed invention must result in a structural difference between
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`the claimed invention and the prior art in order to patentably distinguish the claimed
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`invention from the prior art. If the prior art structure is capable of performing the
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`intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967);
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`and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The Courts have held thatit is well
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`settled that the recitation of a new intended use, for an old product, does not make a
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`claim to that old product patentable. See In re Schreiber, 128 F.3d 1473, 1477, 44
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`USPQe2d 1429, 1431 (Fed. Cir. 1997). The Courts have held that the mannerof
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`operating an apparatus doesnotdifferentiate an apparatus claim from the priorart,if
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`the prior art apparatus teachesall of the structural limitations of the claim. See Ex Parte
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`

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`Application/Control Number: 14/022,725
`Art Unit: 1779
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`Page 4
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`Masham, 2 USPQe2d 1647 (BPAI 1987) (see MPEP § 2114). Further see Superior
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`Industries v. Masaba (Fed. Cir. 2014).
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`Conclusion
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`Anyinquiry concerning this communication or earlier communications from the
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`examiner should be directed to SAM P. SIEFKE whosetelephone numberis (571)272-
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`1262. The examiner can normally be reached on Monday, Wednesday, Thursday and
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`Friday 8am to 6:30pm.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Bob Ramdhanie can be reached on 571-270-3240. The fax phone number
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`for the organization wherethis application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the
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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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`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 automatedinformation
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`system, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/SAM P SIEFKE/
`Primary Examiner, Art Unit 1779
`
`