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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`wwwusptogov
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`
`
`
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`14/040,545
`
`09/27/2013
`
`Yuji NAKATA
`
`092122—0026
`
`9855
`
`20277
`7590
`05’1““
`MCDERMOTT WILL&EMERY LLP —
`The McDermott Building
`CLEVELAND, TIMOTHY C
`500 North Capitol Street, NW.
`WASHINGTON, DC 20001
`
`PAPER NUMBER
`
`1774
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`NOTIFICATION DATE
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`DELIVERY MODE
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`05/16/2016
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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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`ipdocketmwe @ mwe.com
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`PTOL—90A (Rev. 04/07)
`
`

`

`
`Application No.
`Applicant(s)
`
` 14/040,545 NAKATA ET AL.
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`1774TIMOTHY CLEVELAND first“
`
`-- 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).
`
`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 AQI’i/ 2016.
`[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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`Disposition of Claims*
`5)|XI CIaim(s) L8is/are pending in the application.
`5a) Of the above claim(s) 5 and 6 is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`1-4,7 and 8 is/are rejected.
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`is/are objected to.
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`
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`are subject to 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
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`participating intellectual property office for the corresponding application. For more information, please see
` S
`htt
`://w1r/w.usoto. ov/ atentS/init events) .h/index.‘
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`
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`, or send an inquiry to PF"I-Ifeedback{<‘buspto.qov.
`
`Application Papers
`
`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:
`
`b)I:I Some” c)I:I None of the:
`a)le AII
`1.IZI Certified copies of the priority documents have been received.
`2.I:I 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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`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/Osb)
`Paper No(s)/Mai| Date 9/27/13 and 3/19/14. 4) D Other: —-
`
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
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`Part of Paper No./Mai| Date 20160505
`
`

`

`Application/Control Number: 14/040,545
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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 of Species A in the reply filed on 14 April 2016 is
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`acknowledged. Because applicant did not distinctly and specifically point out the
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`supposed errors in the restriction requirement, the election has been treated as an
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`election without traverse (MPEP § 818.01 (a)).
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`3.
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`Claims 5 and 6 are withdrawn from further consideration pursuant to 37 CFR
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`1.142(b) as being drawn to a nonelected species, there being no allowable generic or
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`linking claim.
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`Claim Objections
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`4.
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`Claim 1
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`is objected to because of the following informalities:
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`the word "thorough"
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`in line 14 should be replaced with --through--, the commas in lines 16 and 17 are not
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`grammatically correct, and the use of the words “injecting” and "inject" in lines 18 and
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`19 should be replaced with --ejecting-- and --eject--. Appropriate correction is required.
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`Specification
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`5.
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`The disclosure is objected to because of the following informalities: the words
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`“inject", “injection”, “injecting” and "injected” in the specification should be replaced with
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`--eject--, --ejection--, --ejecting-- and --ejected--, respectfully, in order to accurately
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`describe the function of the apparatus as described.
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`

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`Application/Control Number: 14/040,545
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`Page 3
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`Art Unit: 1774
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`Appropriate correction is required.
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`Claim Rejections - 35 USC § 1 12
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`6.
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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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`7.
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`Claims 1-4, 7 and 8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-
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`AIA), second paragraph, as being indefinite for failing to particularly point out and
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`distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA
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`the applicant regards as the invention.
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`8.
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`Claim 1
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`is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second
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`paragraph, as being incomplete for omitting essential structural cooperative
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`relationships of elements, such omission amounting to a gap between the necessary
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`structural connections. See MPEP § 2172.01. The omitted structural cooperative
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`relationships are: how the second pipe is configured to suck the decontamination
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`solution flowing through the third pipe via the second pepe by negative pressure
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`produced in the second port by injecting air taken in from the first port from the nozzle.
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`The claim does not describe how the second and third pipe are structurally cooperating
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`in order to produce the claimed function.
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`9.
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`Where applicant acts as his or her own lexicographer to specifically define a term
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`of a claim contrary to its ordinary meaning, the written description must clearly redefine
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`the claim term and set forth the uncommon definition so as to put one reasonably skilled
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`

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`Application/Control Number: 14/040,545
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`Page 4
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`Art Unit: 1774
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`in the art on notice that the applicant intended to so redefine that claim term. Process
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`Control Corp. v. HydRec/aim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed.
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`Cir. 1999). The terms “injecting” and “inject” in claim 1
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`is used by the claim to mean “to
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`eject” (to drive or force out), while the accepted meaning is “to force a fluid into a
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`passage, cavity, or tissue.” The term is indefinite because the specification does not
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`clearly redefine the term.
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`Claim Rejections - 35 USC § 103
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`10.
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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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`11.
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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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`12.
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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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`Application/Control Number: 14/040,545
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`Page 5
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`Art Unit: 1774
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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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`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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`13.
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`Claims 1-4, 7 and 8 are rejected under pre-AIA 35 U.S.C. 103(a) as being
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`unpatentable over Schill et al. (US 2009/000317; hereinafter “Schill”).
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`14.
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`Schill discloses a decontamination solution spray device comprising an atomizer
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`6 including a first port, a second port, and a nozzle (see Figure 1 and [0037]); a first
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`pipe (pressure line 7) having one end connected to an air compressor 10 and an other
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`end connected to the first port; a second pipe (feed-line 9) provided lower than the
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`second port (line extends below the atomizer port in Figure 1), the second pipe having
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`one end connected to the second port and an other end open (the other end is
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`interpreted as being open as it is capable of receiving a fluid flow); a bottle (storage tank
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`8) provided vertically below the other end of the second pipe which contains a hydrogen
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`peroxide decontamination solution, the bottle capable to receive decontamination
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`solution running down from the second pipe; and a sensor (float switch 12) configured
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`to detect that the decontamination solution which has been stored in the bottle, wherein
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`the atomizer configured to suck the decontamination solution flowing through the
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`second pipe by negative pressure produced in the second port by injecting air taken in
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`from the first port from the nozzle; and inject the decontamination solution in an
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`Application/Control Number: 14/040,545
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`Page 6
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`Art Unit: 1774
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`atomized state from the nozzle, mixing the decontamination solution with air (see
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`[0037], lines 23-26). The atomizer is provide in a working chamber (ice silo) which is
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`capable of being used for conducting "work on a cell." See Figure 1 and [0037].
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`15.
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`Schill is silent in regard to a reservoir portion configured to store a
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`decontamination solution; a pump configured to pump up the decontamination solution
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`from the reservoir portion; a third pipe having one end connected to the pump through
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`which the decontamination solution taken in by the pump flows, wherein an other end of
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`the third pipe joins the second pipe at a junction on a path of the second pipe; and a
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`pump control unit configured to stop the pump when a signal indicative of an effect that
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`the decontamination solution has been stored in the bottle is received from the sensor.
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`16.
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`However, it is viewed that one of ordinary skill in the art would have been
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`motivated to have provided a means for refilling the storage tank 8 of the apparatus.
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`Thus, one of ordinary skill would have been motivated to have provided a connection,
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`such as a valve or port which would be analogous to the claimed junction, in either the
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`tank 8 or the line 9 (both viewed to be “on a path of’ the line 9) for connection of a
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`refilling tank (analogous to the claimed reservoir portion). The refilling tank would
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`necessarily use a pump and a line (analogous to the third pipe) for connection and filling
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`of the tank 8. Additionally, it would have been within the ambit of one of ordinary skill in
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`the art to have utilized the float switch 12 to have provided a signal to a pump control for
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`automatically signaling when the tank 8 has been appropriately filled through well-
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`known electronic means. Such a configuration would merely be replacing the manual
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`activity of refilling the storage tank 8. The Courts have held that to provide a
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`

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`Application/Control Number: 14/040,545
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`Page 7
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`Art Unit: 1774
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`mechanical or automatic means to replace manual activity, which accomplishes the
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`same result, is within the ambit of a person of ordinary skill in the art. See In re Venner,
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`120 USPQ 192 (CCPA 1958) (see MPEP § 2144.04).
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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—5:30 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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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
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`/TIMOTHY CLEVELAND/
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`Primary Examiner, Art Unit 1774
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`