`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMlVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
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`
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`14/500,517
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`09/29/2014
`
`Yasuhiko Yokoi
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`120509A
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`9318
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`12/01/2015 —WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP m
`7590
`38834
`1250 CONNECTICUT AVENUE, NW
`SPAMER’ DONALD R
`SUITE 700
`WASHINGTON, DC 20036
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`PAPER NUMBER
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`1799
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`NOTIFICATION DATE
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`DELIVERY MODE
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`12/01/2015
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`ELECTRONIC
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`Please find below and/or 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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`patentmail @ tha.c0m
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`PTOL—90A (Rev. 04/07)
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`

`

`
`
`Applicant(s)
`Application No.
` 14/500,517 YOKOI ET AL.
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`DONALD SPAMER its“ 1799
`-- 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 CFR1.136(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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`Status
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`1)IZI Responsive to communication(s) filed on 9/29/2015.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|:l This action is non-final.
`2a)|:l 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)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)IZI Claim(s) 1-14 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
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`6)I:I Claim(s)
`7)|:| Claim(s)
`8)|:I Claim(s)
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`is/are allowed.
`is/are rejected.
`is/are objected to.
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`9)IXI Claim(s 1-14 are subject to restriction and/or election requirement.
`I
`* 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
`:i/wwwusnto. ov/ atentS/init events/
`
`
`
`
`hit
`iindex.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
`
`Application Papers
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`10)I:l The specification is objected to by the Examiner.
`11)I:l 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
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`12)I:| 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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`a)I:l All
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`b)|:l Some” c)I:l None of the:
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`1.I:I Certified copies of the priority documents have been received.
`2.|:l 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
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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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`Attachment(s)
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`3) D Interview Summary (PTO-413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) I] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`
`Paper No(s)/Mai| Date .
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
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`Part of Paper No./Mai| Date 20151124
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`

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`Application/Control Number: 14/500,517
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`Art Unit: 1799
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`Page 2
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`1.
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`The present application is being examined under the pre-AIA first to invent provisions.
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`DETAILED ACTION
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`Election/Restrictions
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`2.
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`Restriction to one of the following inventions is required under 35 U.S.C. 121:
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`l. Claims 1-12, drawn to an isolator, classified in 801 L 1/025.
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`ll. Claims 13 and 14, drawn to a method of controlling an isolator, classified in G01 M 3/3272.
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`The inventions are distinct, each from the other because of the following reasons:
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`3.
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`Inventions l and II are related as process and apparatus for its practice. The inventions are
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`distinct if it can be shown that either: (1) the process as claimed can be practiced by another and
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`materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another
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`and materially different process.
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`(MPEP § 806.05(e)).
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`In this case the apparatus of invention I can be
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`used in a materially different processes including sterilizing items placed inside the chamber or growing
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`plants in a misted terrarium.
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`4.
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`Restriction for examination purposes as indicated is proper because all these inventions listed in
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`this action are independent or distinct for the reasons given above and there would be a serious search
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`and/or examination burden if restriction were not required because one or more of the following reasons
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`apply:
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`.
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`The inventions have acquired a separate status in the art in view of their different
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`classification.
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`.
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`The inventions have acquired a separate status in the art due to their recognized
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`divergent subject matter.
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`.
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`The inventions require a different field of search (e.g., searching different classes
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`/subclasses or electronic resources, or employing different search strategies or search
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`queries).
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`

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`Application/Control Number: 14/500,517
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`Art Unit: 1799
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`Page 3
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`Applicant is advised that the reply to this requirement to be complete M include (i) an
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`election of a invention to be examined even though the requirement may be traversed (37 CFR 1.143)
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`and (ii) identification of the claims encompassing the elected invention.
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`The election of an invention may be made with or without traverse. To reserve a right to petition,
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`the election must be made with traverse. If the reply does not distinctly and specifically point out
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`supposed errors in the restriction requirement, the election shall be treated as an election without
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`traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to
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`timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are
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`added after the election, applicant must indicate which of these claims are readable upon the elected
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`invention.
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`Should applicant traverse on the ground that the inventions are not patentably distinct, applicant
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`should submit evidence or identify such evidence now of record showing the inventions to be obvious
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`variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of
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`the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection
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`under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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`5.
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`A telephone call was made to Linda Shapiro on 11/24/2015 to request an oral election to the
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`above restriction requirement, but did not result in an election being made.
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`6.
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`Applicant is reminded that upon the cancellation of claims to a non-elected invention, the
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`inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named
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`inventors is no longer an inventor of at least one claim remaining in the application. A request to correct
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`inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with
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`37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required
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`under 37 CFR1.17(i).
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`

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`Application/Control Number: 14/500,517
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`Art Unit: 1799
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`Page 4
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`7.
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`The examiner has required restriction between product or apparatus claims and process claims.
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`Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are
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`subsequently found allowable, withdrawn process claims that include all the limitations of the allowable
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`product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process
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`invention must include all the limitations of an allowable product/apparatus claim for that process
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`invention to be rejoined.
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`In the event of rejoinder, the requirement for restriction between the product/apparatus claims
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`and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined
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`for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet
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`all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims
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`to the elected product/apparatus are found allowable, an othenNise proper restriction requirement
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`between product/apparatus claims and process claims may be maintained. Withdrawn process claims
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`that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See
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`MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims
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`should be amended during prosecution to require the limitations of the product/apparatus claims. Failure
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`to do so may result in no rejoinder. Further, note that the prohibition against double patenting
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`rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the
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`examiner before the patent issues. See MPEP § 804.01.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the examiner should
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`be directed to DONALD SPAMER whose telephone number is (571 )272-3197. The examiner can
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`normally be reached on Monday through Friday, 9 to 5.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
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`Michael Marcheschi can be reached on 571-272-1374. The fax phone number for the organization where
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`this application or proceeding is assigned is 571 -273-8300.
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`

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`Application/Control Number: 14/500,517
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`Art Unit: 1799
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`Page 5
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`Information regarding the status of an application may be obtained from the Patent Application
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`Information Retrieval (PAIR) system. Status information for published applications may be obtained from
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`either Private PAIR or Public PAIR. Status information for unpublished applications is available through
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`Private PAIR only. 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 Business Center (EBC)
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`at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative
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`or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571 -272-
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`1000.
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`/DONALD SPAMER/
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`Examiner, Art Unit 1799
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`/SEAN E CONLEY/
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`Primary Examiner, Art Unit 1799
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`