Application No: 14/500,517
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`Docket No: P5120US01-120509A
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`REMARKS
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`Claims 1-14 are pending in this application.
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`By the foregoing amendment, claims 1-12 are amended. Claims 13 and 14 were
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`previously withdrawn.
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`These changes are believed not to introduce new matter, and entry of the Amendment is
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`respectfully requested.
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`Based on the above Amendment and the following Remarks, Applicant respectfully
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`requests that the Examiner reconsider all outstanding objections and rejections, and withdraw
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`them.
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`Information Disclosure Statement
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`In section 4 of the Office Action, the Examiner advised that the foreign patent documents
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`and non-patent literature listed in the Information Disclosure Statement submitted September 29,
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`2014 had not been considered because copies were not provided.
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`The transmittal
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`letter
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`submitted concurrently with the Information Disclosure Statement stated:
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`Each of the cited documents was cited in the Parent Application No:
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`13/456,303, filed April 26, 2012. Copies of these references were submitted in the
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`parent application. (See 37 C.F.R. § 1.98(d)).
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`37 C.F.R. § 1.98(d) provides:
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`A copy of any patent, publication, pending US. application or other
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`information, as specified in paragraph (a) of this section, listed in an information
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`disclosure statement is required to be provided, even if the patent, publication,
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`Application No: 14/500,517
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`Docket No: P5120USOl-120509A
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`pending US. application or other information was previously submitted to, or
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`cited by, the Office in an earlier application, unless:
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`(1) The earlier application is properly identified in the information disclosure
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`statement and is relied on for an earlier effective filing date under 35 U.S.C. 120,
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`and
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`(2) The information disclosure statement submitted in the earlier application
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`complies with paragraphs (a) through (c) of this section.
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`See also MPEP 60902.1 (“When filing a continuing application that claims benefit under
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`35 U.S.C. 120 to a parent application (other than an international application that designated the
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`US), it will not be necessary for the applicant to submit an information disclosure statement in
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`the continuing application that lists the prior art cited by the examiner in the parent application
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`unless the applicant desires the information to be printed on the patent
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`issuing from the
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`continuing application (for continued prosecution applications filed under 37 CFR 1.53(d), see
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`subsection A.1. below). The examiner of the continuing application will consider information
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`which has been considered by the Office in the parent application”).
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`The requirements of Rule 98(d)(1) and (2) having been met, the Examiner should have
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`considered the foreign patent documents and non-patent literature listed in the Information
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`Disclosure Statement. A new copy of the Information Disclosure Statement (listing only the
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`foreign patent documents and non-patent literature) is submitted herewith, which the Examiner is
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`respectfully requested to initial and to indicate in the official
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`file wrapper of this patent
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`application that the listed documents have been considered.
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`Application No: 14/500,517
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`Docket No: P5120US01-120509A
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`Rejection under 35 U.S.C. 103
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`In section 5 of the Office Action, claims 1-12 were rejected under section 103(a) as being
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`unpatentable over Yokoi et al. (US Pat. Appl. Pub. 2010/0189607) in view of Kawasaki et al. (JP
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`2006-116095), Hill (US Pat. Appl. Pub. 2007/0253859), and Watling (US Pat. No. 7,186,371).
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`This rejection is overcome by the foregoing amendments to claim 1.
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`On page 4 of the Office Action, the Examiner takes the following position regarding the
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`control unit recited in claim 1:“
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`That the general purpose controller is configured to perform a leak test as
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`claimed is intended use of the isolator. As long as the prior art teaches the claimed
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`structural components and those components are capable of the intended use then
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`the claim limitations are met (MPEP 2114). The controller taught by Yokoi et al.
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`is capable of the claimed intended leak test.
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`The cited provision of the MPEP has been superseded by the Federal Circuit’s opinion in
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`In re Giannelli, No. 2013-1167 (Fed. Cir. Jan. 13, 2014).1 It is respectfully submitted that based
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`on the court’s pronouncements in Giannelli, “configured to perform a leak test” as recited in
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`claim 1
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`should have been given patentable weight. However,
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`in order to obviate any
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`disagreement regarding the weight to be given to “configured to perform a leak test,” and to
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`1 The limitation in question in In re Giannelz' recited a “first handle portion adapted to be moved
`from a first position to a second position by a pulling force .
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`. in a rowing motion.” The court
`found that although “adapted to” “can also mean "’capable of’ or “suitable for,”’
`here the
`written description makes clear that “adapted to,” as used in the ’261 application, has a narrower
`meaning, viz., that the claimed machine is designed or constructed to be used as a rowing
`machine whereby a pulling force is exerted on the handles.” The court reversed the Board’s
`determination of obviousness because not only was there was no question that the prior art did
`not have handles “adapted to be pulled in a rowing motion” as required by the claim, but also the
`prior art evinced no intent that the device taught by the prior art be used as a rowing machine.
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`Application No: 14/500,517
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`Docket No: P5120USOl-120509A
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`advance prosecution, “a control unit configured to perform a leak test” is replaced by --control
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`means for performing a leak test--.
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`It is respectfully submitted that the limitation “control means for performing a leak test”
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`is entitled to interpretation under section 112, paragraph (f),
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`the corresponding structure
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`described in the specification being the control unit 1a.2
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`The cited prior art does not perform the function of performing a leak test as recited in
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`amended claim 1. Consequently, the invention as recited in amended claim 1, and the claims
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`depending therefrom, is patentable over
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`In view of the foregoing amendments and accompanying remarks, it is submitted that all
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`pending claims are in condition for allowance. A prompt and favorable reconsideration of the
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`rejection and an indication of allowability of all pending claims are earnestly solicited.
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`If the Examiner believes that there are issues remaining to be resolved in this application,
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`the Examiner is invited to contact the undersigned attorney at the telephone number indicated
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`below to arrange for an interview to expedite and complete prosecution of this case.
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`2 A “control unit” is recognized in the art as a structural element (see, for example, the definition
`of “control unit” as “An electronic device containing data buffers and logical circuitry, situated
`between the computer channel and the input/output device, and controlling data transfers and
`such operations as tape rewind.” McGraw-Hill Dictionary ofScientific and Technical Terms, 6th
`ed, McGraw-Hill Education, New York, 2003). See also Ex parie Cuilip, Appeal No. 2011 -
`0011658, PTAB, June 2, 2014).
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`Application No: 14/500,517
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`Docket No: P5120USOl-l20509A
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`If this paper is not timely filed, Applicants respectfully petition for an appropriate
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`extension of time. The fees for such an extension or any other fees that may be due with respect
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`to this paper may be charged to Deposit Account No. 50-2866.
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`Respectfully submitted,
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`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
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`/Linda J. Shapiro/
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`Linda J Shapiro
`Attorney for Applicants
`Registration No. 28,264
`Telephone: (202) 822-1100
`Facsimile: (202) 822-1111
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`LJS/lj s
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