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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
`
`
`
`
`
`14/918,462
`
`10/20/2015
`
`Koichi KOBAYAS HI
`
`092122—0043
`
`3965
`
`20277
`7590
`0mm”
`MCDERMOTT WILL&EMERY LLP —
`The McDermott Building
`YOO, REGINA M
`500 North Capitol Street, NW.
`WASHINGTON, DC 20001
`
`PAPER NUMBER
`
`1799
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`01/12/2017
`
`ELECTRONIC
`
`Please find below and/0r attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`ipdocketmwe @ mwe.com
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 14/918,462 KOBAYASHI ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office Action Summary
`
`REGINA M. YOO $2213 1799
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`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 () 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
`
`Status
`
`1)|:I Responsive to communication(s) filed on
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|ZI This action is non-final.
`2a)|:l This action is FINAL.
`3)|: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.
`
`Disposition of Claims*
`
`5)IZI CIaim(s)1;8is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
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`is/are allowed.
`6)|:I Claim(s)
`7)|Z| CIaim(s)_1-8is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
`
`are subject to restriction and/or election requirement.
`9)|:I Claim((s)
`* 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
`hit z/thvvvtlsnto. ovI’ atentS/init events/
`
`
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`iindex.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
`
`Application Papers
`
`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)|:l 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)IXI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)IZl All
`
`b)|:l Some” c)I:l None of the:
`
`1.IXI 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.
`
`Attachment(s)
`
`
`
`3) D Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) E InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date 10/20/2015.
`
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20170105
`
`

`

`Application/Control Number: 14/918,462
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`Page 2
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`Art Unit: 1799
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`1.
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`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
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`DETAILED ACTION
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`Claim Objections
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`2.
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`Claims 1-8 are objected to because of the following informalities:
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`in lines 6 and 7 of Claim 1, insert --box-shaped-- before “body case”;
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`in line 9 of Claim 1, delete “bottom surface” and insert --work plate--;
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`in line 3 of Claim 2, insert --box-shaped-- before “body case”;
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`in line 1 of Claim 3, insert --the observation device comprises a stage for
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`placement of an observation target, where when the stage-- after “wherein”;
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`in lines 23 of Claim 3, delete “in the observation device, when a stage thereof
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`where an observation target is placed”;
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`in line 1 of Claim 5, insert --the observation device comprises a stage for
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`placement of an observation target, where when the stage-- after “wherein”;
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`in lines 23 of Claim 5, delete “in the observation device, when a stage thereof
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`where an observation target is placed”;
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`in line 7 of Claim 7, delete , after “plate”.
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`Appropriate correction is required.
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`Claim Rejections - 35 USC § 1 12
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`3.
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`The following is a quotation of 35 U.S.C. 112(b):
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`

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`Application/Control Number: 14/918,462
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`Page 3
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`Art Unit: 1799
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`(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.
`
`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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`4.
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`Claims 1-8 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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`5.
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`In Claim 1, it is not clear whether “in an exterior of the body case” in lines 5-6 is
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`specifically pointing out a component/structure or a location in an exterior space of the
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`"box-shaped body case". In addition, it is not clear whether the limitation “upper end
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`portion” is attempting to describe an upper surface of the receiving portion or one end of
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`the receiving portion such as the part/portion that is free/unattached to the side surface
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`of the observation device.
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`6.
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`In Claims 4 and 6, it is not clear whether the limitation “inner end portion” is
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`attempting to describe a lower surface of the receiving portion or one end of the
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`receiving portion that is attached to the side surface of the observation device,
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`particularly in view of limitation that “the upper end portion of the receiving portion is
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`positioned above the inner end portion”.
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`7.
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`The following is a quotation of 35 U.S.C. 112(f):
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`(f) Element in Claim for a Combination. — An element in a claim for a combination may be
`expressed as a means or step for performing a specified function without the recital of
`structure, material, or acts in support thereof, and such claim shall be construed to cover the
`
`

`

`Application/Control Number: 14/918,462
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`Page 4
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`Art Unit: 1799
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`corresponding structure, material, or acts described in the specification and equivalents
`thereof.
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`The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
`
`An element in a claim for a combination may be expressed as a means or step for performing
`a specified function without the recital of structure, material, or acts in support thereof, and
`such claim shall be construed to cover the corresponding structure, material, or acts
`described in the specification and equivalents thereof.
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`8.
`
`Claim limitation “supply device” has/have been interpreted under 35 U.S.C.
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`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic
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`placeholder “device” coupled with functional language “configured to supply gas”
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`without reciting sufficient structure to achieve the function. Furthermore, the generic
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`placeholder is not preceded by a structural modifier.
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`Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112,
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`sixth paragraph, claim(s) 1-8 has/have been interpreted to cover the corresponding
`
`structure described in the specification that achieves the claimed function, and
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`equivalents thereof.
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`A review of the specification shows that the following appears to be the
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`corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-
`
`AIA 35 U.S.C. 112, sixth paragraph limitation: an inlet provided in the top surface plate
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`of a glove box such as to be disposed at the upper front side of the work space.
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`If applicant wishes to provide further explanation or dispute the examiner’s
`
`interpretation of the corresponding structure, applicant must identify the corresponding
`
`structure with reference to the specification by page and line number, and to the
`
`drawing, if any, by reference characters in response to this Office action.
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`

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`Application/Control Number: 14/918,462
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`Page 5
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`Art Unit: 1799
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`If applicant does not intend to have the claim limitation(s) treated under 35
`
`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the
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`claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112,
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`sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient
`
`structure, material, or acts for performing the claimed function to preclude application of
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`35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
`
`For more information, see MPEP § 2173 et seq. and Supplementary Examination
`
`Guidelines for Determining Compliance With 35 U. S. C. 112 and for Treatment of
`
`Related Issues in PatentApp/ications, 76 FR 7162, 7167 (Feb. 9, 2011).
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`9.
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`The claim limitation “observation device” uses the phrase “means for” or “step
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`for” or a non-structural term coupled with functional language, but it is modified by some
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`structure, material, or acts recited in the claim. It is unclear whether the recited
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`structure, material, or acts are sufficient for performing the claimed function because
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`“receiving portion” does not appear to perform any observation function.
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`If applicant wishes to have the claim limitation treated under 35 U.S.C. 112, sixth
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`paragraph, applicant may amend the claim so that the phrase “means for” or “step for”
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`or the non-structural term is clearly not modified by sufficient structure, material, or acts
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`for performing the claimed function, or present a sufficient showing that the claim
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`limitation is written as a function to be performed and the claim does not recite sufficient
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`structure, material, or acts for performing the claimed function.
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`

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`Application/Control Number: 14/918,462
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`Page 6
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`Art Unit: 1799
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`If applicant does not wish to have the claim limitation treated under 35 U.S.C.
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`112, sixth paragraph, applicant may amend the claim so that it will clearly not invoke 35
`
`U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites
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`sufficient structure, material, or acts for performing the claimed function to preclude
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`application of 35 U.S.C. 112, sixth paragraph.
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`10.
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`Claim limitation “discharge device” has/have been interpreted under 35 U.S.C.
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`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic
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`placeholder “device” coupled with functional language “configured to discharge gas”
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`without reciting sufficient structure to achieve the function. Furthermore, the generic
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`placeholder is not preceded by a structural modifier.
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`Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112,
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`sixth paragraph, claim(s) 2 and 5-6 has/have been interpreted to cover the
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`corresponding structure described in the specification that achieves the claimed
`
`function, and equivalents thereof.
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`A review of the specification shows that the following appears to be the
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`corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-
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`AIA 35 U.S.C. 112, sixth paragraph limitation: a bottom surface duct, a back surface
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`duct, and an outlet provided in the top surface plate in the glove box such as to be
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`disposed at the upper rea side of the work space.
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`If applicant wishes to provide further explanation or dispute the examiner’s
`
`interpretation of the corresponding structure, applicant must identify the corresponding
`
`

`

`Application/Control Number: 14/918,462
`
`Page 7
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`Art Unit: 1799
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`structure with reference to the specification by page and line number, and to the
`
`drawing, if any, by reference characters in response to this Office action.
`
`If applicant does not intend to have the claim |imitation(s) treated under 35
`
`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the
`
`claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112,
`
`sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient
`
`structure, material, or acts for performing the claimed function to preclude application of
`
`35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
`
`For more information, see MPEP § 2173 et seq. and Supplementary Examination
`
`Guidelines for Determining Compliance With 35 U. S. C. 112 and for Treatment of
`
`Related Issues in PatentApp/ications, 76 FR 7162, 7167 (Feb. 9, 2011).
`
`11.
`
`Claim limitation “sterilization device” has/have been interpreted under 35 U.S.C.
`
`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic
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`placeholder “device” coupled with functional language “configured to supply a sterilizing
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`substance” without reciting sufficient structure to achieve the function. Furthermore, the
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`generic placeholder is not preceded by a structural modifier.
`
`Since the claim |imitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112,
`
`sixth paragraph, claim(s) 2 and 5-6 has/have been interpreted to cover the
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`corresponding structure described in the specification that achieves the claimed
`
`function, and equivalents thereof.
`
`

`

`Application/Control Number: 14/918,462
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`Page 8
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`Art Unit: 1799
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`A review of the specification shows that the following appears to be the
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`corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-
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`AIA 35 U.S.C. 112, sixth paragraph limitation: a structure which converts sterilizing
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`liquid into mist and nozzle that spray sterilizing mist.
`
`lf applicant wishes to provide further explanation or dispute the examiner’s
`
`interpretation of the corresponding structure, applicant must identify the corresponding
`
`structure with reference to the specification by page and line number, and to the
`
`drawing, if any, by reference characters in response to this Office action.
`
`If applicant does not intend to have the claim limitation(s) treated under 35
`
`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the
`
`claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112,
`
`sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient
`
`structure, material, or acts for performing the claimed function to preclude application of
`
`35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
`
`For more information, see MPEP § 2173 et seq. and Supplementary Examination
`
`Guidelines for Determining Compliance With 35 U. S. C. 112 and for Treatment of
`
`Related Issues in PatentApp/ications, 76 FR 7162, 7167 (Feb. 9, 2011).
`
`Conclusion
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`12.
`
`The prior art made of record and not relied upon is considered pertinent to
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`applicant's disclosure. The following references relate either to the field of the invention
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`

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`Application/Control Number: 14/918,462
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`Page 9
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`Art Unit: 1799
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`or subject matter of the invention, but are not relied upon in the rejection of record:
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`6843541, 4654171, 20150192503, 20150191766, 20140356942, EP2818541.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to REGINA M. YOO whose telephone number is (571)272-
`
`6690. The examiner can normally be reached on M-F 10:30 am - 7 pm.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Michael Marcheschi can be reached on 571-272-1374. The fax phone
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`number for the organization where this application or proceeding is assigned is 571 -
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`273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`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.
`
`/REGINA M YOO/
`
`Primary Examiner, Art Unit 1799
`
`