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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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`15/046,061
`
`02/17/2016
`
`Koichi KOBAYASHI
`
`092122—0050
`
`4318
`
`20277
`7590
`12/12/2017
`MCDERMOTT WILL&EMERY LLP —
`The McDermott Building
`BOWERS, NATHAN ANDREW
`500 North Capitol Street, NW.
`WASHINGTON, DC 20001
`
`PAPER NUMBER
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`1799
`
`NOTIFICATION DATE
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`DELIVERY MODE
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`12/12/2017
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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)
`
` 15/046,061 KOBAYASHI ET AL.
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`1799NATHAN BOWERS $233
`
`-- 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 27 February 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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`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/08b)
`Paper No(s)/Mai| Date 2/17/2015. 4) D Other: —-
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`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20170714
`
`Disposition of Claims*
`5)|XI Claim(s) fl is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`s M is/are rejected.
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`is/are objected to.
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`) )
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`_
`
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`are subject to restriction and/or election requirement.
`9)|:l Claim(s
`)
`* 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
`htt ://\va.usoto. ov/ atents/init events"
`h/index.‘s
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`
`
`
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`, or send an inquiry to PF"I-Ifeedback{<‘buspto.qov.
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`Application Papers
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`10)I:I The specification is objected to by the Examiner.
`11)|Z| The drawing(s) filed on 27 February 2016 is/are: a)lZl 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).
`
`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)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 All
`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.
`33.le 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.
`
`Attach ment(s)
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`
`
`

`

`Application/Control Number: 15/046,061
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`Page 2
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`Art Unit: 1799
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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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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`Claim Interpretation
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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
`corresponding structure, material, or acts described in the specification and equivalents
`thereof.
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`Claim limitation “illumination means” has been interpreted under 35 U.S.C. 112(f)
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`because it uses a generic placeholder “means” coupled with functional language
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`“illumination” without reciting sufficient structure to achieve the function. Furthermore,
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`the generic placeholder is not preceded by a structural modifier.
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`Since the claim limitation invokes 35 U.S.C. 112(f), claims 1-4 have been
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`interpreted to cover the corresponding structure described in the specification that
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`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):
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`o
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`“illumination means” include light sources and other functional equivalents
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`

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`Application/Control Number: 15/046,061
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`Page 3
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`Art Unit: 1799
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`If applicant wishes to provide further explanation or dispute the examiner’s
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`interpretation of the corresponding structure, applicant must identify the corresponding
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`structure with reference to the specification by page and line number, and to the
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`drawing, if any, by reference characters in response to this Office action.
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`If applicant does not intend to have the claim limitation treated under 35 U.S.C.
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`112(f) applicant may amend the claims so that they will clearly not invoke 35 U.S.C.
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`112(f) or present a sufficient showing that the claims recites sufficient structure,
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`material, or acts for performing the claimed function to preclude application of 35 U.S.C.
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`112(f).
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`For more information, see MPEP § 2173 et seq. and Supplementary Examination
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`Guidelines for Determining Compliance With 35 U. S. C. 112 and for Treatment of
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`Related Issues in PatentApp/ications, 76 FR 7162, 7167 (Feb. 9, 2011).
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`Claim Rejections - 35 USC § 1 12
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`The following is a quotation of 35 U.S.C. 112(b):
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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.
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`Claims 3 and 4 are rejected under 35 U.S.C. 112(b) as being indefinite for
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`failing to particularly point out and distinctly claim the subject matter which the
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`inventor or a joint inventor regards as the invention.
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`Claims 3 and 4 require that the louver "has a shape swelling to the illuminating
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`means side".
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`It is unclear what the word "swelling" is supposed to mean in this context.
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`

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`Application/Control Number: 15/046,061
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`Page 4
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`Art Unit: 1799
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`When something "swells" or "becomes swollen", it becomes larger or rounder in size as
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`a result of fluid accumulation. Certainly, this is not what is happening to the louver in
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`the claimed invention.
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`It is believed Applicant is attempting to say that the louver has a
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`curved or pointed shape, and that the curved/pointed portion is oriented in a particular
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`direction.
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`If this is the case, then the claims must be amended to include precise
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`language. Where applicant acts as his or her own lexicographer to specifically define a
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`term of a claim contrary to its ordinary meaning, the written description must clearly
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`redefine the claim term and set forth the uncommon definition so as to put one
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`reasonably skilled in the art on notice that the applicant intended to so redefine that
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`claim term. Process Control Corp. v. HydRec/aim Corp., 190 F.3d 1350, 1357, 52
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`USPQ2d 1029, 1033 (Fed. Cir. 1999).
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`A patent for a claimed invention may not be obtained, notwithstanding that the claimed
`invention is not identically disclosed as set forth in section 102, if the differences between the
`claimed invention and the prior art are such that the claimed invention as a whole would have
`been obvious before the effective filing date of the claimed invention to a person having
`ordinary skill in the art to which the claimed invention pertains. Patentability shall not be
`negated by the manner in which the invention was made.
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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 35 U.S.C. 103 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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`Application/Control Number: 15/046,061
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`Page 5
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`Art Unit: 1799
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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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`This application currently names joint inventors. In considering patentability of the
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`claims the examiner presumes that the subject matter of the various claims was
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`commonly owned as of the effective filing date of the claimed invention(s) absent any
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`evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to
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`point out the inventor and effective filing dates of each claim that was not commonly
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`owned as of the effective filing date of the later invention in order for the examiner to
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`consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2)
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`prior art against the later invention.
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`Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over
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`Ono (US 20040107679) in view of Reichler (US 5783439), Tamaoki (US 6255103)
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`and Yoneda (US 6725598).
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`With respect to claim 1, Ono discloses a working chamber comprising a box-
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`shaped body case (Figure 1A:1) including a work space in an interior and an insertion
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`portion (Figure 1A:9) on a front surface. The insertion portion is configured to permit the
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`insertion of a worker’s arms (see Figs. 9A-17). A supply unit (generally, Figure 1A:6) is
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`configured to supply a gas into the work space through a supply filter (Figure 1A:7). An
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`illuminating means (Figure 1A:21) is positioned within the work space in an upper part
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`of the body case. This taught in at least paragraphs [0053] and [0054]. Ono, however,
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`

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`Application/Control Number: 15/046,061
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`Page 6
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`Art Unit: 1799
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`does not expressly teach that a louver is used to guide gas supplied into the work space
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`to a back surface side of the work space after gas passes through the supply filter.
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`Reichler discloses a working chamber comprising a box-shaped body case
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`(Figure 1:10) including a work space in an interior and an insertion portion (Figure 1 :58)
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`on a front surface. A fan (Figure 5:108) is provided within the housing for supplying and
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`directing air throughout the interior of the work space. At least one louver (Figure
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`5:124) is configured to distribute and guide gas evenly throughout the work space,
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`including to locations such as the back surface of the work space. This is taught in
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`column 6, lines 43-59 (“Preferably, deflector plate 124 is angled with respect to upper
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`wall 46 to produce a downward turbulent air flow as shown by arrows 125 and to
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`uniformly heat the inside space of heating chamber 14”).
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`Before the effective filing date of the claimed invention, it would have been
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`obvious to include at least one louver within the Ono body case in order to guide gas
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`exiting from the supply filter to a desire location, such as the back wall surface of the
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`work space. As shown by Reichler, louvers can be used in this manner to evenly
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`distribute gases throughout the entirety of a work location. One of ordinary skill would
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`have understood that this would inherently include directing air to a back surface side of
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`the work space using the louver. Applying a known technique to a known device ready
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`for improvement to yield predictable results is prima facie obvious. See MPEP 2143.
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`

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`Application/Control Number: 15/046,061
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`Page 7
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`Art Unit: 1799
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`One and Reichler still differ from Applicant’s claimed invention because neither
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`reference expressly teaches that at least cne surface of the louver has a reflection
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`surface.
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`Tamaoki discloses a working chamber comprising a box-shaped body case
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`(Figure 1:10) including a work space in an interior and an insertion portion (Figure
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`1:13,14) on a front surface. Tamaoki teaches in at least column 8, lines 56-65 that a
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`reflection surface may be included within the working chamber simply by using a mirror-
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`finishing treatment or by providing a metal plate (e.g. aluminum).
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`Yoneda discloses a working chamber comprising a box-shaped body case
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`(Figure 1 :1) including a work space in an interior and an insertion portion (Figure 1:8,9)
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`on a front surface. Yoneda teaches in at least column 5, lines 20-30 and column 6,
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`lines 22-35 that essentially any surface of the body case can be configured as a
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`reflection surface using known fabrication methods - e.g. white reflective paint.
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`Before the effective filing date of the claimed invention, it would have been
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`obvious to further modify Ono by including a reflection surface on the louver. Tamaoki
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`and Yoneda each teach that reflection surfaces are easy to fabricate, and that they may
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`be strategically provided within a working chamber to ensure that all interior areas are
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`illuminated. Combining prior art elements according to known methods to yield
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`predictable results is prima facie obvious. See MPEP 2143.
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`With respect to claim 2, Ono, Reichler, Tamaoki and Yoneda disclose the
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`combination as described above. Ono additionally teaches the use of a discharge filter
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`

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`Application/Control Number: 15/046,061
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`Page 8
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`Art Unit: 1799
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`(Figure 1A:4) in communication with a discharge unit. Ono further indicates that a
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`partitioning plate is used to form a ventilation passage (Figure 1A:15) between a back
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`surface of the body case and the partitioning plate.
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`With respect to claims 3 and 4, Ono, Reichler, Tamaoki and Yoneda disclose the
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`combination as described above. When adding a louver to the Ono system, one of
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`ordinary skill would have understood that the spatial orientation of the louver would
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`affect where air is directed. Accordingly, one of ordinary skill would have considered
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`different louver designs, including those in which the louver has upper and lower parts
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`that “swell” to the illuminating means side.
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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 NATHAN BOWERS whose telephone number is
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`(571)272-8613. The examiner can normally be reached on Monday-Friday 7 AM to 4
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`PM.
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`Examiner interviews are available via telephone, in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
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`(AIR) at http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Michael Marcheschi can be reached on (571) 272-1374. The fax phone
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`

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`Application/Control Number: 15/046,061
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`Page 9
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`Art Unit: 1799
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`number for the organization where this application or proceeding is assigned is 571 -
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`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.
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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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`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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`/NATHAN BOWERS/
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`Primary Examiner, Art Unit 1799
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`