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`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/000,439
`
`08/24/2020
`
`YOSHIHIRO SAKAGUCHI
`
`083710-3134
`
`7340
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`YOO, REGINA M
`
`1758
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/08/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime 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):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Application No.
`Applicant(s)
`47/000,439
`SAKAGUCHI etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`REGINA M YOO
`1758
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom 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) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s)filed on 31 July 2023.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)\0) 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 Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-16 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 15-16 is/are withdrawn from consideration.
`[) Claim(s)__ is/are allowed.
`Claim(s) 1-14 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`“If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)() The drawing(s) filedon__ is/are: a)C) accepted or b)C) 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)[4) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`cc) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have beenreceived in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`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)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`
`Paper No(s)/Mail Date8/24/2020,12/06/2021.
`U.S. Patent and Trademark Office
`
`3)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20230831
`
`

`

`Application/Control Number: 17/4000,439
`Art Unit: 1758
`
`Page 2
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`Notice ofPre-AIA or AIA Status
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`1.
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`Thepresentapplication, filed on or after March 16, 2013, is being examined underthe
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`first inventorto file provisions of the AIA.
`
`DETAILED ACTION
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`Election/Restrictions
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`2.
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`Applicant’s election of Group I in the reply filed on 7/3 1/2023 is acknowledged. Because
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`applicant did not distinctly and specifically point out the supposed errorsin the restriction
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`requirement, the election has beentreated as an election without traverse (MPEP § 818.01 (a)).
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`3.
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`Claims 15-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as
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`being drawnto a nonelected group, there being no allowable generic or linking claim. Election
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`was madewithouttraverse in the reply filed on 7/3 1/2023.
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`Claim Objections
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`4.
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`Claim 14 is objected to becauseof the following informalities: in line 2 delete ”an”
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`before “air” and insert --the--. Appropriate correction is required.
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`5.
`
`The followingis a quotation of 35 U.S.C. 112(f:
`
`Claim Interpretation
`
`(f) Element in Claim fora Combination. — An element in a claim for a combination may be expressed
`as ameans or step for performing a specified function withoutthe 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.
`
`The following is a quotation of pre-AJA 35 U.S.C. 112, sixth paragraph:
`
`

`

`Application/Control Number: 17/4000,439
`Art Unit: 1758
`
`Page 3
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`Anelement in a claim for a combination may be expressed as a meansor 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.
`
`6.
`
`The claimsin this application are given their broadest reasonable interpretation using the
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`plain meaningof the claim languagein light of the specification as it would be understood by
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`one of ordinary skill in the art. The broadest reasonable interpretation of a claim element(also
`
`commonly referred to as a claim limitation)is limited by the description in the specification
`
`when 35 U.S.C. 112(f) or pre-AJA 35 U.S.C. 112, sixth paragraph,is invoked.
`
`As explained in MPEP § 2181, subsection I, claim limitations that meetthe following
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`three-prongtest will be interpreted under 35 U.S.C. 112(f or pre-AIA 35 U.S.C. 112, sixth
`
`paragraph:
`
`(A)—the claim limitation uses the term “means”or “step” or a term used asa substitute for
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`“means”that is a generic placeholder(also called a nonce term or a non-structural term
`
`having no specific structural meaning) for performingthe claimed function;
`
`(B)
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`the term “means”or “step” or the generic placeholder is modified by functional language,
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`typically, but not always linked by the transition word “for”(e.g., “means for”) or another
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`linking word or phrase, such as “configured to” or “so that’; and
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`(C)—the term “means”or “step” or the generic placeholder is not modified by sufficient
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`structure, material, or acts for performing the claimed function.
`
`Use of the word “means”(or “step”) in a claim with functional language creates a
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`rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C.
`
`112(f) or pre-AJA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is
`
`interpreted under 35 U.S.C. 112(f or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when
`
`

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`Application/Control Number: 17/4000,439
`Art Unit: 1758
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`Page 4
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`the claim limitation recites sufficient structure, material, or acts to entirely perform the recited
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`function.
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`Absence of the word “means”(or “step”) in a claim creates a rebuttable presumption that
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`the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35
`
`U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under
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`35 U.S.C. 112(f) or pre-AJA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim
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`limitation recites function without reciting sufficient structure, material or actsto entirely
`
`perform the recited function.
`
`Claim limitations in this application that use the word “means”(or “step”) are being
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`interpreted under 35 U.S.C. 112(f or pre-AIA 35 U.S.C. 112, sixth paragraph, except as
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`otherwise indicated in an Office action. Conversely, claim limitations in this applic ation that do
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`notuse the word “means”(or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-
`
`AJA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
`
`7.
`
`This application includes one or more claim limitations that do not use the word “means,”
`
`but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-ATA 35 U.S.C. 112, sixth
`
`paragraph, becausethe claim limitation(s) uses a generic placeholderthat is coupled with
`
`functional language withoutreciting sufficient structure to perform the recited function and the
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`generic placeholderis not preceded by a structural modifier. Such claim limitation(s) is/are:
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`“ejecting apparatus” in claim 1; “external apparatus” in claim 12.
`
`Becausethis/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or
`
`pre-AIA 35 U.S.C. 112, sixth paragraph,it/they is/are being interpreted to coverthe
`
`

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`Application/Control Number: 17/4000,439
`Art Unit: 1758
`
`Page 5
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`corresponding structure described in the specification as performing the claimed function, and
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`equivalents thereof.
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`If applicant does not intendto have this/these limitation(s) interpreted under 35 U.S.C.
`
`112(f) or pre-AJA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim
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`limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AJA 35 U.S.C. 112,
`
`sixth paragraph(e.g., by reciting sufficient structure to perform the claimed function); or (2)
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`presenta sufficient showingthat the claim limitation(s) recite(s) sufficient structure to perform
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`the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA
`
`35 U.S.C. 112, sixth paragraph.
`
`Claim Rejections - 35 USC § 112
`
`8.
`
`The followingis a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.—Thespecification 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 followingis 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.
`
`9.
`
`Claims 1-14 are reyected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second
`
`paragraph, as being indefinite forfailing to particularly point out and distinctly claim the subject
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`matter which the inventorora joint inventor(or for applications subject to pre-AIA 35 U.S.C.
`
`112, the applicant), regards as the invention.
`
`10.
`
`In Claim 1, itis not clear how “an object touches the ejected matter within a period of
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`time from ejection of the ejected matter from the ejecting apparatus”as it appears the object may
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`be mobile or actively seeking out the ejected matter. In addition, it is not clear what the metes
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`and bounds ofthe limitation “how the ejecting apparatus ejects the ejected matter” asit is not
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`

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`Application/Control Number: 17/4000,439
`Art Unit: 1758
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`Page 6
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`clear whetherthis limitation is intending to control operating parameters (such as duration,
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`speed, frequency) or the shape/length/spread/nozzle type/shape/numberofthe ejection/ejecting
`
`apparatus.
`
`11.
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`In Claim 2, it is not clear what the limitation “is made in the controlling”is attempting to
`
`set forth.
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`12.
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`In Claim 3, itis not clear what the limitation “is restricted in the controlling”is
`
`attempting to set forth.
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`13.
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`In Claim 7, it is not clear what the limitation “a position in which an aerosolis present in
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`a space”is attempting to set forth, particularly as there may not be any aerosol present whenthe
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`ejecting apparatus is restricted/not operated/malfunctioning where no aerosol is generated and
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`emitted in which case there may not be an intended position.
`
`14.
`
`In Claim 12, claim limitation “external apparatus” invokes 35 U.S.C. 112(f) or pre-AIA
`
`35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the
`
`corresponding structure, material, or acts for performingthe entire claimed function and to
`
`clearly link the structure, material, or acts to the function. Specifically, while the Specification
`
`appearsto link the external apparatus as a managementapparatus, the disclosure does not
`
`indicate whatstructure corresponds to a managementapparatus and is devoid of any structure
`
`that performsthe function in the claim. Therefore, the claim is indefinite and is rejected under 35
`
`U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
`
`Applicant may:
`
`(a)
`
`Amendthe claim so that the claim limitation will no longerbe interpreted as a limitation
`
`under 35 U.S.C. 112(6 or pre-AJA 35 U.S.C. 112, sixth paragraph;
`
`

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`Application/Control Number: 17/4000,439
`Art Unit: 1758
`
`Page 7
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`(b)
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`Amendthe written description of the specification suchthat it expressly recites what
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`structure, material, or acts perform the entire claimed function, without introducing any
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`new matter (35 U.S.C. 132(a)); or
`
`(c)
`
`Amendthe written description of the specification suchthat it clearly links the structure,
`
`material, or acts disclosed therein to the function recited in the claim, without introducing
`
`any new matter (35 U.S.C. 132(a)).
`
`If applicantis of the opinionthat the written description of the specification already
`
`implicitly or inherently discloses the corresponding structure, material, or acts and clearly links
`
`them to the function so that one of ordinary skill in the art would recognize what structure,
`
`material, or acts perform the claimed function, applicant should clarify the record by either:
`
`(a)
`
`Amendingthe written description of the specification such that it expressly recites the
`
`correspondingstructure, material, or acts for performing the claimed function and clearly
`
`links or associates the structure, material, or acts to the claimed function, without
`
`introducing any new matter (35 U.S.C. 132(a)); or
`
`(b)
`
`Stating on the record what the correspondingstructure, material, or acts, which are
`
`implicitly or inherently set forth in the written description of the specification, perform
`
`the claimed function. For more information, see 37 CFR 1.75(d) and MPEP 8§ 608.01(0)
`
`and 2181.
`
`Claim Rejections - 35 USC § 102
`
`15.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
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`basis for the rejections underthis section madein this Office action:
`
`A personshall be entitled to a patent unless —
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`

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`Application/Control Number: 17/4000,439
`Art Unit: 1758
`
`Page 8
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`(a)(1) the claimed invention was patented, described in a printed publication, or in public use, onsale,
`or otherwise available to the public before the effective filing date of the claimed invention.
`
`16.
`
`Claim(s) 1, 4-6, 8-9 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
`
`Taoka (20150290348).
`
`Asto Claim 1, Taoka (348) discloses a purifying method (see Figure 3) comprising:
`
`determining (via 205) an intendedposition that ejected matter ejected from an ejecting
`
`apparatus (100) is made to reach (i.e. ST101 - see Figure 3);
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`judging whetheran object (i.e. spray target) touches the ejected matter within a period of
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`time from ejection of the ejected matter from the ejecting apparatus (100) to reaching of the
`
`ejected matter to the intendedposition based on positional information on the object (i.e. ST105,
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`ST106 - see Figure 3), the positional information being obtained byafirst sensor (20, 30, 104;
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`201, 202, 204) (see Figure 2-5); and
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`controlling (via 102; 200), based on a result of the judging (i.e. ST105 - see Figure 3),
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`how the ejecting apparatus (100) ejects the ejected matter into an area including the intended
`
`position (i.e. ST106 as well as when answeris no in ST105 - see Figure 3).
`
`As to Claim 4, Taoka (‘348) discloses that the ejected matter contains an agent(see entire
`
`document, particularly p. 1 [0002], [0004] and [0010]).
`
`As to Claim 5, Taoka (‘348) discloses that in the determining the intendedposition is
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`determined by using a second sensor (50; 105).
`
`Asto Claim 6, Taoka (‘348) discloses the second sensor (50; 105) is at least one selected
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`from the group consisting of an imaging element(30) (see entire document, particularly p. 2
`
`[0035]).
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`Asto Claim 8, Taoka (‘348) discloses that in the determining, a predeterminedposition is
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`determined as the intendedposition (i.e. ST101-103 — see Figure 3).
`
`

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`Application/Control Number: 17/4000,439
`Art Unit: 1758
`
`Page 9
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`Asto Claim 9, Taoka (‘348) discloses that the intended positionis at least a part of a door
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`disposed in a space in whichthe ejecting apparatus (100) is disposed (see entire document,
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`particularly p. 2 [0028] — lines 5-6).
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`As to Claim 13, Taoka (‘348) discloses the ejected matter is an air current(see entire
`
`document, particularly p. 2 [0025] where ion sprayintrinsically is contained in an air current).
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`Conclusion
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`17.
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`‘The prior art made of record and notrelied upon is considered pertinent to applicant's
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`disclosure. The following referencesrelate either to the field of the invention or subject matter of
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`the invention, but are not relied upon in the rejection of record: EP2929897, WO2020059442.
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`18.=Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to REGINA M YOOwhosetelephone numberis (571)272-6690.
`
`The examiner can normally be reached Monday- Friday, 9:00 am - 5:00 pm EST.
`
`Examinerinterviews are available via telephone, in-person, and video conferencing using
`
`a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is
`
`encouragedto use the USPTO Automated Interview Request (AIR)at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examinerby telephone are unsuccessful, the examiner’s
`
`supervisor, Maris Kessel can be reached on (571)270-7698. The fax phone numberfor the
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`organization wherethis application or proceedingis assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be
`
`obtained from Patent Center. Unpublished application information in Patent Centeris available
`
`

`

`Application/Control Number: 17/4000,439
`Art Unit: 1758
`
`Page 10
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`to registered users. To file and manage patent submissionsin Patent Center,visit:
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`
`/REGINA M YOO/
`Primary Examiner, Art Unit 1758
`
`