DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/3/2026 has been entered.
Claim Objections
Claim 1 is objected to because of the following informalities: in line 16, “withing” should read --within--. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(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.
Claims 1-4, 9 and 10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the nozzle" in line 5. There is insufficient antecedent basis for this limitation in the claim. Lines 3-4 recites “wherein the container is configured in a shape of a nozzle”, which is different than actually reciting a nozzle. Claims 2-4, 9 and 10 are also rejected under 35 USC 112(b) by virtue of their dependency on claim 1.
Claim 1 recites the limitation "the piston" in line 16. There is insufficient antecedent basis for this limitation in the claim. Claims 2-4, 9 and 10 are also rejected under 35 USC 112(b) by virtue of their dependency on claim 1.
Claims 1 describes a method of using the apparatus in lines 15-17 (“wherein ultra fine bubbles are produced in the liquid in the container when the piston is driven into the container and pressurizes the liquid and gas contained within the container”) which renders the claim indefinite. A single claim which claims both an apparatus and method steps of using the apparatus is indefinite. See MPEP§2173.05(p)(II). Claims 2-4, 9 and 10 are also rejected under 35 USC 112(b) by virtue of their dependency on claim 1.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 5 and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nagamatsu (WO2017/115867) (with paragraphs referring to English continuation US2018/0369484).
Regarding claim 5, Nagamatsu discloses a method (title; abstract; figures 1-2), the method comprising:
preparing a system comprising a container that comprises a liquid and a gas (figure 1, reference #10; figure 2A, reference #320; figure 2B, “gas” in reference #64); and
performing a pressurization inside the container (figure 1, reference #4, 5 and 7; figure 4A; [0045]; [0064]-[0068]), wherein,
the pressurization results in a pressure of 4.0 MPa or more in the container within a time period of 2.0 milliseconds or less from the start of pressurization (see figure 4a, pressurization starts at 5msec and reaches over 40MPa in less that 1 msec; [0064]-[0068]).
Regarding the limitation in the preamble “for producing ultra fine bubbles” which has not been given patentable weight, a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
Regarding claim 11, Nagamatsu discloses wherein the pressurization inside the container is provided by a pressure generated by combustion of an explosive ignited by an ignition apparatus (figure 1, reference #71; [0051]-[0052]).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-4, 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nagamatsu (WO2017/115867) (with paragraphs referring to English continuation US2018/0369484) in view of Verma et al. (U.S. Patent Pub. No. 2017/0361017) and Schumacher et al. (U.S. Patent No. 5,496,285).
Regarding claim 1, Nagamatsu discloses an apparatus (figure 1, reference #1) comprising a syringe (reference #3) comprising:
a container capable of comprising a liquid and a gas wherein the container is configured in a shape of a nozzle (figure 1, reference #10; figure 2A, reference #320; figure 2B, “gas” in reference #64);
an injection port at a distal end of the nozzle (figure 1, reference #31a),
a fixing surface at a distal end of the syringe where the injection port exits the distal end of the nozzle (figure 1, external wall at end of reference #3; figure 2A, reference #31b) and
a piston drive configured to pressurize the container (figure 1, reference #4, 5 and 7), wherein
the apparatus is configured to achieve a pressure of 4.0MPa or more in the container within a time period of 2.0 milliseconds or less from the start of pressurization (see figure 4a, pressurization starts at 5msec and reaches over 40MPa in less that 1 msec) and
wherein ultra fine bubbles are capable to be produced in the liquid in the container when the piston is driven into the container and pressurizes the liquid and gas contained within the container (figure 1, reference #4, 5 and 10) (this limitation is directed to a manner of operating disclosed apparatus and the material or article worked upon, and it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. Further, it has been held that process limitations do not have patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states “Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.” The reference discloses all the structural limitations of the claim with the required piston and container and pressure that is capable to result in the production of ultra fine bubbles).
Regarding the limitation in the preamble “an ultra fine bubble production” which has not been given patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. Kropa v. Robie, 88 USPQ 478 (CCPA 1951). The apparatus being an ultra fine bubble production is directed to the intended use of the structure/apparatus and the body of the claim does not recite any limitation that is directed to ultra fine bubble production and does not depend on any ultra fine bubble production for completeness. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
However, the reference does not explicitly disclose a cap that comprises a sealing portion, wherein the fixing surface is configured to contact the cap that comprises the sealing portion, wherein the cap and the sealing portion are configured to be detachably fixed to the fixing surface and seal the injection port so that liquid and gas in the container are prevented from being ejected through the injection port of the nozzle.
Verma et al. and Schumacher et al. each teaches another syringe with piston and pressurization (Verma et al. abstract; figure 1; Schumacher et al. abstract; figure 1). The references each teaches a cap that comprises a sealing portion, a fixing surface at a distal end of the syringe where the injection port exits the distal end of the nozzle, wherein the fixing surface is configured to contact the cap that comprises the sealing portion, wherein the cap and the sealing portion are configured to be detachably fixed to the fixing surface and seal the injection port so that liquid and gas in the container are prevented from being ejected through the injection port of the nozzle (Verma et al. reference #190; [0091]; Schumacher et al. figure 1, right end, not labeled).
It would have been obvious to one of ordinary skill in the art before the time of filing to provide the cap of Verma et al. or Schumacher et al. on the apparatus of Nagamatsu. One of ordinary skill in the art would reasonably expect such a combination to be suitable given that all references teach syringes with pistons and pressurization. One of ordinary skill in the art would be motivated to provide a cap because it blocks fluid flow from the outlet connection (Verma et al. [0091]), and it is well known in the art to provide a cap on an outlet end of a syringe.
Regarding claim 2, Nagamatsu in view of Verma et al. and Schumacher et al. discloses all the limitations as set forth above. The reference as modified further discloses wherein a ratio of a volume of the gas to a volume of the container portion is 10% or more and 90% or less (figure 2B). The limitation is directed to a material worked upon, and it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. Further, it has been held that process limitations do not have patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states “Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.”
Regarding claim 3, Nagamatsu in view of Verma et al. and Schumacher et al. discloses all the limitations as set forth above. The reference as modified further discloses wherein the liquid is capable to be water (figure 2A, reference #320). The limitation is directed to a material worked upon, and it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. Further, it has been held that process limitations do not have patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states “Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.”
Regarding claim 4, Nagamatsu in view of Verma et al. and Schumacher et al. discloses all the limitations as set forth above. The reference as modified further discloses wherein the gas is capable to be air (figure 2B, “gas” in reference #64). The limitation is directed to a material worked upon, and it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. Further, it has been held that process limitations do not have patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states “Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.”
Regarding claim 9, Nagamatsu in view of Verma et al. and Schumacher et al. discloses all the limitations as set forth above. The reference as modified further discloses wherein the piston drive comprises an igniter configured to generate a pressure from combustion of an explosive (figure 1, reference #71).
Regarding claim 10, Nagamatsu in view of Verma et al. and Schumacher et al. discloses all the limitations as set forth above. The reference as modified further discloses wherein the explosive is selected from the group consisting of an explosive containing zirconium and potassium perchlorate (ZPP), an explosive containing titanium hydride and potassium perchlorate (THPP), an explosive containing titanium and potassium perchlorate (TiPP), an explosive containing aluminum and potassium perchlorate (APP), an explosive containing aluminum and bismuth oxide (ABO), an explosive containing aluminum and molybdenum oxide (AMO), an explosive containing aluminum and copper oxide (ACO), an explosive containing aluminum and iron oxide (AFO) and an explosive composed of a combination of a plurality of these explosives ([0051]).
Claim(s) 5-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka (JP2011152513A) (with pages referring to machine translation).
Regarding claim 5, Tanaka discloses a method for producing ultra fine bubbles (page 1, lines 6-7) comprising:
preparing a system comprising a container that comprises a liquid and a gas (figure 1, reference #3, 20 and 21; figure 3, reference #30; pages 1-2, lines 41-6; page 3, lines 17-32);
performing pressurization inside the container (figure 3, reference #3 and 31; page 4, lines 31-35; page 5, lines 1-40).
While Tanaka does not disclose the achieved pressure of 4.0MPa within 2.0 milliseconds or less from the start of pressurization, the pressure rate is not considered to confer patentability to the claims. Tanaka teaches a stronger interface structure and thus more stable bubble is produced the faster and more rapid the container is pressurized and increased pressurization reduced the size of the apparatus bubble (page 2, lines 30-41). Therefore the stability and interface structure of the bubble and the apparatus size are variables that can be modified, among others, by varying the amount of pressurization and the time for pressurization. For that reason, the amount of pressurization within a time period, would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was filed. As such, without showing unexpected results, the pressurization amount within a time period cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was filed would have optimized, by routine experimentation, the pressurization amount within a time period in the apparatus of Tanaka to obtain the desired bubble interface structure and apparatus size (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 6, Tanaka discloses wherein a ratio of a volume of the gas to a volume of the system is 10% or more and 90% or less (page 2, lines 37-39; page 14, lines 17-23).
Regarding claim 7, Tanaka discloses wherein the liquid is water (page 11, lines 36-43).
Regarding claim 8, Tanaka discloses wherein the gas is air (page 12, lines 4-6).
Claim(s) 1-4 and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka (JP2011152513A) (with pages referring to machine translation) in view of Nagamatsu, Verma et al. and Schumacher et al.
Regarding claim 1, Tanaka discloses an ultra fine bubble producing apparatus (page 1, lines 6-7) comprising:
a container comprising a liquid and a gas, wherein the container is configured in a shape of a nozzle (figure 1, reference #3, 20 and 21; figure 3, reference #30; pages 1-2, lines 41-6; page 3, lines 17-32);
an injection port at a distal end of the nozzle (figure 3, reference #22);
a fixing surface at a distal end (figure 3b, reference #32b outer walls)
a piston drive configured to pressurize the container (figure 3, reference #3 and 31; page 4, lines 31-35; page 5, lines 1-40);
and wherein ultra fine bubbles are produced in the liquid in the container when the piston is driven into the container and pressurizes the liquid and gas contained within the container (page 1, lines 6-7; pages 1-2, lines 41-13).
While Tanaka does not disclose the achieved pressure of 4.0MPa within 2.0 milliseconds or less from the start of pressurization, the pressure rate is not considered to confer patentability to the claims. Tanaka teaches a stronger interface structure and thus more stable bubble is produced the faster and more rapid the container is pressurized and increased pressurization reduced the size of the apparatus bubble (page 2, lines 30-41). Therefore the stability and interface structure of the bubble and the apparatus size are variables that can be modified, among others, by varying the amount of pressurization and the time for pressurization. For that reason, the amount of pressurization within a time period, would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was filed. As such, without showing unexpected results, the pressurization amount within a time period cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was filed would have optimized, by routine experimentation, the pressurization amount within a time period in the apparatus of Tanaka to obtain the desired bubble interface structure and apparatus size (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
However, the reference does not explicitly disclose wherein the apparatus comprises a syringe that comprises a cap that comprises a sealing portion wherein the fixing surface is configured to contact the cap that comprises the sealing portion, wherein the cap and the sealing portion are configured to be detachably fixed to the fixing surface and seal the injection port so that liquid and gas in the container are prevented from being ejected through the injection port of the nozzle.
While the container of Tanaka is not comprised of a syringe, it is well known in the art that there are different containers with nozzles and pistons for pushing out materials, and there is no significant different between the container with outlet nozzle and piston of Tanaka and a syringe container with outlet nozzle and piston as taught by Nagamatsu. Further, syringes as piston containers for pressurization are well known in the art before the time of filing (as evidenced by Nagamatsu, figure 1, reference #3; Verma et al., abstract; and Schumacher et al., title). Therefore, it would have been obvious to one having ordinary skill in the art before the time of filing to modify the apparatus of Tanaka to have a syringe, as such modification would involve a mere change in configuration. It has been held that a change in configuration of shape of a device is obvious, absent persuasive evidence that a particular configuration is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Verma et al. and Schumacher et al. each teaches another container with piston and pressurization (Verma et al. abstract; figure 1; Schumacher et al. abstract; figure 1). The references each teaches a cap that comprises a sealing portion, a fixing surface at a distal end of the syringe where the injection port exits the distal end of the nozzle, wherein the fixing surface is configured to contact the cap that comprises the sealing portion, wherein the cap and the sealing portion are configured to be detachably fixed to the fixing surface and seal the injection port so that liquid and gas in the container are prevented from being ejected through the injection port of the nozzle (Verma et al. reference #190; [0091]; Schumacher et al. figure 1, right end, not labeled).
It would have been obvious to one of ordinary skill in the art before the time of filing to provide the cap of Verma et al. or Schumacher et al. on the apparatus of Tanaka. One of ordinary skill in the art would reasonably expect such a combination to be suitable given that all references teach containers with pistons and pressurization. One of ordinary skill in the art would be motivated to provide a cap because it blocks fluid flow from the outlet connection (Verma et al. [0091]), and it is well known in the art to provide a cap on an outlet end of a container.
Regarding claim 2, Tanaka in view of Nagamatsu, Verma et al. and Schumacher et al. discloses all the limitations as set forth above. The reference as modified further discloses wherein a ratio of a volume of the gas to a volume of the container portion is 10% or more and 90% or less (page 2, lines 37-39; page 14, lines 17-23).
Regarding claim 3, Tanaka in view of Nagamatsu, Verma et al. and Schumacher et al. discloses all the limitations as set forth above. The reference as modified further discloses wherein the liquid is water (page 11, lines 36-43).
Regarding claim 4, Tanaka in view of Nagamatsu, Verma et al. and Schumacher et al. discloses all the limitations as set forth above. The reference as modified further discloses wherein the gas is air (page 12, lines 4-6).
Regarding claims 9-11, Tanaka in view of Nagamatsu, Verma et al. and Schumacher et al. discloses all the limitations as set forth above. However, the reference does not explicitly disclose the igniter.
Nagamatsu teaches another container with piston drive for pressurizing the container (figure 1). The reference teaches wherein the piston drive comprises an igniter configured to generate a pressure from combustion of an explosive (figure 1, reference #71); and wherein the explosive is selected from the group consisting of an explosive containing zirconium and potassium perchlorate (ZPP), an explosive containing titanium hydride and potassium perchlorate (THPP), an explosive containing titanium and potassium perchlorate (TiPP), an explosive containing aluminum and potassium perchlorate (APP), an explosive containing aluminum and bismuth oxide (ABO), an explosive containing aluminum and molybdenum oxide (AMO), an explosive containing aluminum and copper oxide (ACO), an explosive containing aluminum and iron oxide (AFO) and an explosive composed of a combination of a plurality of these explosives ([0051]); and wherein the pressurization inside the container is provided by a pressure generated by combustion of an explosive ignited by an ignition apparatus (figure 1, reference #71; [0051]-[0052]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to provide the igniter of Nagamatsu with the apparatus and method of Tanaka. One of ordinary skill in the art would reasonably expect such a combination to be suitable given that both references teach containers with piston drives for pressurizing the container. One of ordinary skill in the art would be motivated to provide an igniter because it creates a high pressure efficient for pressurizing the container (Nagamatsu [0050]-[0052]).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant has failed to amend independent claim 5 and/or point out the patentable novelty which he or she thinks the claim presents in view of the state of the art disclosed by the references cited. Applicant has failed to address claim 5.
Conclusion
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/ELIZABETH INSLER/Primary Examiner, Art Unit 1774
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