CTNF 18/624,370 CTNF 93243 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. This is a first action on the merits of the application. Claims 1-21 are pending. 07-30-03-h AIA Claim Interpretation The claims use the term “ultrafine-bubble-containing liquid.” Ultrafine bubbles are interpreted to be bubbles that are less than 1.0 μm in diameter ([0002]). Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 1-21 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: The term “minute” is a relative term which renders the claim indefinite. The term “minute” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is noted that the specification recites, “Note that it is desirable that the ejection orifices 26 with a minute diameter be 100 μm or smaller in diameter” ([0017]). However, this text is not written to define the term “minute,” and this range of diameters is claimed in claim 12, which must further limit claim 1, thereby indicating that the metes and bounds of “minute” are not defined by this range in the context of claim 1. Claims 2-14 are rejected because of their dependence from claim 1. Claim 15 is rejected upon the same basis as claim 1. Claims 16-21 are rejected because of their dependence from claim 15. 07-34-03 Claim 5 recites, “fine particles.” The term “fine” is a relative term which renders the claim indefinite. The term “fine” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim s 1-3, 8-10, and 12-13 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Kinokuni ( JP2019155834A ), as evidenced by Mora et al. ( US 2013/0251882 A1 ) and Li et al. ( WO2018180006A1 ) . Regarding claim 1, Kinokuni discloses a liquid discharge head 100 (Abstract; [0011]), and implicitly, a method of operating the liquid discharge head (e.g., [0012]: “discharging liquid”) (i.e., a method) comprising: supplying liquid from a supply-side common flow path 10 (Fig. 2; [0013]) to a liquid chamber 6 with a nozzle communication passage 5 ([0013]), the liquid containing DNA, organic solvents, polymerizable compounds, suspensions, emulsions or colorants such as dyes and pigments for inkjet inks ([0077]) (i.e., supplying a liquid containing a substance to a liquid supply region, the substance being a thermally denaturing material, an organic liquid, or a dispersion), the nozzle communication passage 5 having a nozzle plate 1 (i.e., an ejection orifice forming member) with a nozzle 4 ([0012]) having a 20 μm diameter ([0028]) (i.e., where an ejection orifice forming member in which an ejection orifice with a minute diameter is formed is disposed); and pressurizing and discharging liquid from the nozzle 4 (i.e., ejecting the liquid from the ejection orifice as a droplet) via the deformation of a piezoelectric element 12 that deforms a vibration region 30 (i.e., a pressure application unit) of a diaphragm member 3 ([0022]) (i.e., by causing a pressure application unit in contact with the liquid to apply pressure to the liquid supplied to the liquid supply region). Kinokuni does not explicitly disclose (i) a method for producing an ultrafine-bubble-containing liquid; or (ii) liquid ejected as a droplet. Regarding (i), since Kinokuni discloses the same method as claimed, it is asserted that, absent evidence to the contrary, one would reasonably expect that the method as taught by Kinokuni functions the same as the method recited in claim 11. Specifically, it is asserted that one would reasonably expect the method of Kinokuni would result in the production of an ultrafine-bubble-containing liquid, because Kinokuni teaches a liquid with dissolved air therein ([0030]), and it was known that droplets having dissolved gas form gas bubbles from the rapid pressure drop that occurs at a nozzle, as evidenced by Mora ([0024]). If it is Applicant’s position that this would not be the case: (1) evidence would need to be provided to support Applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed physical property with only the claimed steps. It is noted that, under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. See MPEP 2112.02(I). Regarding (ii), it was known that liquid discharged from a liquid discharge port 11c as a result in the change in volume of the liquid in a liquid chamber 11b caused by the elastic vibration of a diaphragm 12 acted on by a piezoelectric element 14, liquid is discharged as droplets, as evidenced by Li (Fig. 1; [0017]-[0018]), so it would have been obvious that the discharge caused by the vibration of a diaphragm member 3 under the action of a piezoelectric element 12 would result in the discharge of the liquid as droplets ( Kinokuni , [[0021]-[0022]). Regarding claims 2 and 3, Kinokuni discloses that the liquid includes DNA ([0077]) (i.e., wherein the thermally denaturing material is a nucleic acid polymer; wherein the nucleic acid polymer is DNA). Regarding claim 8, Kinokuni teaches that the discharged liquid preferably has a viscosity of 0 mPa·s or less ([0077]) (i.e., wherein the liquid has a viscosity of 30 mPa·s). Regarding claim 9, Kinokuni teaches that liquid in the liquid chamber has dissolved air ([0030]) (i.e., further comprising dissolving a predetermined gas in the liquid). Regarding claim 10, Kinokuni teaches that the nozzle plate 1 has a plurality of nozzles 4 for discharging liquid ([0012]) (i.e., wherein in the ejecting, the liquid is ejected as droplets from a plurality of the ejection orifices formed in the ejection orifice forming member). Regarding claim 12, Kinokuni teaches that a nozzle having a 20 μm diameter ([0028]) (i.e., wherein the ejection orifice is 100 μm or smaller in diameter). Regarding claim 13, Kinokuni teaches that a voltage applied to the piezoelectric element 12 is increased to stretch the piezoelectric element 12, deforming the vibration region 30 of the diaphragm member 3, so that liquid inside an individual liquid chamber 6 is pressurized and the liquid is discharged from the nozzle 4 ([0022]) (i.e., wherein the pressure application unit is formed by a piezoelectric element which deforms upon application of voltage, and in the ejecting, the piezoelectric element applies pressure to the liquid in the liquid supply region by deforming, so that the liquid is ejected from the ejection orifice as a droplet) . 07-15 AIA Claim s 15, 17, and 19-20 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Kinokuni , as evidenced by Li . Regarding claim 15, Kinokuni discloses a liquid discharge head 100 (Abstract; [0011]) (i.e., an apparatus) comprising: a nozzle plate 1 (i.e., an ejection orifice forming member) with a nozzle 4 (Fig. 2; [0012]) having a 20 μm diameter ([0028]) (i.e., an ejection orifice forming member in which an ejection orifice with a minute diameter is formed) to which liquid is supplied from a supply-side common flow path 10 ([0013]) to a liquid chamber 6 with a nozzle communication passage 5 at the nozzle 4 ([0013]), the liquid containing DNA, organic solvents, polymerizable compounds, suspensions, emulsions or colorants such as dyes and pigments for inkjet inks ([0077]) (i.e., which is disposed at a liquid supply region to which a liquid containing a substance selected from a group stated below is supplied, the substance being a thermally denaturing material, an organic liquid, or a dispersion); a piezoelectric element 12 that deforms a vibration region 30 (i.e., a pressure application unit) of a diaphragm member 3, pressurizing and discharging the liquid from the nozzle 4 ([0022]) (i.e., a pressure application unit that causes the liquid to be ejected from the ejection orifice by being in contact with the liquid and applying pressure to the liquid supplied to the liquid supply region). Kinokuni does not explicitly disclose (i) an apparatus for producing an ultrafine-bubble-containing liquid; or (ii) liquid ejected as a droplet. Regarding (i), this portion of the preamble is interpreted to be a statement of purpose or intended use which does not provide a distinct definition of any of the claimed invention’s limitations. Therefore, this text is interpreted as not limiting the claimed invention. See MPEP 2111.02(II). Regarding (ii), it was known that liquid discharged from a liquid discharge port 11c as a result in the change in volume of the liquid in a liquid chamber 11b caused by the elastic vibration of a diaphragm 12 acted on by a piezoelectric element 14, liquid is discharged as droplets, as evidenced by Li (Fig. 1; [0017]-[0018]), so it would have been obvious that the discharge caused by the vibration of a diaphragm member 3 under the action of a piezoelectric element 12 would result in the discharge of the liquid as droplets ( Kinokuni , [[0021]-[0022]). Regarding claim 17, Kinokuni teaches that the nozzle plate 1 has a plurality of nozzles 4 for discharging liquid ([0007], [0012]) (i.e., wherein a plurality of the ejection orifices are formed in the ejection orifice forming member, and the pressure application unit applies pressure to the liquid to eject the liquid as droplets from the plurality of ejection orifices). Regarding claim 19, Kinokuni teaches that a nozzle having a 20 μm diameter ([0028]) (i.e., wherein the ejection orifice is 100 μm or smaller in diameter). Regarding claim 20, Kinokuni teaches that a voltage applied to the piezoelectric element 12 is increased to stretch the piezoelectric element 12, deforming the vibration region 30 of the diaphragm member 3, so that liquid inside an individual liquid chamber 6 is pressurized and the liquid is discharged from the nozzle 4 ([0022]) (i.e., wherein the pressure application unit is formed by a piezoelectric element which deforms upon application of voltage, and the piezoelectric element applies pressure to the liquid in the liquid supply region by deforming, so that the liquid is ejected from the ejection orifice as a droplet) . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-22-aia AIA Claim s 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Kinokuni , as applied to claim 1 above, and further in view of Beltrame et al. ( US 2021/0009838 A1 ) . Kinokuni does not explicitly disclose a dispersion that is at least one of inorganic fine particles or organic fine particles (claim 4); wherein the inorganic fine particles are fine particles of carbon black, fullerene, graphene, carbon nanotubes, titanium oxide, magnetic fine particles, or apatite, and the organic fine particles are fine particles of pigment, latex, liposome, polylactic acid, polyglycolic acid, a copolymer of polylactic acid and polyglycolic acid, polyethylene glycol, polypropylene glycol, a copolymer of polyethylene glycol and polypropylene glycol, or cellulose nano fibers (claim 5). Beltrame discloses an ink composition for inkjet printing (Abstract). Beltrame teaches that the ink composition has a colorant (Abstract) that is a dispersion in a solvent of carbon black pigment as a solid as the colorant ([0034], [0040]). Beltrame teaches that carbon black is a preferred colorant ([0040]). Therefore, before the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art to modify the method of Kinokuni by providing a dispersion that is inorganic fine particles (claim 4); wherein the inorganic fine particles are fine particles of carbon black (claim 5) as taught by Beltrame because (1) Kinokuni teaches colorants such as pigments for inkjet inks ( Kinokuni , [0077]); and (2) carbon black is a preferred colorant ( Beltrame , [0040]) . 07-22-aia AIA Claim s 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Kinokuni , as applied to claim 1 above, and further in view of Edaka et al. ( US 2018/0037764 A1 ) . Kinokuni does not explicitly disclose that the organic solvent is an organic liquid that contains at least one of a flammable liquid or an inflammable liquid (claim 6); wherein the flammable liquid is at least one alcohol selected from methyl alcohol, ethyl alcohol, and isopropyl alcohol, a polymerizable monomer, oil formed of at least one of hydrocarbon or siloxane, gasoline, kerosene, light oil, naphtha, or fuel oil for jets, and the inflammable liquid is a fluorine liquid or a halogen liquid (claim 7). Edaka discloses an ink composition for an inkjet printer (Abstract; [0032]). Edaka teaches organic solvents for suitable carrier mixtures for the composition that include alcohols, such as methyl alcohol, ethyl alcohol, and isopropyl alcohol ([0033]). Therefore, before the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art to modify the method of Kinokuni by providing an organic liquid that contains a flammable liquid (claim 6); wherein the flammable liquid is at least one alcohol selected from methyl alcohol, ethyl alcohol, and isopropyl alcohol (claim 7) as taught by Edaka because (1) Kinokuni teaches organic solvents for inkjet inks ( Kinokuni , [0077]); and (2) methyl alcohol, ethyl alcohol, and isopropyl alcohol are part of a suitable carrier mixture for obtaining desired surface tension and viscosity ( Edaka , [0033]) . 07-22-aia AIA Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Kinokuni , as applied to claim 1 above, and further in view of Kim et al. ( KR20180100949A ) . Kinokuni does not explicitly disclose collecting the liquid ejected from the ejection orifice. Kim discloses a vibrating spray nozzle 9 (Fig. 2; [0021]) comprising a piezoelectric element for discharging a mixed liquid ([0028]) including a monomer mixture ([0013]) used in a suspension polymerization device ([0009]). Kim teaches that the monomer mixture is discharged as a droplet into an aqueous solution contained in a predetermined chamber 1 (i.e., collecting the liquid) through the vibrating spray nozzle ([0013], [0021]) to be heated ([0039]) for polymerization ([0002]). Therefore, before the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art to modify the method of Kinokuni by collecting the liquid ejected from the ejection orifice as taught by Kim because (1) Kinokuni teaches a suspension or emulsion including polymerizable compounds ( Kinokuni , [0077]); and (2) it would have been obvious to collect a monomer mixture/polymerizable compounds in a suspension polymerization device for polymerization ( Kim , Fig. 2; [0021]) . 07-22-aia AIA Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Kinokuni , as applied to claim 15 above, and further in view of Kim . Kinokuni does not explicitly disclose a collection unit that collects the liquid ejected from the ejection orifice. Kim discloses a vibrating spray nozzle 9 (Fig. 2; [0021]) comprising a piezoelectric element for discharging a mixed liquid ([0028]) including a monomer mixture ([0013]) used in a suspension polymerization device ([0009]). Kim teaches that the monomer mixture is discharged as a droplet into an aqueous solution contained in a predetermined chamber 1 (i.e., a collection unit) through the vibrating spray nozzle ([0013], [0021]) to be heated ([0039]) for polymerization ([0002]). Therefore, before the effective filing date of the claimed invention it would have been obvious to one of ordinary skill in the art to modify the apparatus of Kinokuni by providing a collection unit that collects the liquid ejected from the ejection orifice as taught by Kim because (1) Kinokuni teaches a suspension or emulsion including polymerizable compounds ( Kinokuni , [0077]); and (2) it would have been obvious to collect a monomer mixture/polymerizable compounds in a suspension polymerization device for polymerization ( Kim , Fig. 2; [0021]) . Claim Objections 12-151-08 AIA 07-43 12-51-08 Claim s 11, 16, and 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Allowable Subject Matter 13-03-01 AIA The following is a statement of reasons for the indication of allowable subject matter: A thorough search for pertinent prior art did not locate any prior art that discloses or suggests the invention recited in claims 11, 16, and 18. The concept of a method for producing an ultrafine-bubble-containing liquid, the method comprising: supplying a liquid containing at least one substance selected from a group stated below to a liquid supply region where an ejection orifice forming member in which an ejection orifice with a diameter is formed is disposed; and ejecting the liquid from the ejection orifice as a droplet by causing a pressure application unit in contact with the liquid to apply pressure to the liquid supplied to the liquid supply region, the group consisting of a thermally denaturing material, inorganic salts, amino acids and their salts, carbohydrates/sugars and their salts, organic polymers and their salts, inorganic polymers and their salts, a dispersion, and an organic liquid (claim 1); wherein a plurality of the pressure application units are provided facing a plurality of the ejection orifices respectively, and in the ejecting, each of the plurality of pressure application units applies pressure to the liquid to eject the liquid as droplets from the plurality of ejection orifices (claim 11) is considered to define patentable subject matter over the prior art. Likewise, the concept of an apparatus for producing an ultrafine-bubble-containing liquid, the apparatus comprising: an ejection orifice forming member in which an ejection orifice with a diameter is formed and which is disposed at a liquid supply region to which a liquid containing at least one substance selected from a group stated below is supplied; and a pressure application unit that causes the liquid to be ejected from the ejection orifice as a droplet by being in contact with the liquid and applying pressure to the liquid supplied to the liquid supply region, the group consisting of a thermally denaturing material, inorganic salts, amino acids and their salts, carbohydrates/sugars and their salts, organic polymers and their salts, inorganic polymers and their salts, a dispersion, and an organic liquid (claim 15); further comprising a gas dissolution unit that dissolves a predetermined gas in the liquid (claim 16); wherein a plurality of the pressure application units are provided facing a plurality of the ejection orifices respectively, and each of the plurality of pressure application units applies pressure to the liquid to eject the liquid as droplets from the plurality of ejection orifices (claim 18) is considered to define patentable subject matter over the prior art. The closest prior art is Kinokuni ( JP2019155834A ) which discloses a liquid discharge head 100 (Abstract; [0011]), and implicitly, a method of operating the liquid discharge head (e.g., [0012]: “discharging liquid”) comprising: supplying liquid from a supply-side common flow path 10 (Fig. 2; [0013]) to a liquid chamber 6 with a nozzle communication passage 5 ([0013]), the liquid containing DNA, organic solvents, polymerizable compounds, suspensions, emulsions or colorants such as dyes and pigments for inkjet inks ([0077]), the nozzle communication passage 5 having a nozzle plate 1with a nozzle 4 ([0012]) having a 20 μm diameter ([0028]); and pressurizing and discharging liquid from the nozzle 4 via the deformation of a piezoelectric element 12 that deforms a vibration region 30 of a diaphragm member 3 ([0022]). Regarding claims 11 and 18, Kinokuni teaches a deformable vibration region 30 that corresponds to each individual liquid chamber 6 ([0015]), wherein each liquid chamber connects to a plurality of nozzles 4 ([0013]), so Kinokuni does not suggest a plurality of the pressure application units that face a plurality of the ejection orifices respectively. Regarding claim 16, Kinokuni teaches that liquid in the liquid chamber has dissolved air ([0030]), but there is no suggestion of a device or unit to perform the dissolving of the gas . 07-43-01 AIA Claim s 1-21 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), 2nd paragraph, set forth in this Office action. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to GABRIEL E GITMAN whose telephone number is (571)272-7934. The examiner can normally be reached M-Th 7:15-5:45pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, In Suk Bullock can be reached at 571-272-3471. The fax phone number for the organization where this application or proceeding is 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 Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /GABRIEL E GITMAN/Primary Examiner, Art Unit 1772 Application/Control Number: 18/624,370 Page 2 Art Unit: 1772 Application/Control Number: 18/624,370 Page 3 Art Unit: 1772 Application/Control Number: 18/624,370 Page 4 Art Unit: 1772 Application/Control Number: 18/624,370 Page 5 Art Unit: 1772 Application/Control Number: 18/624,370 Page 6 Art Unit: 1772 Application/Control Number: 18/624,370 Page 7 Art Unit: 1772 Application/Control Number: 18/624,370 Page 8 Art Unit: 1772 Application/Control Number: 18/624,370 Page 9 Art Unit: 1772 Application/Control Number: 18/624,370 Page 10 Art Unit: 1772 Application/Control Number: 18/624,370 Page 11 Art Unit: 1772 Application/Control Number: 18/624,370 Page 12 Art Unit: 1772 Application/Control Number: 18/624,370 Page 13 Art Unit: 1772 Application/Control Number: 18/624,370 Page 14 Art Unit: 1772 Application/Control Number: 18/624,370 Page 15 Art Unit: 1772
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