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 .
The Applicant’s amendment filed on June 11, 2026 was received. Claims 6-9 were amended.
The text of those sections of Title 35, U.S.C. code not included in this action can be found in the prior Office action issued March 11, 2026.
Claim Interpretation
While Applicant’s amendment to claims 6-9 removed the term “means” from “control means”, it nonetheless remains interpreted under 35 U.S.C. 112(f) because the term “unit” is still a generic placeholder coupled with functional language without reciting sufficient structure to perform the recited function.
Claim Rejections - 35 USC § 112
The rejections of claims 6-9 as indefinite under 35 U.S.C. 112(b) are maintained. The term “control unit”, while having basis in the disclosure, is still a means-plus-function term and nothing in the disclosure explicitly or implicitly describes any actual physical structure corresponding to this claimed term.
Claim Rejections - 35 USC § 102
The claim rejections under 35 U.S.C. 102(a)(1) as anticipated by Yagyu et al. (JP 2018178229, translation filed 9/18/2024 used for citation purposes) on claims 6-9 are withdrawn because Applicant amended independent claim 6 to require the measurement means to measure the amount of material based on an aerosol electrometer or piezobalance method.
Claim Rejections - 35 USC § 103
Claims 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Yagyu et al. in view of Koutrakis et al. (US 5,932,795).
Regarding claim 6: Yagyu et al. discloses a film forming apparatus (9) having a mist generating source (24) which is a mist supply means including an ultrasonic transducer (6) which is an atomizing means which vibrates the raw material solution (4a) such that it is atomized and thereafter mixed with carrier gas from a carrier gas supply means (2a), the mixed fluid being carried through a pipe (7) to a tubular furnace (8) in which a substrate (20) is mounted on a susceptor (21) which is a stage, the apparatus (9) further including a transmittance measuring device (31) which measures the amount of atomized mist in the pipe (7) and sends that information to a PID control means such as a computer in order for the controller to adjust the flow rate of the carrier gas according to the measured amount of mist measured by the transmittance measuring device (31) (pars 26-28, 32-33, figures 1-5).
Yagyu et al. discloses that the transmittance measuring device (31) is an optical method for measuring amount of atomized mist, and therefore fails to explicitly disclose one that uses an electrometer method or piezobalance method. However, Koutrakis et al. discloses a similar device for monitoring particulate mass and teaches that for some applications, piezobalances can determine amount of particles, as well as either electrical (electrometer) or optical counters, such that all of them are known to be functionally equivalent when particle size is not a concern (col. 2 lines 22+, col. 3 lines 1-32). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the optical counter of Yagyu et al. for a piezobalance or electrical/electrometer counter since Koutrakis et al. teaches that all of these are known, functionally equivalent mechanisms for counting aerosol particles (col. 2 lines 22+, col. 3 lines 1-32) and simple substitution of functional equivalents is not considered to be a patentable advance (MPEP 2143, 2144.06).
Regarding claim 7: Yagyu et al. discloses that the ultrasonic transducer (6) is controlled to have a specific frequency at which the material (4a) is atomized, which amounts to an ability to change the amount of material being atomized (par. 31). While Yagyu et al. fails to explicitly disclose that this is done by the same PID controller, the limitation “the controls means controls…” is deemed to be a statement with regard to the intended use and is not further limiting in so far as the structure of the apparatus is concerned. In apparatus claims, a claimed intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. MPEP § 2111.02. In the instant case, the PID controller of Yagyu et al. discussed above is capable of controlling the ultrasonic transducer (6) frequency.
Alternatively, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the PID controller already discussed by Yagyu et al. for this process rather than a separate one because integration of parts is not considered to be a patentable advance (MPEP 2144.04) and because choosing from a finite number of solutions (separate controller or same controller) is not considered to be a patentable advance (MPEP 2143E).
Regarding claims 8-9: Yagyu et al. discloses that the PID controller controls the flow rate of the carrier gas from the carrier gas supply means (2a) to control the dilution of the mixed fluid in response to the transmittance measuring device (31) (par. 32).
Response to Arguments
Applicant's arguments filed June 11, 2026 have been fully considered but they are not persuasive. Applicant primarily argues that the specification provides support for a “control unit” and therefore the 112 rejection is improper, and that Yagyu et al. does not measure the particle amount via any electrical charge.
In response:
Regarding the method of measurement, Applicant’s arguments are now moot because they do not refer to the newly cited Koutrakis et al. reference which does teach that piezobalances and electrical counters are known equivalents to optical counters.
Regarding the 112 rejection, Applicant simply argues that “control unit” has support in the disclosure. This is not in dispute- the issue however is that “control unit” is identical to “control means” when it comes to the lack of physical structure described. “Control unit” is still a 112(f) means-plus-function limitation despite the change from “means” to “unit”, and therefore still requires an adequate description of corresponding structure in the specification. However, the specification merely shows the control means/unit (191a) as a generic box in figure 1, and provides no discussion of its associated physical structure, merely the functions it can perform. The specification states that the control means can send and receive signals, can control ultrasonic vibrators via a plurality of external drive circuits (123b) that are not part of the control unit (par. 65), and can have/connect to a power supply (par. 105), but the disclosure never states what exactly the control means/unit is. It is therefore unclear what physical structure can correspond to the claimed “control unit”, and therefore claim 6 remains indefinite.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/S.A.K/
Stephen KittExaminer, Art Unit 1717
7/25/2026
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717
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