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 .
This is the initial Office action based on application number 18/725253 filed June 28, 2024. Claims 6-11 are currently pending and have been considered below.
Election/Restrictions
Claims 10-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on November 13, 2025.
The traversal is on the ground(s) that there is no serious search burden. This is not found persuasive because apparatus and method claims have sufficiently differing scope in general, since the functional steps carry substantially different patentable weight, that searching an apparatus and searching a method together present a serious search burden.
The requirement is still deemed proper and is therefore made FINAL.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(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.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by 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-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test 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 as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is 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 interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that 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 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Specifically, the limitations “atomizing means”, “carrier gas supply means”, “mist supply means”, “measurement means” and “control means” are all being interpreted under 35 U.S.C. 112(f).
A review of the specification indicates that the corresponding structure for each 112(f) limitation is as follows:
Atomizing means- any suitable atomization device, preferably ultrasonic wave generator
Carrier gas supply means- air compressor, cylinder or nitrogen gas separator
Mist supply means- a combination of pipes
Measurement means- a spectrometer
Control means- no corresponding structure described
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 6-9 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 limitation “control means” 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 performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification provides no concrete discussion as to the exact structure required by the control means, rather just what the control means does. 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) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that 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 applicant is of the opinion that 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) Amending the written description of the specification such that it expressly recites the corresponding structure, 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 corresponding structure, 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 §§ 608.01(o) and 2181.
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.
Claims 6-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yagyu et al. (JP 2018178229, translation filed 9/18/2024 used for citation purposes).
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).
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.
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).
Claim Rejections - 35 USC § 103
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 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.
Claims 7 and 9 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Yagyu et al. as applied to claims 6 and 8 above.
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), but fails to explicitly disclose that the same PID controller controls this ultrasonic transducer. However, 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 claim 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).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN A KITT whose telephone number is (571)270-7681. The examiner can normally be reached M-F 9am-5pm.
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/S.A.K/
Stephen KittExaminer, Art Unit 1717
3/6/2026
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717