DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
2. 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.
3. Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sakurai et al. (US 20210087077 A1).
Regarding claim 1, Sakurai teaches a fluid sterilization device (1, Fig. 2) comprising:
a flow path tube forming a flow path space through which a fluid flows (processing chamber 20, Fig. 2) and having a side wall (203, Fig. 2), a first end (back surface 111, Fig. 2), and a second end (end face 202, Fig. 2), the side wall being provided with an inlet formed at a side of the first end (end portion 52, Fig. 2) and an outlet formed at a side of the second end (end portion 61, Fig. 2); and
a light source unit (10, Fig. 2) disposed at a position closer to the inlet in the flow path space (end portion 52, Fig. 2) and configured to emit ultraviolet light to the second end ([0017]),
wherein the light source unit includes a light emitting element that emits ultraviolet light (light source 14, Fig. 2),
a support portion provided to protrude (cooling block 11 portion directly adjacent to back surface 111, see drawing below) from an end surface of the first end of the flow path tube toward the second end (protrudes from back surface 111 towards end surface 202, Fig. 2), and
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an accommodation portion that is provided at a front end of the support portion and accommodates the light emitting element (front end of support portion being the top surface of the support portion block, see drawing above), and
the accommodation portion is formed to extend from the front end of the support portion (accommodation portion extends from the front/top end of support portion, see drawing above) toward an outside of the support portion in a radial direction over an entire periphery of the front end of the support portion (the accommodation portion radially surrounds the entire periphery (because the tube is cylindrical, see Fig. 3) of the support portion, see drawing above).
Regarding claim 2, Sakurai teaches wherein the light emitting element (14, Fig. 2) is positioned outside the support portion when viewed from a central axis direction of the support portion (see drawing below), in the accommodation portion (light source 14 is in the highlighted accommodation portion, see claim 1 rejection drawing above).
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Regarding claim 3, Sakurai teaches wherein the accommodation portion includes a peripheral wall (fixing portion 16, Fig. 2) that is formed on an outer surface of the accommodation portion at a side of the support portion (fixing portion 16 is at the outer edge of the accommodation portion, see claim 1 rejection drawing above), protrudes toward the support portion (protrudes towards the back surface 111, Fig. 2), and surrounds at least a portion of the front end of the support portion (radially surrounds at least a portion of the highlighted support portion, see claim 1 rejection drawing above).
Regarding claim 4, Sakurai teaches wherein the peripheral wall (fixing portion 16, Fig. 2) is positioned outside the light emitting element (14, Fig. 2) when viewed from a central axis direction of the support portion (the central axis direction’s viewpoint is cross-sectional such as Fig. 2’s view, to which the light source 14 is positioned outside the fixing portion 16, Fig. 2).
Regarding claim 5, Sakurai teaches wherein the support portion has a columnar shape (the highlighted support portion in claim 1 rejection drawing above has a height, depth, and width, which is a column).
Regarding claim 6, Sakurai teaches wherein a surface of the accommodation portion at a side of the support portion is provided with a protrusion (see drawing below).
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Regarding claim 7, Sakurai teaches wherein a surface of the accommodation portion at a side of the support portion is provided with a protrusion (see drawing above).
Double Patenting
4. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
5. Claims 1-3 and 5-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-5, and 13-14 of copending Application No. 18945056 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending application 18945056 anticipates the limitations of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 1, copending Application No. 18945056 claim 3, in its full scope, teaches a fluid sterilization device comprising (“a fluid sterilization device comprising”, claim 1):
a flow path tube forming a flow path space through which a fluid flows and having a side wall, a first end, and a second end, the side wall being provided with an inlet formed at a side of the first end and an outlet formed at a side of the second end (“a flow path tube forming a flow path space through which a fluid flows and having a side wall, a first end, and a second end, the side wall being provided with an inlet formed at a side of the first end and an outlet formed at a side of the second end”, claim 1); and
a light source unit disposed at a position closer to the inlet in the flow path space and configured to emit ultraviolet light to the second end (“a light source unit disposed at a position closer to the inlet in the flow path space and configured to emit ultraviolet light to the second end”, claim 1),
wherein the light source unit includes (“wherein the light source unit includes”, claim 1)
a light emitting element that emits ultraviolet light (“a light emitting element that emits ultraviolet light”, claim 1),
a support portion provided to protrude from an end surface of the first end of the flow path tube toward the second end (“a support portion provided to protrude from an end surface of the first end of the flow path tube toward the second end”, claim 1), and
an accommodation portion that is provided at a front end of the support portion and accommodates the light emitting element (“an accommodation portion that is provided at a front end of the support portion and accommodates the light emitting element”, claim 1), and
the accommodation portion is formed to extend from the front end of the support portion toward an outside of the support portion in a radial direction over an entire periphery of the front end of the support portion (“wherein the accommodation portion is formed to extend from the front end of the support portion toward an outside of the support portion in a radial direction over an entire periphery of the front end of the support portion”, claim 3).
Regarding claim 2, copending Application No. 18945056 teaches wherein the light emitting element is positioned outside the support portion when viewed from a central axis direction of the support portion, in the accommodation portion (“wherein the light emitting element is positioned outside the support portion when viewed from a central axis direction of the support portion, in the accommodation portion”, claim 4).
Regarding claim 3, copending Application No. 18945056 teaches wherein the accommodation portion includes a peripheral wall that is formed on an outer surface of the accommodation portion at a side of the support portion, protrudes toward the support portion, and surrounds at least a portion of the front end of the support portion (“wherein the accommodation portion includes a peripheral wall that is formed on an outer surface of the accommodation portion at a side of the support portion, protrudes toward the support portion, and surrounds at least a portion of the front end of the support portion”, claim 5).
Regarding claim 5, copending Application No. 18945056 teaches the support portion (“support portion”, claim 1), but fails to teach wherein the support portion has a columnar shape.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to change the shape of the support portion as desired with a reasonable expectation of success, including a columnar shape according to decorative preferences, because the configuration of the support portion “is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant” (MPEP 2144.04.B).
Regarding claim 6, copending Application No. 18945056 teaches wherein a surface of the accommodation portion at a side of the support portion is provided with a helical groove or a protrusion (“wherein a surface of the accommodation portion at a side of the support portion is provided with a helical groove or a protrusion”, claim 13).
Regarding claim 7, copending Application No. 18945056 teaches wherein a surface of the accommodation portion at a side of the support portion is provided with a radial groove or a protrusion (“wherein a surface of the accommodation portion at a side of the support portion is provided with a radial groove or a protrusion”, claim 14).
7. A complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.
As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only compliance with objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated. Replies with an omission should be treated as provided in MPEP § 714.03.
Conclusion
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Aham Lee whose telephone number is (703)756-5622. The examiner can normally be reached Monday to Thursday, 10:00 AM - 8:00 PM EST.
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, Maris R. Kessel can be reached at (571) 270-7698. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Aham Lee/Examiner, Art Unit 1758
/MARIS R KESSEL/Supervisory Patent Examiner, Art Unit 1758
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