`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`www.uspto.gov
`
`APPLICATION NO.
`
`
`
`
`
` F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`
`CONF {MATION NO.
`
`12/672,207
`
`02/04/2010
`
`Keisuke Matsumura
`
`P37974
`
`7709
`
`52123
`7590
`07/17/2013
`GREENBLUM & BERNSTEIN, P.L.C.
`1950 ROLAND CLARKE PLACE
`RESTON, VA 20191
`
`EXAMINER
`PANI, JOHN
`
`PAPER NUMBER
`
`ART UNIT
`
`3736
`
`
`
`
`NOT *ICATION DATE
`
`DELIVERY MODE
`
`07/ 1 7/201 3
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`gbpatent @ gbpatent.c0m
`greenblumbernsteinplc @ gmail.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 12/672,207 MATSUMURA ET AL.
`
`
`AIA (First Inventorto File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`JOHN PANI first“ 3736
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`In no event however may a reply be timely filed
`after SIX () MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`-
`-
`
`Status
`
`1)IXI Responsive to communication(s) filed on 3/28/2013.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)lX| This action is non-final.
`a)I:| This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
`
`
`; the restriction requirement and election have been incorporated into this action.
`
`4)|:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims
`5)IXI Claim(s) 1-21is/are pending in the application.
`5a) Of the above claim(s) 2and 12-21 is/are withdrawn from consideration.
`6)|:l Claim(s) _ is/are allowed.
`7)IZ| Claim(s) 1 and3- 11 is/are rejected.
`8)I:I Claim(s) _ is/are objected to.
`
`9)|:l Claim((s)
`are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`htt
`://www.usoto. ov/ atentS/init events"
`
`
`
`h/index.‘s or send an inquiry to PF"I-Ifeedback{<‘buspto.qov.
`
`Application Papers
`
`10)IXI The specification is objected to by the Examiner.
`11)|Z| The drawing(s) filed on 04 February 2010 is/are: a)lZl accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)IZI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §119(a)-(d) or (f).
`Certified copies:
`
`b)I:I Some * c)I:I None of the:
`a)le All
`1.I:I Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`3le Copies of the certified copies of the priority documents have been received in this National Stage
`
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) E Notice of References Cited (PTO-892)
`
`3) I] Interview Summary (PTO-413)
`
`Paper NOISIIMa” Date —
`PTO/SB/08
`t
`St t
`I
`D'
`t'
`f
`2 IXI I
`
`)
`4) I:I Other:
`a emen (s)(
`Isc osure
`n orma Ion
`)
`Paper No(s)/Mai| Date 5/4/10 3/15/11 6/7/12.
`
`US. Patent and Trademark Office
`PTOL-326 (Rev. 05-13)
`
`Part of Paper No./Mai| Date 20130710
`
`Office Action Summary
`
`

`

`Application/Control Number: 12/672,207
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`Page 2
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`Art Unit: 3736
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`DETAILED ACTION
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`Election/Restrictions
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`1.
`
`Applicant’s election without traverse of Group | and Species A in the reply filed
`
`on 3/28/2013 is acknowledged. Accordingly, claims 2 and 12-21 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.
`
`Priority
`
`2.
`
`Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C.
`
`119(a)-(d), which papers have been placed of record in the file.
`
`Information Disclosure Statement
`
`3.
`
`The information disclosure statements (IDS) submitted on 5/4/2010, 3/15/2011,
`
`and 6/07/2012 were received. The submissions are in compliance with the provisions of
`
`37 CFR 1.97. Accordingly, the information disclosure statements are being considered
`
`by the examiner.
`
`Specification
`
`4.
`
`The lengthy specification has not been checked to the extent necessary to
`
`determine the presence of all possible minor errors. Applicant's cooperation is
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`

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`Page 3
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`Art Unit: 3736
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`requested in correcting any errors of which applicant may become aware in the
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`specification.
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`5.
`
`The title of the invention is not descriptive. A new title is required that is clearly
`
`indicative of the invention to which the claims are directed.
`
`The following title is suggested: --Puncturing apparatus configured to calculate a
`
`number of remaining puncturing operations based upon measured battery level and
`
`power consumption--.
`
`Claim Objections
`
`6.
`
`7.
`
`8.
`
`9.
`
`Claims 1, 7-8, and 11 are objected to because of the following informalities:
`
`Line 15 of claim 1 recites “an informing section that informs the number .
`
`.
`
`.
`
`Line 2 of claim 7 recites "the informing section informs the number. .
`
`.
`
`Line 4 of claim 8 recites “the informing section informs that fact.”
`
`10.
`
`Generally the verb “informs” is followed by “of" or "about” and by a direct object
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`when used as Applicant apparently intends above.
`
`It is suggested to amend the claims
`
`accordingly so as to avoid the appearance that "the number" and "the fact" are the
`
`nouns that are receiving the information, rather than the type of information of which
`
`something/someone is being informed.
`
`11.
`
`Line 5 of claim 11 recites “the power consumption consumed.” It is suggested to
`
`delete “consumption” to avoid an apparent redundancy in the claim language.
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`12.
`
`Appropriate correction is required.
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`

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`Application/Control Number: 12/672,207
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`Page 4
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`Art Unit: 3736
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`Claim Interpretation — 35 USC § 1 12, Sixth Paragraph
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`13.
`
`Claim limitation “remaining battery level measuring section” has been interpreted
`
`under 35 U.S.C. 112, sixth paragraph, because it uses a non-structural term “remaining
`
`battery level measuring section” coupled with functional language “measures a
`
`remaining level of the battery” without reciting sufficient structure to achieve the
`
`function. Furthermore, the non-structural term is not preceded by a structural modifier.
`
`The term “section” is non-structural, at least because it could refer to an abstraction.
`
`The phrase “remaining battery level measuring” does not have any generally
`
`understood structural meaning in the art, as it could similarly refer to an abstraction,
`
`such as an algorithm.
`
`Since this claim limitation invokes 35 U.S.C. 112, sixth paragraph, claims 1 and
`
`3-11 are interpreted to cover the corresponding structure described in the specification
`
`that achieves the claimed function, and equivalents thereof.
`
`A review of the specification shows that the following appears to be the
`
`corresponding structure described in the specification for the 35 U.S.C. 112, sixth
`
`paragraph limitation: The integrated circuit described in [0124], [0222], and [0282].
`
`14.
`
`Claim limitation “power consumption measuring section” has been interpreted
`
`under 35 U.S.C. 112, sixth paragraph, because it uses a non-structural term “power
`
`consumption measuring section” coupled with functional language “measures electric
`
`power consumed by the battery for puncturing operation of the puncturing section”
`
`(claim 1), “measures electric power consumed by one puncturing operation” (claim 3),
`
`and “measures the power consumption consumed by the negative pressure section”
`
`

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`Application/Control Number: 12/672,207
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`Page 5
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`Art Unit: 3736
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`(claim 11), without reciting sufficient structure to achieve the function. Furthermore, the
`
`non-structural term is not preceded by a structural modifier. The term “section” is non-
`
`structural, at least because it could refer to an abstraction. The phrase “power
`
`consumption measuring” does not have any generally understood structural meaning in
`
`the art, as it could similarly refer to an abstraction, such as an algorithm.
`
`Since this claim limitation invokes 35 U.S.C. 112, sixth paragraph, claims 1 and
`
`3-11 are interpreted to cover the corresponding structure described in the specification
`
`that achieves the claimed function, and equivalents thereof.
`
`A review of the specification shows that the following appears to be the
`
`corresponding structure described in the specification for the 35 U.S.C. 112, sixth
`
`paragraph limitation: The corresponding structure is either not disclosed, insufficiently
`
`disclosed, or insufficiently linked to the function. See rejections under 35 USC 112
`
`below.
`
`15.
`
`Claim limitation “remaining puncturing calculation section” has been interpreted
`
`under 35 U.S.C. 112, sixth paragraph, because it uses a non-structural term “remaining
`
`puncturing calculation section” coupled with functional language “calculates a number of
`
`remaining puncturing operations that can be performed by the puncturing section,
`
`based on the remaining battery level and the power consumption that have been
`
`measured” (claim 1) and “calculates the number of remaining puncturing operations,
`
`based on an average of a measurement result of a past power consumption stored in
`
`the storage section,” (claim 5), and “calculates the number of remaining puncturing
`
`operations, based on information acquired by the personal information acquiring
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`

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`Page 6
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`Art Unit: 3736
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`section,” (claim 6), without reciting sufficient structure to achieve the function.
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`Furthermore, the non-structural term is not preceded by a structural modifier. The term
`
`“section” is non-structural, at least because it could refer to an abstraction. The phrase
`
`“remaining puncturing calculation” does not have any generally understood structural
`
`meaning in the art, as it could similarly refer to an abstraction, such as an algorithm.
`
`Since this claim limitation invokes 35 U.S.C. 112, sixth paragraph, claims 1 and
`
`3-11 are interpreted to cover the corresponding structure described in the specification
`
`that achieves the claimed function, and equivalents thereof.
`
`A review of the specification shows that the following appears to be the
`
`corresponding structure described in the specification for the 35 U.S.C. 112, sixth
`
`paragraph limitation: An electrical circuit as described in [0225].
`
`16.
`
`Claim limitation “informing section” has been interpreted under 35 U.S.C. 112,
`
`sixth paragraph, because it uses a non-structural term “informing section” coupled with
`
`functional language “informs the number of remaining puncturing operations calculated
`
`by the remaining puncturing calculation section” (claim 1), “informs the number of
`
`remaining puncturing operations calculated by the remaining puncturing calculation
`
`section, using at least one ofdisplay, sound and voice,” (claim 7), “when the number of
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`remaining puncturing operations calculated by the remaining puncturing calculation
`
`section is equal to or less than a predetermined value .
`
`.
`
`. informs that fact," (claim 8),
`
`and "informs in a changed informing mode when the number of remaining puncturing
`
`operations is equal to or less than a predetermined value," (claim 9) without reciting
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`sufficient structure to achieve the function. Furthermore, the non-structural term is not
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`

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`Page 7
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`Art Unit: 3736
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`preceded by a structural modifier. The term “section” is non-structural, at least because
`
`it could refer to an abstraction. The phrase “informing” does not have any generally
`
`understood structural meaning in the art, as it could similarly refer to an abstraction,
`
`such as an algorithm.
`
`Since this claim limitation invokes 35 U.S.C. 112, sixth paragraph, claims 1 and
`
`3-11 are interpreted to cover the corresponding structure described in the specification
`
`that achieves the claimed function, and equivalents thereof.
`
`A review of the specification shows that the following appears to be the
`
`corresponding structure described in the specification for the 35 U.S.C. 112, sixth
`
`paragraph limitation: The corresponding structure is either not disclosed, insufficiently
`
`disclosed, or insufficiently linked to the function. See rejections under 35 USC 112
`
`below.
`
`17.
`
`Claim limitation “storage section” has been interpreted under 35 U.S.C. 112, sixth
`
`paragraph, because it uses a non-structural term “storage section” coupled with
`
`functional language “stores a measurement result of the power consumption” without
`
`reciting sufficient structure to achieve the function. Furthermore, the non-structural term
`
`is not preceded by a structural modifier. The term “section” is non-structural, at least
`
`because it could refer to an abstraction. The phrase “storage” does not have any
`
`generally understood structural meaning in the art, as it could similarly refer to an
`
`abstraction, such as an algorithm.
`
`

`

`Application/Control Number: 12/672,207
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`Page 8
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`Art Unit: 3736
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`Since this claim limitation invokes 35 U.S.C. 112, sixth paragraph, claim 5 is
`
`interpreted to cover the corresponding structure described in the specification that
`
`achieves the claimed function, and equivalents thereof.
`
`A review of the specification shows that the following appears to be the
`
`corresponding structure described in the specification for the 35 U.S.C. 112, sixth
`
`paragraph limitation: The corresponding structure is either not disclosed, insufficiently
`
`disclosed, or insufficiently linked to the function. See rejections under 35 USC 112
`
`below.
`
`18.
`
`Claim limitation “personal information acquiring system” has been interpreted
`
`under 35 U.S.C. 112, sixth paragraph, because it uses a non-structural term “personal
`
`information acquiring system” coupled with functional language “acquires personal
`
`information including usage history of a test subject” without reciting sufficient structure
`
`to achieve the function. Furthermore, the non-structural term is not preceded by a
`
`structural modifier. The term “system” is non-structural, at least because it could refer
`
`to an abstraction. The phrase “personal information acquiring” does not have any
`
`generally understood structural meaning in the art, as it could similarly refer to an
`
`abstraction, such as an algorithm.
`
`Since this claim limitation invokes 35 U.S.C. 112, sixth paragraph, claim 6 is
`
`interpreted to cover the corresponding structure described in the specification that
`
`achieves the claimed function, and equivalents thereof.
`
`A review of the specification shows that the following appears to be the
`
`corresponding structure described in the specification for the 35 U.S.C. 112, sixth
`
`

`

`Application/Control Number: 12/672,207
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`Page 9
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`Art Unit: 3736
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`paragraph limitation: The corresponding structure is either not disclosed, insufficiently
`
`disclosed, or insufficiently linked to the function. See rejections under 35 USC 112
`
`below.
`
`19.
`
`Claim limitation “control section” has been interpreted under 35 U.S.C. 112, sixth
`
`paragraph, because it uses a non-structural term “control section” coupled with
`
`functional language “performs control to prohibit the puncturing section from puncturing
`
`when the number of remaining puncturing operations calculated by the remaining
`
`puncturing calculation section is equal to or less than a predetermined value” without
`
`reciting sufficient structure to achieve the function. Furthermore, the non-structural term
`
`is not preceded by a structural modifier. The term “section” is non-structural, at least
`
`because it could refer to an abstraction. The phrase “control” does not have any
`
`generally understood structural meaning in the art, as it could similarly refer to an
`
`abstraction, such as an algorithm.
`
`Since this claim limitation invokes 35 U.S.C. 112, sixth paragraph, claim 10 is
`
`interpreted to cover the corresponding structure described in the specification that
`
`achieves the claimed function, and equivalents thereof.
`
`A review of the specification shows that the following appears to be the
`
`corresponding structure described in the specification for the 35 U.S.C. 112, sixth
`
`paragraph limitation: A microcomputer as described in [0028], [0113], [0131], [0219],
`
`and [0274].
`
`20.
`
`If applicant wishes to provide further explanation or dispute the examiner’s
`
`interpretation of the corresponding structures, applicant must identify the corresponding
`
`

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`Application/Control Number: 12/672,207
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`Page 10
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`Art Unit: 3736
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`structures with reference to the specification by page and line number, and to the
`
`drawing, if any, by reference characters in response to this Office action.
`
`If applicant does not wish to have the claim limitation treated under 35 U.S.C.
`
`112, sixth paragraph, applicant may amend the claim so that it will clearly not invoke 35
`
`U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites
`
`sufficient structure, material, or acts for performing the claimed function to preclude
`
`application of 35 U.S.C. 112, sixth paragraph.
`
`For more information, see Supplementary Examination Guidelines for
`
`Determining Compliance with 35 U. S. C. § 112 and for Treatment of Related Issues in
`
`PatentApp/ications, 76 FR 7162, 7167 (Feb. 9, 2011).
`
`Claim Rejections - 35 USC § 1 12
`
`21.
`
`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.
`
`22.
`
`Claims 1 and 3-11 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 pre-AIA
`
`the applicant regards as the invention.
`
`23.
`
`Regarding Claims 1 and 3-11
`
`

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`Application/Control Number: 12/672,207
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`Page 11
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`Art Unit: 3736
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`24.
`
`Claim element “power consumption measuring section” is a limitation that
`
`invokes 35 U.S.C. 112, sixth paragraph. However, the written description fails to
`
`disclose the corresponding structure, material, or acts for the claimed function. No
`
`structural terms defining the nature of the "power consumption measuring section" are
`
`found in the original disclosure.
`
`25.
`
`Claim element “informing section” is a limitation that invokes 35 U.S.C. 112, sixth
`
`paragraph. However, the written description fails to disclose the corresponding
`
`structure, material, or acts for the claimed function. No structural terms defining the
`
`nature of the "informing section" are found in the original disclosure.
`
`26.
`
`Claim element “storage section” is a limitation that invokes 35 U.S.C. 112, sixth
`
`paragraph. However, the written description fails to disclose the corresponding
`
`structure, material, or acts for the claimed function. No structural terms defining the
`
`nature of the "storage section" are found in the original disclosure.
`
`27.
`
`Claim element “personal information acquiring section” is a limitation that invokes
`
`35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the
`
`corresponding structure, material, or acts for the claimed function. No structural terms
`
`defining the nature of the "personal information acquiring section" are found in the
`
`original disclosure.
`
`28.
`
`Applicant may:
`
`(a)
`
`Amend the claim so that the claim limitations will no longer be interpreted
`
`as a limitation under 35 U.S.C. 112, sixth paragraph; or
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`

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`Page 12
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`Art Unit: 3736
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`(b)
`
`Amend the written description of the specification such that it expressly
`
`recites what structure, material, or acts perform the claimed functions without
`
`introducing any new matter (35 U.S.C. 132(a)).
`
`lf applicant is of the opinion that the written description of the specification
`
`already implicitly or inherently discloses the corresponding structures, materials, or acts
`
`so that one of ordinary skill in the art would recognize what structures, materials, or acts
`
`perform the claimed functions, applicant should clarify the record by either:
`
`(a)
`
`Amending the written description of the specification such that it expressly
`
`recites the corresponding structures, materials, or acts for performing the claimed
`
`functions and clearly links or associates the structures, materials, or acts to the claimed
`
`functions, without introducing any new matter (35 U.S.C. 132(a)); or
`
`(b)
`
`Stating on the record what the corresponding structures, materials, or
`
`acts, which are implicitly or inherently set forth in the written description of the
`
`specification, perform the claimed functions. For more information, see 37 CFR 1.75(d)
`
`and MPEP §§ 608.01 (0) and 2181.
`
`29.
`
`Regarding Claims 1 and 3-11
`
`30.
`
`Lines 3-4 of claim 1 refer to a “puncturing section .
`
`.
`
`. that punctures skin.” It is
`
`unclear whether the claim's scope thus encompasses only an apparatus in which the
`
`puncturing section is actively puncturing skin, or also one that is capable of or adapted
`
`for but is not actively puncturing skin.
`
`31.
`
`Line 5 of claim 1 refers to a “battery that supplies power to the puncturing
`
`section.” It is unclear whether the claim's scope thus encompasses only an apparatus
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`

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`in which the battery is actively supplying power, or also one that is capable of or
`
`adapted for but is not actively supplying power.
`
`32.
`
`Lines 6-7 of claim 1 refer to a “remaining battery level measuring section that
`
`measures .
`
`.
`
`.
`
`It is unclear whether the claim's scope thus encompasses only an
`
`apparatus in which the remaining battery level measuring section is actively measuring,
`
`or also one that is capable of or adapted for but is not actively measuring.
`
`33.
`
`Lines 8-10 of claim 1 refer to a “power consumption measuring section that
`
`measures .
`
`.
`
`.
`
`It is unclear whether the claim's scope thus encompasses only an
`
`apparatus in which the power consumption measuring section actively measures, or
`
`also one that is capable of or adapted for but is not actively measuring.
`
`34.
`
`Lines 11-14 of claim 1 refer to a “remaining puncturing calculation section that
`
`calculates .
`
`.
`
`.
`
`It is unclear whether the claim's scope thus encompasses only an
`
`apparatus in which the remaining puncturing calculation section actively calculates, or
`
`also one that is capable of or adapted for but is not actively calculating.
`
`35.
`
`Lines 15-17 of claim 1 refer to an “informing section that informs .
`
`.
`
`.
`
`It is
`
`unclear whether the claim's scope thus encompasses only an apparatus in which the
`
`informing section is actively informing, or also one that is capable of or adapted for but
`
`is not actively informing.
`
`36.
`
`Line 2 of claim 3 refers to a “needle puncturing device that punctures .
`
`.
`
`.
`
`It is
`
`unclear whether the claim's scope thus encompasses only an apparatus in which the
`
`needle puncturing device is actively puncturing, or also one that is capable of or
`
`adapted for but is not actively puncturing.
`
`

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`Application/Control Number: 12/672,207
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`Page 14
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`Art Unit: 3736
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`37.
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`Line 2 of claim 4 recites “power consumption measuring section measures .
`
`.
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`.
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`It is unclear whether the claim's scope thus encompasses only an apparatus in which
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`the power consumption measuring section actively measures, or also one that is
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`capable of or adapted for but is not actively measuring.
`
`38.
`
`Line 2 of claim 5 refers to a “storage section that stores .
`
`.
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`.
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`It is unclear
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`whether the claim's scope thus encompasses only an apparatus in which the storage
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`section is actively storing, or also one that is capable of or adapted for but is not actively
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`storing.
`
`39.
`
`Lines 4-5 of claim 5 recite “the remaining calculation section calculates .
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`.
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`.
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`It is
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`unclear whether the claim's scope thus encompasses only an apparatus in which the
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`remaining calculation section is actively calculating, or also one that is capable of or
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`adapted for but is not actively calculating.
`
`40.
`
`Line 2 of claim 6 refers to a “personal information acquiring section that acquires
`
`.
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`.
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`.
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`It is unclear whether the claim's scope thus encompasses only an apparatus in
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`which the personal information acquiring section is actively acquiring, or also one that is
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`capable of or adapted for but is not actively acquiring.
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`41.
`
`Lines 4-5 of claim 6 recite the “remaining puncturing calculation section
`
`calculates .
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`.
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`.
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`It is unclear whether the claim's scope thus encompasses only an
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`apparatus in which the remaining puncturing calculation section is actively calculating,
`
`or also one that is capable of or adapted for but is not actively calculating.
`
`42.
`
`Lines 2-3 of claim 7 recites “the informing section informs. .
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`.
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`It is unclear
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`whether the claim's scope thus encompasses only an apparatus in which the informing
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`section is actively informing, or also one that is capable of or adapted for but is not
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`actively informing.
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`43.
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`Lines 1-4 of claim 8 recite “wherein when the number. .
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`. is equal to or less than
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`a predetermined value, the informing section informs that fact .
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`.
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`.
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`It is unclear
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`whether the claim's scope thus encompasses only an apparatus in which the number is
`
`equal to or less than a predetermined value and the informing section is actively
`
`informing that fact, or also one where the number could be equal to or less than a
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`predetermined value and that is capable of or adapted for but is not actively informing.
`
`44.
`
`Lines 1-6 of claim 9 recite “the informing section .
`
`.
`
`. informs .
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`. .when the
`
`number. .
`
`. is equal to or less than a predetermined value.” It is unclear whether the
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`claim's scope thus encompasses only an apparatus in which the number is equal to or
`
`less than a predetermined value and the informing section is actively informing, or also
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`one where the number could be equal to or less than a predetermined value and that is
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`capable of or adapted for but is not actively informing.
`
`45.
`
`Lines 1-5 of claim 10 recite “a control section that performs control .
`
`.
`
`. when the
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`number. .
`
`. is equal to or less than a predetermined value.” It is unclear whether the
`
`claim's scope thus encompasses only an apparatus in which the number is equal to or
`
`less than a predetermined value and the control section is actively performing control, or
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`also one where the number could be equal to or less than a predetermined value and
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`that is capable of or adapted for but is not actively performing control.
`
`46.
`
`Lines 2-3 of claim 11 refer to “a negative pressure section that applies a negative
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`pressure to the skin .
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`.
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`.
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`It is unclear whether the claim's scope thus encompasses
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`only an apparatus in which the negative pressure section is actively applying a negative
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`pressure to the skin, or also one that is capable of or adapted for but is not actively
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`applying pressure to the skin.
`
`47.
`
`Lines 4-6 of claim 11 require “the power consumption measuring section further
`
`measures the power consumption .
`
`.
`
`.
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`It is unclear whether the claim's scope thus
`
`encompasses only an apparatus in which the power consumption measuring section is
`
`actively measuring power consumption, or also one that is capable of or adapted for but
`
`is not actively measuring the power consumption.
`
`48. With regards to the concerns raised in paragraphs 30-47 supra, the lack of clarity
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`regarding the claims’ scope renders the claims indefinite, because in each case the
`
`plain language suggests the former interpretation. However, during prosecution claims
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`are given their broadest reasonable interpretation consistent with the specification.
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`It
`
`seems unlikely that Applicant sought to limit the claim scope to an apparatus in a
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`particular state, and thus the broadest reasonable interpretation would appear to require
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`the latter interpretation in each case, but doing so would contradict the plain language of
`
`the claim. This dilemma renders the claims indefinite.
`
`49.
`
`Regarding Claim 8
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`50.
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`Line 4 refers to “that fact,” which lacks antecedent basis in the claims.
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`51.
`
`Regarding Claim 9
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`52.
`
`Line 3 refers to “these combination,” which lacks antecedent basis in the claims.
`
`Line 3 refers to “its,” but the claim does not make clear to what “its” refers. Additionally,
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`it is unclear how the phrase “its informing order” in line 3 relates to the rest of the claim.
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`Claim Rejections - 35 USC § 101
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`53.
`
`35 U.S.C. 101 reads as follows:
`
`Whoever invents or discovers any new and useful process, machine, manufacture, or
`composition of matter, or any new and useful improvement thereof, may obtain a patent
`therefor, subject to the conditions and requirements of this title.
`
`54.
`
`Section 33(a) of the America lnvents Act reads as follows:
`
`Notwithstanding any other provision of law, no patent may issue on a claim directed
`to or encompassing a human organism.
`
`55.
`
`Claims 1 and 3-11 are rejected under 35 U.S.C. 101 and section 33(a) of the
`
`America lnvents Act as being directed to or encompassing a human organism. See
`
`also Animals - Patentabi/iz‘y, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating
`
`that human organisms are excluded from the scope of patentable subject matter under
`
`35 U.S.C.101).
`
`56.
`
`Lines 3-4 of claim 1 require “a puncturing section .
`
`.
`
`. that punctures skin.” The
`
`plain language of the claim suggests that the claim thus requires a device with part of
`
`the device actively puncturing the skin. The broadest reasonable interpretation of “the
`
`skin” in the context of the disclosure includes human skin. The claims thus appear to
`
`encompass a human organism, at least in the sense that the skin, which is required to
`
`define the invention, could be that of a human organism.
`
`57.
`
`Lines 2-3 of claim 11 require “a negative pressure section that applies a negative
`
`pressure to the skin .
`
`.
`
`.
`
`The plain language of the claim suggests that the claim thus
`
`requires a device with part of the device applying negative pressure to the skin. The
`
`broadest reasonable interpretation of “the skin” in the context of the disclosure includes
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`human skin. The claims thus appear to encompass a human organism, at least in the
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`sense that the skin, which is required to define the invention, could be that of a human
`
`organism.
`
`Claim Rejections - 35 USC § 102
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`58.
`
`The following is a quotation of the appropriate paragraphs of pre-AIA 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) the invention was known or used by others in this country, or patented or described in a
`printed publication in this or a foreign country, before the invention there