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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`wwwusptogov
`
`
`
`
`
`15/941,836
`
`03/30/2018
`
`Hiroshi SAIKI
`
`20249.0083USD2
`
`7094
`
`05/07/2018 —HAMRE, SCHUMANN,MUELLER&LARSON,P.C. m
`7590
`52835
`45 South Seventh Street
`KWAK, DEANP
`Suite 2700
`MINNEAPOLIS, MN 55402- 1683
`
`PAPER NUMBER
`
`ART UNIT
`1798
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`05/07/2018
`
`ELECTRONIC
`
`Please find below and/0r 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):
`PTOMail @hsml.com
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 15/941,836 SAIKI, HIROSHI
`
`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office Action Summary
`
`DEAN KWAK its“ 1798
`
`-- 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 g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136( a).
`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).
`
`In no event, however, may a reply be timely filed
`
`Status
`
`1)|:I Responsive to communication(s) filed on
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|ZI This action is non-final.
`2a)|:l 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
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`; the restriction requirement and election have been incorporated into this action.
`
`4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)IZI CIaim(s)1_0is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`is/are allowed.
`6)I:I Claim(s)
`7)|Z| Claim(s)_10 is/are rejected.
`
`8)|:I Claim(s)_ is/are objected to.
`* If any)claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`
`
`()
`
`are subject to restriction and/or election requirement.
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`
`
`:/'I’vaIW.usnI‘.0. ovI’ atentS/init events/
`iindex.‘s orsend an inquiry to PPI-iieedback{®usgtc.00v.
`
`hit
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)IXI The drawing(s) filed on 03/30/2018 is/are: a)|:l accepted or b)IXI 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)IXI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)IZl All
`
`b)|:l Some” c)I:l None of the:
`
`1.I:I Certified copies of the priority documents have been received.
`2.IZI Certified copies of the priority documents have been received in Application No. 13/001 ,507.
`3.|:| 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)
`
`3) D Interview Summary (PTO-413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) E InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date
`
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20180501
`
`

`

`Application/Control Number: 15/941,836
`
`Page 2
`
`Art Unit: 1798
`
`DETAILED ACTION
`
`The present application is being examined under the pre—AIA first to invent provisions.
`
`Drawings
`
`The drawings are objected to under 37 CFR 1.83(a). The drawings must show every
`
`feature of the invention specified in the claims. Therefore, the overflow cavity connected to an
`
`other end of the connecting passage; and the liquid retaining connecting passage provided from
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`an outlet of the connecting passage in a circumferential direction must be shown or the feature(s)
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`canceled from the claim(s). No new matter should be entered.
`
`Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to
`
`the Office action to avoid abandonment of the application. Any amended replacement drawing
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`sheet should include all of the figures appearing on the immediate prior version of the sheet,
`
`even if only one figure is being amended. The figure or figure number of an amended drawing
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`should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure
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`must be removed from the replacement sheet, and where necessary, the remaining figures must
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`be renumbered and appropriate changes made to the brief description of the several views of the
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`drawings for consistency. Additional replacement sheets may be necessary to show the
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`renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an
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`application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet”
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`pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will
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`be notified and informed of any required corrective action in the next Office action. The
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`objection to the drawings will not be held in abeyance.
`
`

`

`Application/Control Number: 15/941,836
`
`Page 3
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`Art Unit: 1798
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`Claim Rejections - 35 USC § 112
`
`The following is a quotation of 35 USC. 112(b):
`
`(b) CONCLUSION.7The 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 USC. 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.
`
`Claim 10 is rejected under 35 USC. 112(b) or 35 USC. 112 (pre—AIA), second
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`paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject
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`matter which the inventor or a joint inventor, or for pre—AIA the applicant regards as the
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`invention.
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`Regarding claim 10, the recitation “an other end” is unclear if the applicant is trying to
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`claim an additional end (another) of the connecting passage or a different end (other) of the
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`connecting passage.
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`Claim Rejections - 35 USC § 102
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`In the event the determination of the status of the application as subject to AIA 35 USC.
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`102 and 103 (or as subject to pre—AIA 35 USC. 102 and 103) is incorrect, any correction of the
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`statutory basis for the rejection will not be considered a new ground of rejection if the prior art
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`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 pre—AIA 35 USC. 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 ,
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`

`

`Application/Control Number: 15/941,836
`
`Page 4
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`Art Unit: 1798
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`(b) the invention was patented or described in a printed publication in this or a foreign country or in
`public use or on sale in this country, more than one year prior to the date of application for patent in the
`United States.
`
`Claim(s) 10 is/are rejected under pre—AIA 35 U.S.C. 102b as being anticipated by
`
`Nagaoka et al. (US 2006/0153735).
`
`Regarding claim 10, Nagaoka et al. teach an analyzing device comprising:
`
`0
`
`o
`
`o
`
`a separating cavity (210);
`
`a measuring passage (214);
`
`a connecting passage (218) whose proximal end is connected to a bottom of the
`
`separating cavity;
`
`0
`
`an overflow cavity (502) connected to another end of the connecting passage (see
`
`Fig. 6 for example); and
`
`o
`
`a liquid retaining connecting passage (273) provided from an outlet of the
`
`connecting passage in a circumferential direction (see Fig. 6 for example).
`
`With regard to limitations in claim 10 (e.g., “for separating the sample liquid into a
`
`solution component and a solid component by using the centrifugal force”, “. . .that receives a
`
`portion of the solution component separated in the separating cavity and retains the portion of the
`
`solution component”, etc.), these claim limitations are considered process or intended use
`
`limitations, which do not further delineate the structure of the claimed apparatus from that of the
`
`prior art. Since these claims are drawn to an apparatus statutory class of invention, it is the
`
`structural limitations of the apparatus, as recited in the claims, which are considered in
`
`determining the patentability of the apparatus itself. These recited process or intended use
`
`limitations are accorded no patentable weight to an apparatus. Process limitations do not add
`
`

`

`Application/Control Number: 15/941,836
`
`Page 5
`
`Art Unit: 1798
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`patentability to a structure, which is not distinguished from the prior art. A recitation of the
`
`intended use of the claimed invention 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. If the prior art structure is capable of performing the intended use, then it meets the claim.
`
`See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA
`
`1963). The Courts have held that it is well settled that the recitation of a new intended use, for an
`
`old product, does not make a claim to that old product patentable. See In re Schreiber, 128 F.3d
`
`1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). The Courts have held that the manner of
`
`operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art
`
`apparatus teaches all of the structural limitations of the claim. See EX Parte Masham, 2 USPQ2d
`
`1647 (BPAI 1987) (see MPEP § 2114).
`
`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 thereof by the applicant for a patent.
`
`Claim(s) 10 is/are rejected under pre—AIA 35 U.S.C. 102a as being anticipated by Saiki et
`
`al. (US 2009/0246082).
`
`Regarding claim 10, Saiki et al. teach an analyzing device comprising:
`
`0
`
`o
`
`a separating cavity (9);
`
`a measuring passage (14);
`
`

`

`Application/Control Number: 15/941,836
`
`Page 6
`
`Art Unit: 1798
`
`o
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`a connecting passage (12) whose proximal end is connected to a bottom of the
`
`separating cavity (11);
`
`0
`
`an overflow cavity (24) connected to another end of the connecting passage (26);
`
`and
`
`o
`
`a liquid retaining connecting passage (27) provided from an outlet of the
`
`connecting passage in a circumferential direction (see Fig. 22 for example).
`
`With regard to limitations in claim 10 (e.g., “for separating the sample liquid into a
`
`solution component and a solid component by using the centrifugal force”, “. . .that receives a
`
`portion of the solution component separated in the separating cavity and retains the portion of the
`
`solution component”, etc.), these claim limitations are considered process or intended use
`
`limitations, which do not further delineate the structure of the claimed apparatus from that of the
`
`prior art. Since these claims are drawn to an apparatus statutory class of invention, it is the
`
`structural limitations of the apparatus, as recited in the claims, which are considered in
`
`determining the patentability of the apparatus itself. These recited process or intended use
`
`limitations are accorded no patentable weight to an apparatus. Process limitations do not add
`
`patentability to a structure, which is not distinguished from the prior art. A recitation of the
`
`intended use of the claimed invention 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. If the prior art structure is capable of performing the intended use, then it meets the claim.
`
`See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA
`
`1963). The Courts have held that it is well settled that the recitation of a new intended use, for an
`
`old product, does not make a claim to that old product patentable. See In re Schreiber, 128 F.3d
`
`

`

`Application/Control Number: 15/941,836
`
`Page 7
`
`Art Unit: 1798
`
`1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). The Courts have held that the manner of
`
`operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art
`
`apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d
`
`1647 (BPAI 1987) (see MPEP § 2114).
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to DEAN KWAK whose telephone number is (571)270—7072. The
`
`examiner can normally be reached on M—TH, 5:30 am — 3:30 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, Jill A. Warden can be reached on (571) 272—1267. The fax phone number for the
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`organization where this application or proceeding is assigned is 571—273—8300.
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`

`

`Application/Control Number: 15/941,836
`
`Page 8
`
`Art Unit: 1798
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`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
`
`system, see http://pair—direct.uspto.gov. Should you have questions on access to the Private PAIR
`
`system, contact the Electronic Business Center (EBC) at 866—217—9197 (toll—free). If you would
`
`like assistance from a USPTO Customer Service Representative or access to the automated
`
`information system, call 800—786—9199 (IN USA OR CANADA) or 571—272—1000.
`
`/DEAN KWAK/
`
`Primary Examiner, Art Unit 1798
`
`