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
`Alexandria, Virginia 2231371450
`www.uspto.gov
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`15/941,836
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`03/30/2018
`
`HirOShi SAIKI
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`20249.0083USD2
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`7094
`
`52835
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`759°
`
`06/08/2020
`
`HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
`45 South Seventh Street
`Suite 2700
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`Minneapolis, MN 55402-1683
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`KWAK' DEAN P
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`1798
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`06/08/2020
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
`PTOMail@hsml.eom
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`PTOL-90A (Rev. 04/07)
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`

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`0/7709 A0170” Summary
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`Application No.
`15/941,836
`Examiner
`DEAN KWAK
`
`Applicant(s)
`SAIKI, Hiroshi
`Art Unit
`1798
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`AIA (FITF) Status
`No
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`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`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 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f 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).
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`Status
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`1). Responsive to communication(s) filed on 12 March 2020.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)[:] This action is FINAL.
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`2b)
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`This action is non-final.
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`3)[:] 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.
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`4):] 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 Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)
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`Claim(s)
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`10,21 and 24—25 is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`
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`[:1 Claim(ss)
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`is/are allowed.
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`8)
`Claim(s 10, 21 and 24—25 is/are rejected.
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`D Claim(ss_) is/are objected to.
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`) ) ) )
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`S)
`are subject to restriction and/or election requirement
`[:1 Claim(s
`* If any claims have been determined aflowable. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
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`10)|:l The specification is objected to by the Examiner.
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`11). The drawing(s) filed on 30 March 2018 is/are: a). accepted or b)l:) 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).
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`Priority under 35 U.S.C. § 119
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`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a). All
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`b)C] Some**
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`c)C] None of the:
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`1.[:] Certified copies of the priority documents have been received.
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`2.. Certified copies of the priority documents have been received in Application No. 14692315.
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`SD 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)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1) [3 Notice of References Cited (PTO-892)
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`2) C] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
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`3) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20200602
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`

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`Application/Control Number: 15/941,836
`Art Unit: 1798
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`Page 2
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`DETAILED ACTION
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`Notice ofPre-AIA 0r AIA Status
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`The present application is being examined under the pre—AIA first to invent provisions.
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`Continued Examination Under 37 CFR 1.114
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`A request for continued examination under 37 CFR 1.114, including the fee set forth in
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`37 CFR 1.17(e), was filed in this application after final rejection. Since this application is
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`eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e)
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`has been timely paid, the finality of the previous Office action has been withdrawn pursuant to
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`37 CFR 1.114. Applicant's submission filed on 03/04/2020, 03/12/2020 has been entered.
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`Claim Rejections - 35 US C § 102
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`In the event the determination of the status of the application as subject to AIA 35 U.S.C.
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`102 and 103 (or as subject to pre—AIA 35 U.S.C. 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.
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`The text of those sections of Title 35, U.S. Code not included in this action can be found
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`in a prior Office action.
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`Claim(s) 10, 21, 24 & 25 is/are rejected under pre-AIA 35 U.S.C. 102b as being
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`anticipated by Nagaoka et al. (US 2006/0153735).
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`Regarding claim 10, Nagaoka et al. teach a rotary analyzing device (Abstract) having a
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`microchannel structure (see Figs. 6 & 8 for example) for transferring a sample liquid, the
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`microchannel structure comprising:
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`

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`Application/Control Number: 15/941,836
`Art Unit: 1798
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`Page 3
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`o
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`a separating cavity (212) capable of separating the sample liquid into a solution
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`component and a solid component by using the centrifugal force;
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`0
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`a separating cavity (212) capable of separating the sample liquid into a solution
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`component by a centrifugal force caused by rotation of the rotary analyzing
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`device (‘JI 0007+);
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`o
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`a siphon—shaped connecting passage (218/311/310) having a first end connected to
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`an outermost position of the separating cavity along the radial direction of the
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`rotary analyzing device (see annotation in Fig. 8);
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`0
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`an overflow cavity (320) connected directly to a second end of the siphon—shaped
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`connecting passage (see Fig. 8 for example), the second end being located at a
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`further outside position than the outermost position of the separating cavity (see
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`Fig. 8 for example);
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`0
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`a liquid retaining connecting passage (221) connected directly to both the second
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`end of the siphon—shaped connecting passage and the overflow cavity, and
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`extending toward an inner periphery of the rotary analyzing device (see Fig. 8 for
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`example);
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`0
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`an opened—to—atmosphere cavity (220) connected to an outlet of the liquid
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`retaining connecting passage (see Fig. 8); and
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`0
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`an air hole (222) disposed in the opened—to—atmosphere cavity (see Figs. 6 & 8 for
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`example), allowing fluid communication between the liquid retaining connecting
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`passage and outside atmosphere through the opened—to—atmosphere cavity (see
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`i.e., “These vessels are connected to the atmosphere by perforating the cover
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`above these vent holes” 11 0050).
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`

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`Application/Control Number: 15/941,836
`Art Unit: 1798
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`Page 4
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`Patent Application Publication Jul. 13, 2006 Sheet 8 of 18
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`US 200610153735 A!
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`FIG. 8
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`521 220 222
`223
`221
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`401
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`inner end
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`26
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`lst end
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`250
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`261 263
`557“
`252
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`402
`253
`242
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`240
`243
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`2nd end
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`outer end
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`41
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`232
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`Regarding claims 10 & 21, the limitations “a separating cavity configured to separate the
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`sample liquid into a solution component by a centrifugal force caused by rotation of the rotary
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`analyzing device” & “the siphon—shaped connecting passage is configured to transfer the solid
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`component to the overflow cavity” do not further define structural configurations the device. It
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`is noted that reciting a structure Without identifying any structural differences between the
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`structure in the claims and the structure disclosed in prior art does not further limit in an
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`apparatus claim. Further, reciting "configured to" Without identifying any structural differences
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`Application/Control Number: 15/941,836
`Art Unit: 1798
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`Page 5
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`between the structure in the claims and the structure disclosed in prior art does not further limit
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`in an apparatus claim.
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`With regard to limitations in claim 10 (eg, “for transferring a sample liquid to a
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`measurement spot by a centrifugal force caused by rotation of the rotary analyzing device”),
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`these claim limitations are considered process or intended use limitations, which do not further
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`delineate the structure of the claimed apparatus from that of the prior art. Since these claims are
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`drawn to an apparatus statutory class of invention, it is the structural limitations of the apparatus,
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`as recited in the claims, which are considered in determining the patentability of the apparatus
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`itself. These recited process or intended use limitations are accorded no patentable weight to an
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`apparatus. Process limitations do not add patentability to a structure, which is not distinguished
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`from the prior art. A recitation of the intended use of the claimed invention must result in a
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`structural difference between the claimed invention and the prior art in order to patentably
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`distinguish the claimed invention from the prior art. If the prior art structure is capable of
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`performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA
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`1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The Courts have held that it is well
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`settled that the recitation of a new intended use, for an old product, does not make a claim to that
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`old product patentable. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed.
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`Cir. 1997). The Courts have held that the manner of operating an apparatus does not differentiate
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`an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural
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`limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987) (see MPEP §
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`2114).
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`Regarding claims 24 & 25, Nagaoka et al. further teach the rotary analyzing device:
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`Application/Control Number: 15/941,836
`Art Unit: 1798
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`Page 6
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`o
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`24.
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`wherein the liquid retaining connecting passage (221) has an elongate
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`body extending from an outer end to an inner end (see annotation in Fig. 8), with
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`the outer end being located closer to an outer periphery of the rotary analyzing
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`device (see Fig. 8 for example), the outer end of the liquid retaining connecting
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`passage having a radial location corresponding to a radial location of the second
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`end of the connecting passage (see a radial location near the radial position 402 in
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`Fig. 8), and the opened—to—atmosphere cavity with the air hole being disposed at
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`the inner end of the liquid retaining connecting passage (see Fig. 8 for example);
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`and
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`o
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`25.
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`wherein no air hole opened directly to atmosphere is formed in the siphon—
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`shaped connecting passage (see ‘J[ 0080 & Fig. 8 for example).
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`Response to Arguments
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`Applicant's arguments filed 03/04/2020 have been fully considered but they are not
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`persuasive.
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`Drawings objection is withdrawn.
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`ll2 rejections are withdrawn.
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`In response to the Applicant’s argument to claim 10 “requires an overflow cavity
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`connected directly to a second end of the siphon— shaped connecting passage, the second end
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`being located at a further outside position than the outermost position of the separating cavity.
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`Claim 10 further requires a liquid retaining connecting passage connected directly to both the
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`second end of the siphon—shaped connecting passage and the overflow cavity, and extending
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`toward an inner periphery of the rotary analyzing device”, it would appear these limitations are
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`

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`Application/Control Number: 15/941,836
`Art Unit: 1798
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`Page 7
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`taught. Nagaoka et al. teach, among other things, an overflow cavity (320) connected directly to
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`a second end of the siphon—shaped connecting passage (see Fig. 8 for example), the second end
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`being located at a further outside position than the outermost position of the separating cavity
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`(see Fig. 8 for example); and a liquid retaining connecting passage (221) connected directly to
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`both the second end of the siphon—shaped connecting passage and the overflow cavity, and
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`extending toward an inner periphery of the rotary analyzing device (see Fig. 8 for example).
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`Applicant is thanked for their thoughtful amendments to the claims.
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`Conclusion
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`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
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`examiner can normally be reached on M—TH, 5:30 am — 3:30 pm EST.
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`Examiner interviews are available via telephone, in—person, and video conferencing using
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`a USPTO supplied web—based collaboration tool. To schedule an interview, applicant is
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`encouraged to use the USPTO Automated Interview Request (AIR) at
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`http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, JILL A. WARDEN can be reached on (571) 272—1267. The fax phone number for
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`the organization where this application or proceeding is assigned is 571—273—8300.
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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
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`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`applications is available through Private PAIR only. For more information about the PAIR
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`

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`Application/Control Number: 15/941,836
`Art Unit: 1798
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`Page 8
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`system, see https://ppair—my.uspto.gov/pair/PrivatePair. Should you have questions on access to
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`the Private PAIR system, contact the Electronic Business Center (EBC) at 866—217—9197 (toll—
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`1000.
`
`/DEAN KWAK/
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`Primary Examiner, Art Unit 1798
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`DEAN KWAK
`
`Primary Examiner
`Art Unit 1798
`
`