`
`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
`03/21/2014
`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
`
`03/21/2014
`
`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.
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`3736JOHN PANI first“
`
`-- 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 0137 CFR 1.136(a).
`after SIX (6) 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)IXI Responsive to communication(s) filed on 12/5/13.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|:| This action is non-final.
`2a)IZ| 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 C|aim(s) 1-4 10 11 22 and 23 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`
`1-4 10 11 22 and 23 is/are rejected.
`
`is/are objected to.
`
`
`
`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
` S
`htt
`://www.usoto. ov/ atents/init events) .h/index.‘
`
`
`
`
`
`, or send an inquiry to PF"I-Ifeedback{<‘buspto.qov.
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`11)|:I The drawing(s) filed on _ is/are: a)I:I 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)I:I 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)I:I 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.
`3.I:I Copies of the certified copies of the priority documents have been received in this National Stage
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`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 (PT0_413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`—
`4) I:I Other'
`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`
`Paper No(s)/Mai| Date .
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20140315
`
`

`

`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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`1.
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions.
`
`Election/Restrictions
`
`2.
`
`Upon further consideration, the Office is of the position that Species A and B, as
`
`denoted in the Restriction Requirement of 2/26/13, are obvious variants of each other,
`
`and thus the restriction requirement between these species has been withdrawn.
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`Accordingly, claim 2 has been examined herein.
`
`3.
`
`In view of the above noted withdrawal of the restriction requirement, applicant is
`
`advised that if any claim presented in a continuation or divisional application is
`
`anticipated by, or includes all the limitations of, a claim that is allowable in the present
`
`application, such claim may be subject to provisional statutory and/or nonstatutory
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`double patenting rejections over the claims of the instant application.
`
`Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are
`
`no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131 -32
`
`(CCPA 1971). See also MPEP § 804.01.
`
`Specification
`
`4.
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`The amendment to the Specification, particularly to the Title, filed 12/5/2013 has
`
`been accepted.
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`

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`Application/Control Number: 12/672,207
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`Page 3
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`Art Unit: 3736
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`Claim Interpretations - 35 USC § 1 12, Sixth Paragraph
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`5.
`
`The following is a quotation of 35 U.S.C. 112(f):
`
`(f) Element in Claim for a Combination. — An element in a claim for a combination may be
`expressed as a means or step for performing a specified function without the recital of
`structure, material, or acts in support thereof, and such claim shall be construed to cover the
`corresponding structure, material, or acts described in the specification and equivalents
`thereof.
`
`The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
`
`An element in a claim for a combination may be expressed as a means or step for performing
`a specified function without the recital of structure, material, or acts in support thereof, and
`such claim shall be construed to cover the corresponding structure, material, or acts
`described in the specification and equivalents thereof.
`
`6.
`
`Use of the word “means” (or “step for”) in a claim with functional language
`
`creates a rebuttable presumption that the claim element is to be treated in accordance
`
`with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that
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`§ 112(f) (pre-AIA § 112, sixth paragraph) is invoked is rebutted when the function is
`
`recited with sufficient structure, material, or acts within the claim itself to entirely perform
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`the recited function.
`
`Absence of the word “means” (or “step for”) in a claim creates a rebuttable
`
`presumption that the claim element is not to be treated in accordance with 35 U.S.C. §
`
`112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that § 112(f) (pre-AIA
`
`§ 112, sixth paragraph) is not invoked is rebutted when the claim element recites
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`function but fails to recite sufficiently definite structure, material or acts to perform that
`
`function.
`
`Claim elements in this application that use the word “means” (or “step for”) are
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`presumed to invoke § 112(f) except as otherwise indicated in an Office action.
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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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`Similarly, claim elements that do not use the word “means” (or “step for”) are presumed
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`not to invoke § 112(f) except as otherwise indicated in an Office action.
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`Claim limitation “puncturing unit” has/have been interpreted under 35 U.S.C.
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`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic
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`placeholder “unit” coupled with functional language “puncturing” and “to perform
`
`puncturing” without reciting sufficient structure to achieve the function. Furthermore, the
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`generic placeholder is not preceded by a structural modifier. The term “unit” has been
`
`found to be a non-structural term, and there is no evidence of record that one of
`
`ordinary skill in the art would understand the term “unit” to be the name for the structure
`
`that performs the function and which covers a broad class of structures or identifies the
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`structures by their function in the manner that terms like "screwdriver” and “brake” do.
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`See MPEP 2181 (l)(A). The term “puncturing” is clearly merely a function. No structure
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`other is claimed to define the “unit.”
`
`Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112,
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`sixth paragraph, claim(s) 1, 4, 10, 11, 22, and 23 has/have been interpreted to cover the
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`corresponding structure described in the specification that achieves the claimed
`
`function, and equivalents thereof.
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`A review of the specification shows that the following appears to be the
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`corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-
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`AIA 35 U.S.C. 112, sixth paragraph limitation: “laser puncturing unit 13" as structurally
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`detailed in paragraphs [0024-64]; “first needle puncturing unit 50" as structurally detailed
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`

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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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`in paragraphs [0065-0077]; and "second needle puncturing unit 51" as structurally
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`detailed in paragraphs [0078-0102].
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`If applicant wishes to provide further explanation or dispute the examiner’s
`
`interpretation of the corresponding structure, applicant must identify the corresponding
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`structure with reference to the specification by page and line number, and to the
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`drawing, if any, by reference characters in response to this Office action.
`
`If applicant does not intend to have the claim limitation(s) treated under 35
`
`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the
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`claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112,
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`sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient
`
`structure, material, or acts for performing the claimed function to preclude application of
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`35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
`
`For more information, see MPEP § 2173 et seq. and Supplementary Examination
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`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
`
`7.
`
`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.
`
`

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`Application/Control Number: 12/672,207
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`Page 6
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`Art Unit: 3736
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`8.
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`Claims 1-4, 10, 11, 22, and 23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C.
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`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.
`
`9.
`
`Regarding Claims 1-4I 10, 11I 22I and 23
`
`10.
`
`Lines 6-7 of claim 1 refer to “a remaining battery level measurer configured to
`
`measure a remaining level of the battery.” Lines 8-10 refer to “a power consumption
`
`measurer configured to measure electric power consumed by the battery for puncturing
`
`operation of the puncturing unit." The original disclosure does not use the term
`
`"measurer." Applicant has relied upon the amendment "to ensure that the claim
`
`limitations do not invoke 35 U.S.C. 112, sixth paragraph." Remarks at 8 filed 12/5/2013.
`
`The Office is unable to discern an ordinary and customary structural definition from the
`
`term based upon a review of the instant specification and the prior art. Furthermore, it
`
`is unclear how the term "measurer" is meaningfully distinct from the phrase "means for
`
`measuring,” as both phrases appear to broadly encompass any structure that could be
`
`used for measuring.
`
`11.
`
`Because it is not clear how the term “measurer” differs from a non-structural term
`
`such as “means for measuring,” there does not appear to be a clear cut indication of the
`
`scope of the subject matter covered by the claim. Nor does the language set forth well-
`
`defined boundaries of the invention; it merely states a problem solved or a result
`
`obtained, i.e. measuring “a remaining level of the battery” or "electric power consumed
`
`by the battery for puncturing operation of the puncturing unit.” This is evidenced by the
`
`

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`Application/Control Number: 12/672,207
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`Page 7
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`Art Unit: 3736
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`lack of evidence of an art recognized structure corresponding to the "measurer[s]", and
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`the fact that they are otherwise described entirely functionally. Nor would one of
`
`ordinary skill in the art know from the claim terms what structure(s) are encompassed by
`
`the claim, because although Applicant implies that "measurer" is a structure by
`
`asserting that its inclusion rebuts a presumption of invoking 35 USC 112, sixth
`
`paragraph, no art recognized meaning for that structure is apparent. Thus the claims
`
`are indefinite. See MPEP 2173.05(g).
`
`12.
`
`Lines 12-16 refer to "a remaining puncturing calculator configured to calculate a
`
`number of remaining puncturing operations that can be performed by the puncturing
`
`unit, based on the remaining level of the battery and an average of measurement result
`
`of past consumed electric power stored in the memory." Where applicant acts as his or
`
`her own lexicographer to specifically define a term of a claim contrary to its ordinary
`
`meaning, the written description must clearly redefine the claim term and set forth the
`
`uncommon definition so as to put one reasonably skilled in the art on notice that the
`
`applicant intended to so redefine that claim term. Process Control Corp. v. HydRec/aim
`
`Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999).
`
`13.
`
`The term “calculator” in claim 1
`
`is used by the claim to mean “a computer that
`
`automatically calculates something according to a programmed algorithm” or something
`
`similar, while the accepted meaning is “a small electronic or mechanical device that
`
`performs calculations, requiring manual action for each individual operation.” See
`
`"calculator." Dictionary.com Unabridged. Random House, Inc. 15 Mar. 2014.
`
`

`

`Application/Control Number: 12/672,207
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`Page 8
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`Art Unit: 3736
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`<Dictionary.com http://dictionary.reference.com/browse/calculator>. The term is
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`indefinite because the specification does not clearly redefine the term.
`
`14.
`
`Regarding Claim 11
`
`15.
`
`Lines 3-4 refer to “a negative pressure applier configured to apply a negative
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`pressure.” The original disclosure does not use the term "applier." Applicant has relied
`
`upon the amendment "to ensure that the claim limitations do not invoke 35 U.S.C. 112,
`
`sixth paragraph." Remarks at 8 filed 12/5/2013. The Office is unable to discern an
`
`ordinary and customary structural definition from the term based upon a review of the
`
`instant specification and the prior art. Furthermore, it is unclear how the term "applier"
`
`is meaningfully distinct from the phrase "means for applying,” as both phrases appear to
`
`broadly encompass any structure that could be used for applying.
`
`16.
`
`Because it is not clear how the term “applier” differs from a non-structural term
`
`such as “means for applying,” there does not appear to be a clear cut indication of the
`
`scope of the subject matter covered by the claim. Nor does the language set forth well-
`
`defined boundaries of the invention; it merely states a problem solved or a result
`
`obtained, i.e. applying a negative pressure This is evidenced by the lack of evidence of
`
`an art recognized structure corresponding to the "applier", and the fact that it is
`
`otherwise described entirely functionally. Nor would one of ordinary skill in the art know
`
`from the claim terms what structure(s) are encompassed by the claim, because
`
`although Applicant implies that "applier" is a structure by asserting that its inclusion
`
`rebuts a presumption of invoking 35 USC 112, sixth paragraph, no art recognized
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`

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`Application/Control Number: 12/672,207
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`Page 9
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`Art Unit: 3736
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`meaning for that structure is apparent. Thus the claims are indefinite. See MPEP
`
`2173.05(g).
`
`17.
`
`Regarding Claim 23
`
`18.
`
`Lines 2-4 require “a remaining blood test calculator configured to calculate a
`
`number of remaining blood tests, based on the remaining level of the battery and the
`
`consumed electric power that have been measured.” Where applicant acts as his or her
`
`own lexicographer to specifically define a term of a claim contrary to its ordinary
`
`meaning, the written description must clearly redefine the claim term and set forth the
`
`uncommon definition so as to put one reasonably skilled in the art on notice that the
`
`applicant intended to so redefine that claim term. Process Control Corp. v. HydRec/aim
`
`Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999).
`
`19.
`
`The term “calculator” in claim 23 is used by the claim to mean “a computer that
`
`automatically calculates something according to a programmed algorithm” or something
`
`similar, while the accepted meaning is “a small electronic or mechanical device that
`
`performs calculations, requiring manual action for each individual operation.” See
`
`"calculator." Dictionary.com Unabridged. Random House, Inc. 15 Mar. 2014.
`
`<Dictionary.com http://dictionary.reference.com/browse/calculator>. The term is
`
`indefinite because the specification does not clearly redefine the term.
`
`20.
`
`Lines 5-6 recite "the display informs of the number of remaining blood tests
`
`calculated by the remaining blood test calculator." The claim thus includes both an
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`apparatus and method steps of using the apparatus, and is thus indefinite, because it is
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`unclear when direct infringement occurs, when one creates a system that can inform of
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`

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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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`the number of remaining blood tests, or when the device actually informs. See MPEP
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`2173.05(p).
`
`Claim Rejections - 35 USC § 102
`
`21.
`
`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.
`
`22.
`
`Claims 1, 2, 4, 10, and 22 are are rejected under pre-AIA 35 U.S.C. 102(a) as
`
`being anticipated by WO 2007/108515 A1 to Fujiwara et al. (“Fujiwara ‘515”).
`
`23.
`
`Please note that US 2009/0318834 to Fujiwara et al., being a publication of the
`
`national entry of the international application PCT/JP2007/055916 upon which Fujiwara
`
`‘515 is based, has been treated as an English translation of Fujiwara ‘515. Accordingly,
`
`references below are made to the US publication of Fujiwara ‘515.
`
`24.
`
`Fujiwara ‘515 discloses:
`
`25.
`
`Regarding Claim 1
`
`26.
`
`A puncturing apparatus (see full disclosure, particularly [0312-0374]) comprising:
`
`a housing (e.g. 32, 38); a puncturing unit (e.g. 33) that is provided in the housing and
`
`configured to perform puncturing (see Fig. 2 and full disclosure); a battery (35, 210,
`
`210a, etc.) configured to supply power to the puncturing section; a remaining battery
`
`level measurer (e.g. 212) configured to measure a remaining level of the battery (see
`
`[0318] and [0312-0374]); a power consumption measurer configured to measure electric
`
`

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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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`power consumed by the battery for puncturing operation of the puncturing unit (see
`
`[0321], [0341], [0348], [0353]); a memory configured to store a measurement result of
`
`the consumed electric power (see [0321]; “the latest data of the battery power
`
`consumption consumed in the test is stored”); a remaining puncturing calculator (203)
`
`configured to calculate a number of remaining puncturing operations that can be
`
`performed by the puncturing unit, based on the remaining level of the battery and an
`
`average of measurement result of past consumed electric power stored in the memory
`
`(note that the device determines the number of remaining puncturing operations, i.e.
`
`greater than the predetermined number, less than the predetermined number, less than
`
`one, etc., by comparing the remaining battery level to thresholds, and at least one of the
`
`thresholds, i.e. "the second battery level threshold" is based upon an average of
`
`measurement result of past consumed electric power stored in the memory, because
`
`the average of a set of one measurement is that measurement; see [0312-0374]); and a
`
`display (“display section”) configured to inform of the number of remaining puncturing
`
`operations calculated by the remaining puncturing calculator (see [0339], [0344], [0345],
`
`[0350], [0371-0373], etc.).
`
`27.
`
`Regarding Claim 2
`
`28.
`
`The puncturing apparatus according to claim 1 (see above) wherein the
`
`puncturing unit is a laser emitting device configured to perform puncturing with laser
`
`light (see [0106-0115]).
`
`29.
`
`Regarding Claim 4
`
`

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`Application/Control Number: 12/672,207
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`Page 12
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`Art Unit: 3736
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`30.
`
`The puncturing apparatus according to claim 1 (see above) wherein the power
`
`consumption measurer is configured to measure electric power consumed by one
`
`puncturing operation (see [0341], [0348], [0353]).
`
`31.
`
`Regarding Claim 10
`
`32.
`
`The puncturing apparatus according to claim 1 (see above) further comprising a
`
`controller (“power supply control circuit”) configured to control
`
`to prohibit the puncturing
`
`unit from puncturing when the number of remaining puncturing operations calculated by
`
`the remaining puncturing calculator is equal to or less than a predetermined value (see
`
`[0312-0374]).
`
`33.
`
`Regarding Claim 22
`
`34.
`
`The puncturing apparatus according to claim 1 (see above), further comprising: a
`
`blood test circuit configured to measure a glucose level of blood (see [0116-0209]).
`
`35.
`
`Claims 1, 2, 4, 10, and 22 are rejected under pre-AIA 35 U.S.C. 102(a) as being
`
`anticipated by WO 2007/108518 A1 to Fujiwara et al. (“Fujiwara ‘518”).
`
`36.
`
`Please note that US 2010/0262039 to Fujiwara et al., being a publication of the
`
`national entry of the international application PCT/JP2007/055919 upon which Fujiwara
`
`‘518 is based, has been treated as an English translation of Fujiwara ‘518. Accordingly,
`
`references below are made to the US publication of Fujiwara ‘518.
`
`37.
`
`Fujiwara ‘518 discloses:
`
`38.
`
`Regarding Claim 1
`
`

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`Application/Control Number: 12/672,207
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`Page 13
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`Art Unit: 3736
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`39.
`
`A puncturing apparatus (see full disclosure, particularly [0347-0447]) comprising:
`
`a housing (e.g. 32, 38); a puncturing unit (e.g. 33) that is provided in the housing and
`
`configured to perform puncturing (see Fig. 2 and full disclosure); a battery (35, 210,
`
`210a, etc.) configured to supply power to the puncturing section; a remaining battery
`
`level measurer (e.g. 212) configured to measure a remaining level of the battery (see
`
`[0356] and [0347-0447]); a power consumption measurer configured to measure electric
`
`power consumed by the battery for puncturing operation of the puncturing unit (see
`
`[0360], [0390], [0401], [0412]); a remaining puncturing calculator (203) configured to
`
`calculate a number of remaining puncturing operations that can be performed by the
`
`puncturing unit, based on the remaining level of the battery and an average of
`
`measurement result of past consumed electric power stored in the memory (note that
`
`the device determines the number of remaining puncturing operations, i.e. greater than
`
`the predetermined number, less than the predetermined number, less than one, etc., by
`
`comparing the remaining battery level to thresholds, and at least one of the thresholds,
`
`i.e. "the second battery level threshold" is based upon an average of measurement
`
`result of past consumed electric power stored in the memory, because the average of a
`
`set of one measurement is that measurement; see [0312-0374]); and a display (“display
`
`section”) configured to inform of the number of remaining puncturing operations
`
`calculated by the remaining puncturing calculation section (see [0387-0389], [0395],
`
`[0397], [0399], [0406], [0407], [0412], [0442], [0443], [0446]).
`
`40.
`
`Regarding Claim 2
`
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`41.
`
`The puncturing apparatus according to claim 1 (see above) wherein the
`
`puncturing unit is a laser emitting device configured to perform puncturing with laser
`
`light (see [0106-0115]).
`
`42.
`
`Regarding Claim 4
`
`43.
`
`The puncturing apparatus according to claim 1 (see above) wherein the power
`
`consumption measurer is configured to measure electric power consumed by one
`
`puncturing operation (see [0360], [0390], [0401], [0412]).
`
`44.
`
`Regarding Claim 10
`
`45.
`
`The puncturing apparatus according to claim 1 (see above) further comprising a
`
`controller (“power supply control circuit”) configured to perform control to prohibit the
`
`puncturing unit from puncturing when the number of remaining puncturing operations
`
`calculated by the remaining puncturing calculator is equal to or less than a
`
`predetermined value (see [0347-0447]).
`
`46.
`
`Regarding Claim 22
`
`47.
`
`The puncturing apparatus according to claim 1 (see above), further comprising: a
`
`blood test circuit configured to measure a glucose level of blood (see [0119-0302]).
`
`48.
`
`Claims 1, 2, 4, 10, and 22 are rejected under pre-AIA 35 U.S.C. 102(a) as being
`
`anticipated by WO 2007/108517 A1 to Matsumoto et al. (“Matsumoto”).
`
`49.
`
`Please note that US 2010/0168534 to Fujiwara et al., being a publication of the
`
`national entry of the international application PCT/JP2007/055918 upon which
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`Matsumoto is based, has been treated as an English translation of Matsumoto.
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`Accordingly, references below are made to the US publication of Matsumoto.
`
`50.
`
`Regarding Claims 1, 2, 4, 10, and 22
`
`51. Matsumoto's disclosure directed towards the "Power Supply Control” (see [0319-
`
`0384]) and “The Blood Sensor” (see [0119-0216]) is substantially identical to that found
`
`in Fujiwara ‘515 and Fujiwara ‘518, and claims 1, 2, 4, 10, and 22 are anticipated by
`
`Matsumoto in a substantially similar manner as disclosed in the rejections based upon
`
`Fujiwara ‘515 and Fujiwara ‘518.
`
`Claim Rejections - 35 USC § 103
`
`52.
`
`The following is a quotation of pre-AlA 35 U.S.C. 103(a) which forms the basis
`
`for all obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102 of this title, if the differences between the subject matter sought to
`be patented and the prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains. Patentability shall not be negatived by the manner in which the
`invention was made.
`
`53.
`
`This application currently names joint inventors. In considering patentability of the
`
`claims under pre-AlA 35 U.S.C. 103(a), the examiner presumes that the subject matter
`
`of the various claims was commonly owned at the time any inventions covered therein
`
`were made absent any evidence to the contrary. Applicant is advised of the obligation
`
`under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was
`
`not commonly owned at the time a later invention was made in order for the examiner to
`
`consider the applicability of pre-AlA 35 U.S.C. 103(c) and potential pre-AlA 35 U.S.C.
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`102(e), (f) or (g) prior art under pre-AlA 35 U.S.C. 103(a).
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`54.
`
`Claim 11 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
`
`Fujiwara ‘515 as applied to claim 1 above.
`
`55.
`
`Fujiwara ‘515 discloses the apparatus of claim 1 (see above) and a negative
`
`pressure applier (34) configured to apply a negative pressure to the skin during a
`
`measurement (see e.g. Fig. 16), and that the power consumption measurer is
`
`configured to measure the power consumed during a puncture and a measurement (see
`
`e.g. Figs. 50-53). Although Fujiwara ‘515 does not explicitly disclose that the power
`
`consumption measuring section measures the power consumed by the negative
`
`pressure section, one of ordinary skill in the art would have found it obvious to include
`
`this feature, because the negative pressure application is part of the measurement
`
`performance.
`
`56.
`
`Claim 11 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
`
`Fujiwara ‘518 as applied to claim 1 above.
`
`57.
`
`Fujiwara ‘518 discloses the apparatus of claim 1 (see above) and a negative
`
`pressure applier (34) configured to apply a negative pressure to the skin during a
`
`measurement (see e.g. Fig. 16), and that the power consumption measurer is
`
`configured to measure the power consumed during a puncture and a measurement (see
`
`e.g. Figs. 50-53). Although Fujiwara ‘515 does not explicitly disclose that the power
`
`consumption measuring section measures the power consumed by the negative
`
`pressure section, one of ordinary skill in the art would have found it obvious to include
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`this feature, because the negative pressure application is part of the measurement
`
`performance.
`
`58.
`
`Claim 11 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
`
`Matsumoto as applied to claim 1 above.
`
`59. Matsumoto discloses the apparatus of claim 1 (see above) and a negative
`
`pressure applier (34) configured to apply a negative pressure to the skin during a
`
`measurement (see e.g. Fig. 16), and that the power consumption measurer is
`
`configured to measure the power consumed during a puncture and a measurement (see
`
`e.g. Figs. 50-53). Although Fujiwara ‘515 does not explicitly disclose that the power
`
`consumption measuring section measures the power consumed by the negative
`
`pressure section, one of ordinary skill in the art would have found it obvious to include
`
`this feature, because the negative pressure application is part of the measurement
`
`performance.
`
`60.
`
`Claim 23 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
`
`Fujiwara ‘515 as applied to claim 22 above, and further in view of Rasch-Menges.
`
`61.
`
`Fujiwara ‘515 discloses the apparatus of claim 23 (see above), but does not
`
`explicitly disclose a remaining blood test calculator configured to calculate a number of
`
`remaining blood tests, based on the remaining level of the battery and the consumed
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`electric power that have been measured, wherein the display informs of the number of
`
`remaining blood tests calculated by the remaining blood test calculator.
`
`62.
`
`Rasch-Menges discloses a remaining blood test calculator configured to
`
`calculate a number of remaining blood tests, based on the remaining level of the battery
`
`and a consumed electric power, wherein the display informs of the number of remaining
`
`blood tests calculated by the remaining blood test calculator, because it is important for
`
`a diabetic to have reliable access to blood glucose testing (see [0027-0040]).
`
`It would
`
`have been obvious to one having ordinary skill in the art at the time of the invention to
`
`have modified Fujiwara '515 by including a remaining blood test calculator configure to
`
`calculate a number of remaining blood tests, based on the remaining level of the battery
`
`and a consumed electric power, wherein the display informs of the number of remaining
`
`blood tes