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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`15/280,159
`
`09/29/2016
`
`Eriko Yoshioka
`
`WASH2-50934US1
`
`8671
`
`Pearne & Gordon LLP
`
`1801 East Ninth Street, Suite 1200
`Cleveland, OH 44114-3108
`
`MEKHLIN' ELI S
`
`PAPER NUMBER
`
`ART UNIT
`
`1721
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`02/01/2019
`
`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):
`
`patdoeket@pearne.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Off/09 A0170” Summary
`
`Application No.
`15/280,159
`Examiner
`ELI S MEKHLIN
`
`Applicant(s)
`Yoshioka et al.
`Art Unit
`1721
`
`AIA Status
`No
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 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 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).
`
`Status
`
`1). Responsive to communication(s) filed on 09/29/2016.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a)D This action is FINAL.
`
`2b)
`
`This action is non-final.
`
`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.
`
`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 Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)
`
`Claim(s) fl is/are pending in the application.
`
`5a) Of the above claim(s)
`
`is/are withdrawn from consideration.
`
`E] Claim(s)
`
`is/are allowed.
`
`Claim(s) fl is/are rejected.
`
`[:1 Claim(s) _ is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
`
`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabte. 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
`
`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10). The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 09/29/2016 is/are: a). accepted or b)[:] 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). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a). All
`
`b)D Some”
`
`C)D None of the:
`
`1.[:] Certified copies of the priority documents have been received.
`
`2.[:] Certified copies of the priority documents have been received in Application No.
`
`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)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) D Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20190129
`
`

`

`Application/Control Number: 15/280,159
`Art Unit: 1721
`
`Page 2
`
`DETAILED ACTION
`
`(1)
`
`The present application is being examined under the pre—AIA first to invent provisions.
`
`This is the first office action on the merits. Claims 1—4 are pending before the Office for review.
`
`(2)
`
`Information Disclosure Statement
`
`The listing of references in the specification is not a proper information disclosure
`
`statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information
`
`submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be
`
`incorporated into the specification but must be submitted in a separate paper." Therefore, unless
`
`the references have been cited by the examiner on form PTO—892, they have not been
`
`considered.
`
`(3)
`
`Specification
`
`The disclosure is objected to because of the following informalities:
`
`the specification
`
`should be amended to include the patent information for the parent case. Appropriate correction
`
`is required.
`
`(4)
`
`Claim Rejections - 35 USC § 112
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`(a) IN GENERAL—The specification shall contain a written description of the invention,
`and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to
`make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor
`of carrying out the invention.
`
`

`

`Application/Control Number: 15/280,159
`Art Unit: 1721
`
`Page 3
`
`The following is a quotation of the first paragraph of pre—AIA 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention, and of the manner and
`process of making and using it, in such full, clear, concise, and exact terms as to enable any person
`skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the
`same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
`
`Claims 1—4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre—AIA), first
`
`paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject
`
`matter which was not described in the specification in such a way as to enable one skilled in the
`
`art to which it pertains, or with which it is most nearly connected, to make and/or use the
`
`invention.
`
`There are many factors to consider when determining whether a disclosure does not
`
`satisfy the enablement requirement and whether under experimentation is necessary. The factors
`
`include, but are not limited to:
`
`(A)
`
`The breadth of the claims;
`
`The claimed invention and the specification contain similar language regarding the vital
`
`information measurement device and its components. Accordingly,
`
`there is parity between the
`
`specification and the claimed invention.
`
`(B)
`
`The nature of the invention;
`
`The claimed invention is directed toward a vital information measurement device having
`
`an input terminal connected to a biosensor, a voltage application section that applies a voltage to
`
`the input terminal, a measurement section that measures values based on a value of electric
`
`current flowing in the biosensor, a determination section, a control section and a display, wherein
`
`the device is operated to confirm whether abiosensor is usable. Specifically,
`
`the measurement
`
`section measures first and second values based on a value of the electric current flowing in the
`
`biosensor when voltage is applied thereto via the voltage application section through the input
`
`

`

`Application/Control Number: 15/280,159
`Art Unit: 1721
`
`Page 4
`
`terminal, the control section actuates the determination section to perform first and second
`
`determinations to determine whether the biosensor is usable by comparing the first and second
`
`measurement values to threshold values.
`
`(C)
`
`The state of the prior art;
`
`Okuda et al. (U.S. Publication No. 2004/0232009) teaches a vital information
`
`measurement device meeting the structural requirements of the claimed invention and further
`
`discloses how the components of the device interact with one another to perform measurement
`
`and calculation functions. Figures 1 and 5 and Paragraphs 42, 44, 48, 50, 53—55 and 60. The
`
`written description fails to describe how the claimed device executes its recited functions with a
`
`similar level of detail.
`
`(D)
`
`The level of one of ordinary skill;
`
`The level of one ordinarily skilled in the artis an individual having experience with
`
`biosensors and testing methodologies for determining whether the biosensor is in a useable state.
`
`(E)
`
`The level of pre dictability in the art;
`
`The predictability in the art is unclear. Vital information measurement devices and
`
`similar diagnostic systems are well—known in the art, it’s unclear whether the various
`
`permutations of components and how they are configured to perform diagnostic measurements is
`
`predictable .
`
`(F)
`
`The amount of direction provided by the inventor;
`
`The written description provides little substantive description regarding how the vital
`
`information measurement device of the claimed invention is obtained to perform the recited
`
`functions. Although the written description uses language found in the claimed invention,
`
`the
`
`substantive description of the vital information measurement device fails to provide any specific
`
`

`

`Application/Control Number: 15/280,159
`Art Unit: 1721
`
`Page 5
`
`instruction regarding the structure of the voltage application section, measurement section,
`
`determination section and control section. Specifically, although the written description refers to
`
`the voltage application section, measurement section, determination section and control section,
`
`the description fails to include any guidance regarding how these components are designed
`
`and/or built to obtain a vital measurement information device meeting the functional
`
`requirements of the claimed invention.
`
`(G)
`
`The e Xis tence of working e xample s; and
`
`The written description does not include a complete working example regarding how the
`
`vital information measurement device of the claimed invention is practiced. The written
`
`description, as noted above, refers to the voltage application section, measurement section,
`
`determination section and control section but fails to provide any examples regarding how the
`
`components of the measurement device are structured or otherwise designed to obtain the
`
`claimed device.
`
`(H)
`
`The quantity of experimentation needed to make 01‘ use the invention based
`
`on the content 0fthe disclosure.
`
`A complete analysis of the above—identified factors leads to a finding the claimed
`
`invention is not enabled. Although the claimed invention uses language found in the written
`
`description,
`
`the written description, as explained above, lacks any guidance and working
`
`examples regarding how the vital information measurement device of the claimed invention is
`
`practiced. The written description merely uses generic terminology for the device components
`
`without any underlying explanation or guidance regarding the structure of the components and
`
`device needed to practice the claimed invention. Therefore, claims 1—4 are rejected for lack of
`
`enablement.
`
`

`

`Application/Control Number: 15/280,159
`Art Unit: 1721
`
`Page 6
`
`(5)
`
`Claim Rejections - 35 USC § 112
`
`The following is aquotation 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.
`
`Claims 1—4 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.
`
`The claim limitations “voltage application section that applies voltage to the input
`
`terminal,” “measurement section that measurement a measurement value based on a value of
`
`electric current flowing in the biosensor,” “determination section” and “control section” invoke
`
`35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph. However, the written description
`
`fails to disclose the corresponding structure, material, or acts for performing the entire claimed
`
`function and to clearly link the structure, material, or acts to the function. Specifically, although
`
`the written description refers repeatedly to the voltage application section, measurement section,
`
`determination section and control section, the written description is devoid of any disclosure as
`
`to what structure performs the recited function. Therefore, the claim is indefinite and is rejected
`
`under 35 U.S.C. 112(b) or pre—AIA 35 U.S.C. 112, second paragraph.
`
`Applicant may:
`
`

`

`Application/Control Number: 15/280,159
`Art Unit: 1721
`
`Page 7
`
`(a)
`
`Amend the claim so that the claim limitation will no longer be interpreted as a limitation
`
`under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph;
`
`(b)
`
`Amend the written description of the specification such that it expressly recites what
`
`structure, material, or acts perform the entire claimed function, without introducing any
`
`new matter (35 U.S.C. 132(a)); or
`
`(c)
`
`Amend the written description of the specification such that it clearly links the structure,
`
`material, or acts disclosed therein to the function recited in the claim, without
`
`introducing
`
`any new matter (35 U.S.C. 132(a)).
`
`If applicant is of the opinion that the written description of the specification already
`
`implicitly or inherently discloses the corresponding structure, material, or acts and clearly links
`
`them to the function so that one of ordinary skill in the art would recognize what structure,
`
`material, or acts perform the claimed function, applicant should clarify the record by either:
`
`(a)
`
`Amending the written description of the specification such that it expressly recites the
`
`corresponding structure, material, or acts for performing the claimed function and clearly
`
`links or associates the structure, material, or acts to the claimed function, without
`
`introducing any new matter (35 U.S.C. 132(a)); or
`
`(b)
`
`Stating on the record what the corresponding structure, material, or acts, which are
`
`implicitly or inherently set forth in the written description of the specification, perform
`
`the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o)
`
`and 2181.
`
`Therefore, the claims are indefinite because their scope is unascertainable to one
`
`ordinarily skilled in the art.
`
`

`

`Application/Control Number: 15/280,159
`Art Unit: 1721
`
`Page 8
`
`(6)
`
`Claim Rejections - 35 USC § 102
`
`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 —
`
`(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.
`
`Claims 1—4 are rejected under pre—AIA 35 U.S.C. 102(b) as being anticipated by Okuda et
`
`al. (US. Publication No. 2004/0232009).
`
`With respect to claim 1, Okuda teaches a vital information measurement device (1)
`
`comprising an input terminal (31) to which a biosensor (2) is connected, a voltage application
`
`section (13) that applies voltage to the input terminal, a measurement section (14) that measures
`
`a measurement value based on a value of electric current flowing in the biosensor, a
`
`determination section in the form of a computation unit (16), a control section (10) and a display
`
`(17). Figure 1 and Paragraphs 42, 44, 48, 50 and 53—55.
`
`Examiner notes the remaining features of the claimed invention are intended use
`
`recitations that describe functions performed by the measurement section, control section and
`
`determination section, respectively. Any measurement section, control section and
`
`determination section meeting the requirements of the claimed invention are capable of the same
`
`use absent evidence to the contrary.
`
`In this case, Okada teaches the measurement section measures the response current when
`
`a voltage is applied to the input terminal and at least one of the counterpart electrodes, meaning
`
`the measurement section is capable of measuring first and second values based on a value of the
`
`electric current flowing in the biosensor when the voltage application section applies voltage to
`
`

`

`Application/Control Number: 15/280,159
`Art Unit: 1721
`
`Page 9
`
`the biosensor through the input terminal before a biological sample is supplied to the biosensor.
`
`Paragraph 50. Specifically,
`
`the current measurer would be able to ascertain, based on the
`
`measured current, whether a sample is or is not present in the biosensor because the current
`
`measurer is responsive to whether liquid conduction is or is not present. Paragraph 60.
`
`Okada also teaches the control section controls each of the units, which includes the
`
`determination section, and the determination section is responsive to analyze the data outputted
`
`by the current measurer, meaning the control section is capable of causing the determination
`
`section to perform determinations and the determination section is capable of making
`
`determinations. Figure 5 and Paragraphs 47 and 53. Specifically,
`
`the determination section
`
`disclosed by Okada is capable of both computing values and outputting data based on the
`
`computed values. Paragraph 53.
`
`With respect to claims 2, 3 and 4, Examiner notes the entirety of claims 2—4 are intended
`
`use recitations governing how the vital information measurement device responds to obtained
`
`data and the resulting message displayed by the display. Any vital measurement device meeting
`
`the structural requirements of the claimed invention is capable of the same use absent evidence
`
`to the contrary.
`
`In this case, Okada teaches the control section outputs information based on the
`
`obtained and calculated data, meaning it is capable of performing the intended use recitations of
`
`the claimed invention. Paragraph 54.
`
`(7)
`
`Claims 1—4 are rejected under pre—AIA 35 U.S.C. 102(b) as being anticipated by Morita et
`
`al. (U.S. Publication No. 2005/0067301).
`
`With respect to claim 1, Morita teaches a vital information measurement device (Figure
`
`1) comprising an input terminal (27a or 27b) to which a biosensor (2) is connected, a voltage
`
`

`

`Application/Control Number: 15/280,159
`Art Unit: 1721
`
`Page 10
`
`application section (41) that applies voltage to the input terminal, a measurement section (42)
`
`that measures a measurement value based on a value of electric current flowing in the biosensor,
`
`a determination section (44), a control section in the form of a processor (3) and a display (45).
`
`Figure 1 and Paragraphs 27, 32—34, 39 and 43.
`
`Examiner notes the remaining features of the claimed invention are intended use
`
`recitations that describe functions performed by the measurement section, control section and
`
`determination section, respectively. Any measurement section, control section and
`
`determination section meeting the requirements of the claimed invention are capable of the same
`
`use absent evidence to the contrary.
`
`In this case, Morita teaches the measurement section measures the response current when
`
`a voltage is applied to the input and output terminals, meaning the measurement section is
`
`capable of measuring first and second values based on a value of the electric current flowing in
`
`the biosensor when the voltage application section applies voltage to the biosensor through the
`
`input terminal before a biological sample is supplied to the biosensor. Paragraph 33.
`
`Morita also teaches the control section controls the determination section and the
`
`determination section is responsive to analyze the data outputted by the current measurer,
`
`meaning the control section is capable of causing the determination section to perform
`
`determinations and the determination section is capable of making determinations, such as
`
`whether the biosensor is proper. Paragraph 34. Specifically, Morita teaches the determination
`
`section is capable of making determinations based on values to determine whether the biosensor
`
`is proper. Figure 7.
`
`With respect to claims 2, 3 and 4, Examiner notes the entirety of claims 2—4 are intended
`
`use recitations governing how the vital information measurement device responds to obtained
`
`

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