www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`
`15/941,836
`
`03/30/2018
`
`HirOShi SAIKI
`
`20249.0083USD2
`
`7094
`
`52835
`
`759°
`
`08/31/2018
`
`HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
`45 South Seventh Street
`Suite 2700
`
`MINNEAPOLIS, MN 55402-1683
`
`KWAK' DEAN P
`
`PAPER NUMBER
`
`ART UNIT
`1798
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`08/31/2018
`
`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):
`PTOMail@hsml.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Off/09 A0170” Summary
`
`Application No.
`15/941,836
`Examiner
`DEAN KWAK
`
`Applicant(s)
`SAIKI, Hiroshi
`Art Unit
`1798
`
`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 07 August 2018.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a). This action is FINAL.
`
`2b) C] 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)
`
`10 and 21—23 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) 10 and 21—23 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 aflowabie. 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 30 March 2018 is/are: a). accepted or b)C] 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)I:I 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) C] Notice of References Cited (PTO-892)
`
`2) E] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20180824
`
`

`

`Application/Control Number: 15/941,836
`Art Unit: 1798
`
`Page 2
`
`DETAILED ACTION
`
`Notice ofPre-AIA 0r AIA Status
`
`The present application is being examined under the pre—AIA first to invent provisions.
`
`Claim Rejections - 35 US C § 112
`
`The following is a quotation of 35 U.S.C. 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 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 10 & 21—23 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.
`
`Regarding claim 10, the claimed elements “second end of the connecting passage” &
`
`“outlet of the connecting passage” are unclear the claimed elements’ positions in reference to the
`
`first end of the connecting passage.
`
`Is the second end of the connecting passage the opposite end
`
`of the first end of the connecting passage & the outlet of the connecting passage in—between the
`
`first end & the second end?
`
`Claim Interpretation
`
`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.
`
`

`

`Application/Control Number: 15/941,836
`Art Unit: 1798
`
`Page 3
`
`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.
`
`The claims in this application are given their broadest reasonable interpretation using the
`
`plain meaning of the claim language in light of the specification as it would be understood by
`
`one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also
`
`commonly referred to as a claim limitation) is limited by the description in the specification
`
`when 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph, is invoked.
`
`As explained in MPEP § 2181, subsection 1, claim limitations that meet the following
`
`three—prong test will be interpreted under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth
`
`paragraph:
`
`(A)
`
`the claim limitation uses the term “means” or “step” or a term used as a substitute for
`
`“means” that is a generic placeholder (also called a nonce term or a non—structural term
`
`having no specific structural meaning) for performing the claimed function;
`
`(B)
`
`the term “means” or “step” or the generic placeholder is modified by functional language,
`
`typically, but not always linked by the transition word “for” (eg, “means for”) or another
`
`linking word or phrase, such as “configured to” or “so that”; and
`
`(C)
`
`the term “means” or “step” or the generic placeholder is not modified by sufficient
`
`structure, material, or acts for performing the claimed function.
`
`Use of the word “means” (or “step”) in a claim with functional language creates a
`
`rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C.
`
`112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is
`
`

`

`Application/Control Number: 15/941,836
`Art Unit: 1798
`
`Page 4
`
`interpreted under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph, is rebutted when
`
`the claim limitation recites sufficient structure, material, or acts to entirely perform the recited
`
`function.
`
`Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that
`
`the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre—AIA 35
`
`U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under
`
`35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim
`
`limitation recites function without reciting sufficient structure, material or acts to entirely
`
`perform the recited function.
`
`Claim limitations in this application that use the word “means” (or “step”) are being
`
`interpreted under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph, except as
`
`otherwise indicated in an Office action. Conversely, claim limitations in this application that do
`
`not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre—
`
`AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
`
`Claim limitation “configured to...” has been evaluated under the three—prong test set forth
`
`in MPEP § 2181, subsection 1, but the result is inconclusive. Thus, it is unclear whether this
`
`limitation should be interpreted under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth
`
`paragraph, because the claim limitation uses the word “means” or a generic placeholder coupled
`
`with functional language, but it is modified by some structure or material that is ambiguous
`
`regarding whether that structure or material is sufficient for performing the claimed function.
`
`The boundaries of this claim limitation are ambiguous; 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.
`
`

`

`Application/Control Number: 15/941,836
`Art Unit: 1798
`
`Page 5
`
`In response to this rejection, applicant must clarify whether this limitation should be
`
`interpreted under 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth paragraph. Mere assertion
`
`regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112,
`
`sixth paragraph is insufficient. Applicant may:
`
`(a)
`
`Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth
`
`paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.”
`
`The “means,” generic placeholder, or “step” must be modified by functional language,
`
`and must not be modified by sufficient structure, material, or acts for performing the
`
`claimed function;
`
`(b)
`
`Present a sufficient showing that 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth
`
`paragraph, should apply because the claim limitation recites a function to be performed
`
`and does not recite sufficient structure, material, or acts to perform that function;
`
`(C)
`
`Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112,
`
`sixth paragraph, by deleting the function or by reciting sufficient structure, material or
`
`acts to perform the recited function; or
`
`(d)
`
`Present a sufficient showing that 35 U.S.C. 112(f) or pre—AIA 35 U.S.C. 112, sixth
`
`paragraph, does not apply because the limitation does not recite a function or does recite
`
`a function along with sufficient structure, material or acts to perform that function.
`
`Claim Rejections - 35 US C § 102
`
`In the event the determination of the status of the application as subject to AIA 35 U.S.C.
`
`102 and 103 (or as subject to pre—AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the
`
`

`

`Application/Control Number: 15/941,836
`Art Unit: 1798
`
`Page 6
`
`statutory basis for the rejection will not be considered a new ground of rejection if the prior art
`
`relied upon, and the rationale supporting the rejection, would be the same under either status.
`
`The text of those sections of Title 35, U.S. Code not included in this action can be found
`
`in a prior Office action.
`
`Claim(s) 10 & 21-23 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) having a first end connected to a bottom of the
`
`separating cavity (210);
`
`0
`
`an overflow cavity (320) connected to a second end of the connecting passage
`
`(see Fig. 6 for example); and
`
`o
`
`a liquid retaining connecting passage (221) provided from an outlet of the
`
`connecting passage (e. g., near the mixing vessel inlet 311 in Fig. 8) toward an
`
`inner periphery of the analyzing device (see Figs. 6 & 8 for example).
`
`With regard to limitations in claims 10, 21 (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
`77
`(L
`
`solution component
`
`...configured to transfer the solid component to the overflow cavity”,
`
`7
`
`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
`
`

`

`Application/Control Number: 15/941,836
`Art Unit: 1798
`
`Page 7
`
`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 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).
`
`Regarding claims 22 & 23, Nagaoka et al. further teach the analyzing device:
`
`0
`
`22.
`
`wherein the outlet of the connecting passage is located at the second end
`
`of the connecting passage (see Fig. 8); and
`
`o
`
`23.
`
`wherein a portion of the connecting passage extends outwardly toward an
`
`outer periphery of the analyzing device to the second end (see Fig. 8), with the
`
`second end of the connecting passage located closer to the outer periphery of the
`
`analyzing device than the first end of the connecting passage (see Fig. 8 for
`
`example).
`
`

`

`Application/Control Number: 15/941,836
`Art Unit: 1798
`
`Page 8
`
`Claim(s) 10 & 21-23 is/are rejected under pre-AIA 35 U.S.C. 1023 as being
`
`anticipated by Saiki et al. (US 2009/0246082).
`
`Regarding claim 10, Saiki et al. teach an analyzing device comprising:
`
`0
`
`o
`
`o
`
`a separating cavity (23);
`
`a measuring passage (9);
`
`a connecting passage having a first end (26) connected to a bottom of the
`
`separating cavity (see Fig. 22);
`
`0
`
`an overflow cavity (10) connected to a second end (11) of the connecting passage
`
`(see Fig. 22); and
`
`o
`
`a liquid retaining connecting passage (36) provided from an outlet of the
`
`connecting passage (10) toward an inner periphery of the analyzing device (see
`
`Fig. 22 for example).
`
`With regard to limitations in claims 10, 21 (6g, “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”, “. .
`
`. configured to transfer the solid component to the overflow cavity”,
`
`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
`
`

`

`Application/Control Number: 15/941,836
`Art Unit: 1798
`
`Page 9
`
`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).
`
`Regarding claims 22 & 23, Saiki et al. further teach the analyzing device:
`
`0
`
`22.
`
`wherein the outlet of the connecting passage (10) is located at the second
`
`end (11) of the connecting passage (see Fig. 22); and
`
`o
`
`23.
`
`wherein a portion of the connecting passage extends outwardly toward an
`
`outer periphery of the analyzing device to the second end (see Fig. 22), with the
`
`second end of the connecting passage (11) located closer to the outer periphery of
`
`the analyzing device than the first end (26) of the connecting passage (see Fig. 22
`
`for example).
`
`Response to Arguments
`
`Applicant's arguments filed 08/07/2018 have been fully considered but they are not
`
`persuasive.
`
`

`

`Application/Control Number: 15/941,836
`Art Unit: 1798
`
`Page 10
`
`In response to the Applicant’s argument to that the references fail to teach a liquid
`
`retaining connecting passage provided from an outlet of the connecting passage toward an inner
`
`periphery of the analyzing device, the rejections have been revised to address the amendments.
`
`Nagaoka et al. teach, among other things, a liquid retaining connecting passage (221) provided
`
`from an outlet of the connecting passage (e. g., near the mixing vessel inlet 3 11 in Fig. 8) toward
`
`an inner periphery of the analyzing device (see Figs. 6 & 8 for example). Saiki et al. teach,
`
`among other things, a liquid retaining connecting passage (36) provided from an outlet of the
`
`connecting passage (10) toward an inner periphery of the analyzing device (see Fig. 22 for
`
`example).
`
`Applicant is thanked for their thoughtful amendments to the claims.
`
`Conclusion
`
`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
`
`policy as set forth in 37 CFR l.l36(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE
`
`MONTHS from the mailing date of this action. In the event a first reply is filed within TWO
`
`MONTHS of the mailing date of this final action and the advisory action is not mailed until after
`
`the end of the THREE—MONTH shortened statutory period, then the shortened statutory period
`
`will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
`
`CFR l.l36(a) will be calculated from the mailing date of the advisory action. In no event,
`
`however, will the statutory period for reply expire later than SIX MONTHS from the mailing
`
`date of this final action.
`
`

`

`Application/Control Number: 15/941,836
`Art Unit: 1798
`
`Page 11
`
`Any inquiry concerning this communication or earlier communications from the
`
`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 organization where this application or proceeding is assigned is 571—273—8300.
`
`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
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`system, see http://pair—direct.uspto.gov. Should you have questions on access to the Private PAIR
`
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`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
`
`DEAN KWAK
`
`Primary Examiner
`Art Unit 1798
`
`