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
`
`15/941,836
`
`03/30/2018
`
`HirOShi SAIKI
`
`20249.0083USD2
`
`7094
`
`52835
`
`759°
`
`07/01/20”
`
`HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
`45 South Seventh Street
`Suite 2700
`
`Minneapolis, MN 55402-1683
`
`KWAK' DEAN P
`
`1798
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`07/01/2019
`
`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):
`PTOMai1@hsm1.eom
`
`PTOL-90A (Rev. 04/07)
`
`

`

`0/7709 A0170” Summary
`
`Application No.
`15/941,836
`Examiner
`DEAN KWAK
`
`Applicant(s)
`SAIKI, Hiroshi
`Art Unit
`1798
`
`AIA (FITF) 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 20 December 2018.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`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)
`
`10,21 and 23—25 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) 10,21 and 23—25 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). 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. 14692315.
`
`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) D 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 20190622
`
`

`

`Application/Control Number: 15/941,836
`Art Unit: 1798
`
`Page 2
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`DETAILED ACTION
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`Notice ofPre-AIA 0r AIA Status
`
`The present application is being examined under the pre—AIA first to invent provisions.
`
`Continued Examination Under 37 CFR 1.114
`
`A request for continued examination under 37 CFR l.ll4, including the fee set forth in
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`37 CFR l.l7(e), was filed in this application after final rejection. Since this application is
`
`eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR l.l7(e)
`
`has been timely paid, the finality of the previous Office action has been withdrawn pursuant to
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`37 CFR l.ll4. Applicant's submission filed on 12/20/2018 has been entered.
`
`Claim Rejections - 35 US C § 112
`
`The following is a quotation of 35 U.S.C. ll2(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. ll2 (pre—AIA), second paragraph:
`
`The specification shall conclude with one or more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`Claim 25 is rejected under 35 U.S.C. ll2(b) or 35 U.S.C. ll2 (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 25, the recitation “no air hole is formed in the connecting passage” is
`
`unclear since the passage (hole) could be used for air.
`
`

`

`Application/Control Number: 15/941,836
`Art Unit: 1798
`
`Page 3
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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.
`
`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
`
`relied upon, and the rationale supporting the rejection, would be the same under either status.
`
`The text of those sections of Title 35, US. Code not included in this action can be found
`
`in a prior Office action.
`
`Claim(s) 10, 21, 23-25 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
`
`0
`
`o
`
`a separating cavity (210/212);
`
`a measuring passage (214);
`
`a connecting passage (218) having a first end connected to a bottom of the
`
`separating cavity (210/212);
`
`0
`
`an overflow cavity (320) connected to a second end of the connecting passage
`
`(see 218 connected to 320 via 310/312 in Fig. 6 for example);
`
`0
`
`a liquid retaining connecting passage (221) extending from the second end of the
`
`connecting passage to which the overflow cavity320 is connected toward an inner
`
`periphery of the analyzing device (see Figs. 6 & 8 for example);
`
`0
`
`an opened—to—atmosphere cavity (220) connected to an outlet of the liquid
`
`retaining connecting passage (221); and
`
`0
`
`an air hole (222) disposed in the opened—to—atmosphere cavity (see Figs. 6 & 8 for
`
`example), allowing fluid communication between the open—to—atmosphere cavity
`
`

`

`Application/Control Number: 15/941,836
`Art Unit: 1798
`
`Page 4
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`and outside atmosphere (see i.e., “These vessels are connected to the atmosphere
`
`by perforating the cover above these vent holes” 11 0050).
`
`Regarding claims 10 & 21, the limitations “a separating cavity configured to separate the
`
`sample liquid into a solution component and a solid component by using the centrifugal force; a
`
`measuring passage configured to receive a portion of the solution component separated in the
`
`separating cavity and retain the portion of the solution component; a connecting passage having a
`
`first end connected to a bottom of the separating cavity, the connecting passage being configured
`
`to transfer the sample liquid of the separating cavity” & “the connecting passage is configured to
`
`transfer the solid component to the overflow cavity” do not further define structural
`
`configurations the device. It is noted that reciting a structure without identifying any structural
`
`differences between the structure in the claims and the structure disclosed in prior art does not
`
`further limit in an apparatus claim. Further, reciting "configured to" without identifying any
`
`structural differences between the structure in the claims and the structure disclosed in prior art
`
`does not further limit in an apparatus claim.
`
`With regard to limitations in claims 10 & 21 (e. g., “for separating the sample liquid into a
`77
`(L
`
`solution component and a solid component by using the centrifugal force
`
`...that receives a
`
`7
`
`portion of the solution component separated in the separating cavity and retains the portion of the
`77
`(L
`
`solution component
`
`...transfer the solid component to the overflow cavity”, etc), these claim
`
`7
`
`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.
`
`

`

`Application/Control Number: 15/941,836
`Art Unit: 1798
`
`Page 5
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`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 23—25, Nagaoka et al. further teach the analyzing device:
`
`0
`
`23.
`
`wherein a portion of the connecting passage (218) 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);
`
`0
`
`24.
`
`wherein the liquid retaining connecting passage (221) has an elongate
`
`body extending from an outer end to an inner end, with the outer end being
`
`located closer to an outer periphery of the analyzing device (see Fig. 8 for
`
`example),
`
`

`

`Application/Control Number: 15/941,836
`Art Unit: 1798
`
`Page 6
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`the outer end of the liquid retaining connecting passage having a radial location
`
`corresponding to a radial location of the second end of the connecting passage
`
`(see radial position 402 of the flow channel 221 in Fig. 8), and
`
`the opened—to—atmosphere cavity (220) with the air hole being disposed at the
`
`inner end of the liquid retaining connecting passage (see Fig. 8 for example); and
`
`25.
`
`wherein no air hole is formed in the connecting passage (see ‘J[ 0050 & Fig.
`
`8 for example).
`
`Claim(s) 10, 21 & 23-25 is/are rejected under pre-AIA 35 U.S.C. 102a as being
`
`anticipated by Saiki et al. (US 2009/0246082).
`
`Regarding claim 10, Saiki et al. teach an analyzing device comprising:
`
`a separating cavity (9) configured to separate the sample liquid into a solution
`
`component and a solid component by using the centrifugal force;
`
`a measuring passage (17) configured to receive a portion of the solution
`
`component separated in the separating cavity and retain the portion of the
`
`solution component;
`
`a connecting passage (1 l/l4) having a first end (14) connected to a bottom of the
`
`separating cavity (10), the connecting passage being configured to transfer the
`
`sample liquid of the separating cavity;
`
`an overflow cavity (15) connected to a second end (ll) of the connecting passage
`
`(see Fig. 22);
`
`

`

`Application/Control Number: 15/941,836
`Art Unit: 1798
`
`Page 7
`
`o
`
`a liquid retaining connecting passage (12) extending from the second end (11) of
`
`the connecting passage to which the overflow cavity (15) is connected toward an
`
`inner periphery of the analyzing device (see Fig. 22);
`
`0
`
`an opened—to—atmosphere cavity (13) connected to an outlet of the liquid retaining
`
`connecting passage (12); and
`
`0
`
`an air hole (19/20) disposed in the opened—to—atmosphere cavity (see Fig. 22),
`
`capable of allowing fluid communication between the open—to—atmosphere cavity
`
`and outside atmosphere (see ‘J[ 0085 for example).
`
`Regarding claims 10 & 21, the limitations “a separating cavity configured to separate the
`
`sample liquid into a solution component and a solid component by using the centrifugal force; a
`
`measuring passage configured to receive a portion of the solution component separated in the
`
`separating cavity and retain the portion of the solution component; a connecting passage having a
`
`first end connected to a bottom of the separating cavity, the connecting passage being configured
`
`to transfer the sample liquid of the separating cavity” & “the connecting passage is configured to
`
`transfer the solid component to the overflow cavity” do not further define structural
`
`configurations the device. It is noted that reciting a structure without identifying any structural
`
`differences between the structure in the claims and the structure disclosed in prior art does not
`
`further limit in an apparatus claim. Further, reciting "configured to" without identifying any
`
`structural differences between the structure in the claims and the structure disclosed in prior art
`
`does not further limit in an apparatus claim.
`
`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
`
`

`

`Application/Control Number: 15/941,836
`Art Unit: 1798
`
`Page 8
`
`solution component
`
`(L
`
`77
`
`7
`
`...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 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 23—25, Saiki et al. further teach the analyzing device:
`
`0
`
`23.
`
`wherein a portion of the connecting passage (1 1/ 14) extends outwardly
`
`toward an outer periphery of the analyzing device to the second end (see near
`
`junction 10/ 1 1), with the second end (11) of the connecting passage located
`
`

`

`Application/Control Number: 15/941,836
`Art Unit: 1798
`
`Page 9
`
`closer to the outer periphery of the analyzing device than the first end (14) of the
`
`connecting passage (see a portion of 11 is closer to the outer periphery than a
`
`portion of 14 in Fig .22);
`
`24.
`
`wherein the liquid retaining connecting passage (12) has an elongate body
`
`extending from an outer end (around junction 30) to an inner end (see Fig. 22),
`
`with the outer end being located closer to an outer periphery of the analyzing
`
`device (see Fig. 22),
`
`the outer end of the liquid retaining connecting passage (12) having a radial
`
`location corresponding to a radial location of the second end (11) of the
`
`connecting passage (see the channel 11 & junction 30 are radially located), and
`
`the opened—to—atmosphere cavity (13) with the air hole (19/20) being disposed at
`
`the inner end of the liquid retaining connecting passage (see Fig. 22); and
`
`25.
`
`wherein no air hole is formed in the connecting passage (see Fig. 22 for
`
`example).
`
`Response to Arguments
`
`Applicant's arguments filed 08/31/2018 have been fully considered but they are not
`
`persuasive.
`
`In response to the Applicant’s argument to the claim interpretation under 35 U.S.C. §
`
`112(f) as means—plus—function limitations, the claim limitations are no longer considered
`
`invoking 35 U.S.C. § 112(f) as a means—plus—function limitation. However, the claims must
`
`recite sufficient structure for performing the claimed function to preclude application of under 35
`
`U.S.C. § 112(f). It is noted that reciting a structure without identifying any structural differences
`
`

`

`Application/Control Number: 15/941,836
`Art Unit: 1798
`
`Page 10
`
`between the structure in the claims and the structure disclosed in prior art does not further limit
`
`in an apparatus claim. Further, reciting "configured to" without identifying any structural
`
`differences between the structure in the claims and the structure disclosed in prior art does not
`
`further limit in an apparatus claim.
`
`In response to the Applicant’s argument that Nagaoka et a1. fail to teach an opened—to—
`
`atmosphere cavity connected to an outlet of the liquid retaining connecting passage, as required
`
`by claim 10, Examiner disagrees. Nagaoka et al. teach, among other things, an opened—to—
`
`atmosphere cavity (220) connected to an outlet of the liquid retaining connecting passage (221);
`
`and an air hole (222) disposed in the opened—to—atmosphere cavity (see Figs. 6 & 8 for example),
`
`allowing fluid communication between the open—to—atmosphere cavity and outside atmosphere
`
`(see i.e., “These vessels are connected to the atmosphere by perforating the cover above these
`
`vent holes” 11 0050).
`
`In response to the Applicant’s argument that Saiki et a1. fail to disclose a liquid retaining
`
`connecting passage extending from the same second end of the connecting passage to which the
`
`overflow cavity connected toward an inner periphery of the analyzing device, as required by
`
`claim 10, Examiner disagrees. Examiner revised the rejection corresponding to the amended
`
`claims and Saiki et al. teach, among other things, an opened—to—atmosphere cavity (13) connected
`
`to an outlet of the liquid retaining connecting passage (12); and an air hole (19/20) disposed in
`
`the opened—to—atmosphere cavity (see Fig. 22), capable of allowing fluid communication between
`
`the open—to—atmosphere cavity and outside atmosphere (see ‘J[ 0085 for example).
`
`Applicant is thanked for their thoughtful amendments to the claims.
`
`

`

`Application/Control Number: 15/941,836
`Art Unit: 1798
`
`Page 11
`
`Conclusion
`
`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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`
`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
`
`