DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/12/2026 has been entered.
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.
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, 6-10, and 12-21 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1, upon clams 2-4,6-10 and 12-17 ultimately depend, requires “a CO2 discharge channel open to the outside for allowing excess gaseous CO2 to escape” as well as “a pressure relief valve configured to temporarily open the storage container to the outside”.
Claim 18, upon clam 19 depends, requires “a storage container which is temporarily open via a valve” as well as “a CO2 discharge channel to the outside”.
While these two elements are discussed in the specification, they are not disclosed within the same embodiment nor are they disclosed as being combinable within the same embodiment. As such this combination of elements from separate embodiments are considered new matter as the specification has not reasonably conveyed that applicant had possession of an invention combining such elements in the manner claimed.
Claim 20, upon which clam 21 depends, requires “an incubation gas free of any fluid or fluidized incubation gas”. The specification as originally filed does not discuss the incubation gas being free of fluid. While the specification describes the gas being free of liquid not all fluids are liquid. Gas is a fluid and thus it is unclear how a gas can be free of fluid when it is itself a fluid. As such the claims include new matter.
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.
Claims 20-21 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 20, upon which clam 21 depends, requires “an incubation gas free of any fluid or fluidized incubation gas”. It is unclear how an incubation gas can be free of any fluid as gasses are fluids. As such the claims are rendered unclear.
Response to Arguments
Applicant's arguments 1/12/2026 filed have been fully considered but they are not persuasive.
In regards to applicant’s newly submitted drawings it is noted that the examiner no longer objects to such drawings and arguments related to such are moot.
Applicant argues that there is support for the claimed invention in the specification as originally filed. Applicant points to separate portions of the specification and notes that they teach the recited features. The examiner, as noted in the rejections above, pointed out that the specification as originally filed does in fact disclose both a CO2 discharge channel open to the outside as well as a pressure relief valve which opens the storage container temporarily. The examiner does not contend that these features are taught separately in the specification. The examiner notes that these are described in the specification as separate features and are not described as combinable in any single embodiment and one would have no reasonable expectation of success in combining such features in a single embodiment. This is because both elements, i.e. a CO2 discharge channel open to the outside as well as a pressure relief valve which opens the storage container to the outside temporarily, provide the same utility, i.e. removal of pressure due to sublimation of dry ice, from the storage container. In fact the examiner notes one of ordinary skill in the art would likely not provide both these features in a storage container as doing so only increases costs for no additional utility.
The examiner notes that applicant’s own arguments appear to show that these elements are not combined in a single embodiment. Applicant points to original claim 1 to show support. Original Claim 1 recites both features and reads “…a storage container (4) which open to the outside or temporarily open by means of a valve…” (emphasis added by examiner). The claims recite that a device should have one or the other of these elements. In other words the device has a discharge channel or a pressure relief valve but not both.
Original claim 11 requires “the storage container (4) includes a CO2 discharge channel (17) to the outside.” Claim 11 limits claim 1 such that it requires a specific form of opening to the outside, i.e. a discharge channel. It does not limit the embodiment where the device has a pressure relief valve. In other words claim 11 requires a storage container “open to the outside” by utilizing “a CO2 discharge channel” but does not require both a pressure relief valve and an open channel to the outside.
The examiner maintains that there is no teaching in the specification as originally filed which would lead one of ordinary skill in the art at the time of filling that applicant was in possession of a teaching of the use of both a CO2 discharge channel and a pressure relief valve within the same embodiment. The examiner notes that contrary to applicant’s arguments the specification appears to disclose that such elements are specifically envisioned to be utilized as non-combinable alternatives to one another.
Applicant also argues that “Applicant also submits that the specification is to be understood from the perspective of of a person skilled in the art, which in this case would, e.g., be somebody with a Bachelor degree in a subject like mechanical engineering or a person with vocational training in mechanical engineering. Such a person is familiar with how a "closed container" can be opened via a valve and how, via a valve, an "open container" can be closed. This person would understand that a container with a valve can, depending on whether the valve is open or closed considered an open or a closed container and how to close a previously open container via a valve or how open a previously closed container via a valve.”
While the examiner does not disagree that a person of ordinary skill in the art would be “somebody with a Bachelor degree in a subject like mechanical engineering or a person with vocational training in mechanical engineering” and that such a person would be familiar with how valve works. The issue is the specification clearly describes separate embodiments including a first embodiment utilizing a container always open to the outside via a hose and another separate embodiment utilizing a valve which may be open or closed, i.e. such as a pressure relief valve. There is no teaching of a single embodiment combining both of these at the same time.
The examiner maintains that one of ordinary skill in the art, i.e. “somebody with a Bachelor degree in a subject like mechanical engineering or a person with vocational training in mechanical engineering”, would not understand the specification to teach these two embodiments as combinable as the specification only refers to utilizing them in the alternative, (See Specification which recites “…a storage container that is open to the outside - i.e. to the ambient atmosphere - for example and in particular in the form of a styrofoam container, or in a styrofoam container that is temporarily open by means of a valve…” Emphasis added by examiner. Thus one would conclude that the device is to be provided with one alternative or the other but not both. The applicant has not provided any clear showing or teaching in the specification as originally filed that shows such elements are described combined or known to be combined in a single embodiment. As such the examiner maintains that these elements combined in a single embodiment represent new matter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN M HURST whose telephone number is (571)270-7065. The examiner can normally be reached on M-F 7AM-4PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Marcheschi can be reached on 571-272-1374. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHAN M HURST/ Primary Examiner, Art Unit 1799
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