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 .
Claim Interpretation
Regarding limitations recited in claims 15-16, 19, 23, 25-26, and 32, which are directed to a manner of operating the disclosed sample analyzer, it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See: MPEP § 2114 and 2115.
Claim Rejections - 35 USC § 112
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 1-2, 4, 9, 11-12, 15-16, 19, 23, 25-26, and 31-32 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 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01.
The omitted steps are: the last paragraph of the claim recites an incomplete conditional limitation (see: recited “if it is determined…” with no subsequent method step).
This is further inconsistent with the language of the other conditional limitations which positively recite a subsequent method step (see: lines 12-14 which recites “outputting the first measurement result”, if it is determined; and 15-20 which recites “preparing a second test sample solution…”, if it is determined.
Claims 2, 4, 9, 11-12, and 31 depend on claim 1.
Claim 15 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01.
The omitted steps are: the last paragraph of the claim recites an incomplete conditional limitation (see: recited “if it is determined…” with no subsequent steps the processor is configured to perform).
This is further inconsistent with the language of the other conditional limitations which positively recite a subsequent method step (see: lines 39-41 which recites “output the first measurement result”, if it is determined; and 41-48 which recites “instruct the sample preparation apparatus…”, if it is determined.
Claims 16, 19, 23, and 25-26 depend on claim 15.
Claim 32 recites the limitation "the sample analyzer of claim 1" in line 1. There is insufficient antecedent basis for this limitation in the claim. The Applicants are advised, amending the claim to depend on claim 15 is one way to resolve the indefiniteness issues.
Appropriate corrections are required.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-2, 4, 9, 11-12, 15-16, 19, 23, 25-26, and 31-32 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(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 nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J EOM whose telephone number is (571)270-7075. The examiner can normally be reached Monday-Friday (9:00AM-5:00PM).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander can be reached at 5712721254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J EOM/ Primary Examiner, Art Unit 1797
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