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 .
Remarks
This office action fully acknowledges Applicant’s remarks and amendments filed on 13 April 2026.
Claims 1-7 and 9-18 are pending.
Claim 8 is canceled.
No claims are withdrawn.
No claims are newly added.
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.
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 I, 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” (e.g., “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 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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitation(s) is/are:
“a pipette insertion position regulating portion that defines an insertion position”, as in Claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
***No corresponding structure is present within Applicant’s disclosure. See the 35 USC 112 section below.***
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-7 and 9-18 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 recites “a pipette insertion position regulating portion that defines an insertion position” which is interpreted under 35 USC 112f as a generic placeholder “portion” appended with function “defines an insertion position”. However, the corresponding structure to the generic “portion” placeholder does not appear to be present within Applicant’s disclosure, rendering the metes and bounds of the “portion that defines an insertion position" indefinite. Appropriate clarification is required.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-7 and 9-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Umetsu et al. (WO 2017/082195 A1), referred to herein as “Umetsu,” as seen through the international search report for PCT/JP20/029378 and the machine-translation available at Google Patents.
Regarding Claim 1, Umetsu teaches a reagent cartridge ([0013]) used for an analysis apparatus that analyzes a result based on a reaction of a sample and a reagent;
the reagent cartridge comprising:
a top surface (Fig. 2 shows the wells 6a/6b extending as a depth from a top surface.); and
a sample containing part 6a/6b that contains the sample (Fig. 2 shows sample wells 6a/6b and Fig. 4 shows the sample wells are filled with sample via a syringe. – Umetsu Claims 1 and 13: “A cartridge used to measure a component to be measured contained in a liquid, wherein a concave well for storing the liquid is formed…wherein the liquid is a specimen or a reagent.),
wherein the sample containing part includes an injection region and a liquid suction region (Fig. 3b shows upper space 8b above the inclined peripheral wall 8a (the injection part) and a space above the flat wall portion 9d (the fluid suction part) in all that is discussed given that [0011] of the instant specification describes the liquid suction part merely as “formed in a lower end of the injection part, and the inclined surface is continuous with the liquid suction part via a side surface of the liquid suction part.” and [0025] states “since the sample containing part includes the injection part and the liquid suction part, the injection and liquid suction of the sample can be performed at separate locations” further implying that the liquid suction part is not creating suction but is rather simply a separate area from the injection part. Further, Fig. 11b shows similar regions in the symmetrical sample containing part separated by a gradient incline portion and a wall surface.), wherein a sample dilution solution is contained in the sample containing part in advance (“In the above-described embodiment, the reagent well 6b [interpreted as a sample well given Umetsu Claims 1 and 13, discussed below] stores a necessary amount of reagent solution that has been injected in advance after the cartridge 2 is molded.” -- Umetsu Claims 1 and 13: “A cartridge used to measure a component to be measured contained in a liquid, wherein a concave well for storing the liquid is formed…wherein the liquid is a specimen or a reagent. – The reagent solution of Umetsu is interpreted herein as a sample dilution solution as claimed given that combining said reagent solution with a sample will inherently result in the dilution of said sample, resulting in a less concentrated sample. The claimed sample dilution solution is broadly recited to encompass such a reagent solution as in Umetsu as constituting this element.),
wherein the sample containing part 6a/6b comprises a cylindrical shape extending in the vertical direction from the top surface (Fig. 11 shows the sample-containing part 6b upper space 8b comprising a cylindrical shape extending vertically below the top surface (at least the wall surface 9d is a cylindrical shape as the interior surface 9d is shown as having a vertical wall parallel with itself about its circumference). Note that a cylinder is not required to have circular bases, wherein the elliptical bases of Umetsu form a cylinder shape as defined by Merriam Webster Dictionary: “a geometric shape composed of two parallel faces of identical size and shape (such as circles) and a curved surface that completely connects their borders”. See further the “description of symbols” section labeling the upper part 8a as a “drum cylinder part”.),
wherein the sample containing part comprises a liquid reservoir part, wherein a bottom of the liquid reservoir part has a hemispherical or conical shape (Fig. 3b shows the bottom part 10b of the sample containing part 6a as having a conical shape tapering toward a vertex. – “As shown in FIGS. 3A to 3C, the sample well 6a has a substantially inverted conical upper barrel portion 8 and a ring-shaped step portion 9 integrally coupled to the lower end of the upper barrel portion 8. And an inverted conical lower barrel portion 10 integrally connected to the step portion 9.” – Herein, the “bottom” is not necessarily interpreted strictly as the flat bottom surface 10c of Umetsu, but rather a bottom portion comprising a portion of the bottom sidewalls which converge in a conical shape.), and
wherein an upper end portion of the sample containing part 6a/6b includes a pipette insertion position regulating portion that defines an insertion position for a pipette tip when the sample is discharged into the injection region (A portion of the rim of the opening to the upper space 8b is a portion in which a pipette tip may be rested against, thereby defining an insertion “position” for a pipette tip. – Applicant may wish to claim the particular structure corresponding to the generic “portion” so as to overcome any arbitrary “portion” of the prior art against which a pipette tip may be rested to define a position of the pipette tip. – Examiner further notes that the recitation is predicated on a conditional (“when the sample is discharged”) which is not positively required by the claim. As such, the recitation thereto regarding the positioning of the pipette tip is not positively required by the claim.),
as in Claim 1.
Examiner further notes that both items are provided as named parts to “a sample containing part,” “an injection part,” “a liquid suction part,” and “a liquid reservoir part” wherein these nominal parts are not recited with any functionality(ies) thereto and are interpreted merely as regions within the open space of the cartridge.
Examiner further notes that mere change in shape absent evidence to criticality, non-obviousness, or unexpected results associated with the claimed shape is an obvious matter of design choice – see MPEP 2144.04(IV)(B).
Regarding Claim 2, the prior art meets the limitations of Claim 1 as discussed above. Further, Umetsu teaches the cartridge discussed above, wherein the injection region and the liquid suction region mutually extend in a vertical direction of the sample containing part (The vertical axis of Umetsu is interpreted as the axis X2 shown in Fig. 3B wherein the vertical direction extends perpendicular from the flat bottom surface 10c towards the top opening 12. Fig. 3b shows that the two regions of the upper space 8b discussed above regarding Claim 1 mutually extend in the vertical direction X2 such as to form a container cavity for holding liquid.)
Further regarding Claim 2, the sample containing part has an inclined surface that is inclined toward the liquid suction region and formed at a lower end of the injection region (Fig. 3b shows that right side wall 11d is inclined toward the suction part.),
and the inclined surface is continuous with a liquid reservoir part at a lower end of the liquid suction part via a surface of the sample containing part at a side surface of the liquid suction region (Fig. 3b shows that the right side wall 11d of the injection part is continuous with the peripheral wall 10a of the suction part.), as in Claim 2.
Regarding Claim 3, the prior art meets the limitations of Claim 1 as discussed above. Further, Umetsu teaches the cartridge discussed above, wherein a guide surface that is inclined with respect to the vertical direction of the sample containing part is formed in the injection region (Fig. 3b shows that left side wall 11a is inclined toward the suction part.), as in Claim 3.
Regarding Claim 4, the prior art meets the limitations of Claim 3 as discussed above. Further, Umetsu teaches the cartridge discussed above, wherein the guide surface is formed in a side wall of the sample containing part opposing the liquid suction region (Fig. 3b shows an inclined surface for guiding injection liquid into the suction part, formed by the left side wall 11a opposing the liquid suction part.), as in Claim 4.
Regarding Claim 5, the prior art meets the limitations of Claim 3 as discussed above. Further, in all that is discussed by the claim, Umetsu teaches the cartridge discussed above, wherein a holding part is positioned at a predetermined interval from the guide surface, wherein Fig. 3b shows an upper portion 2b against which a pipette tip can be leaned upon and held immobile for stabilization and more accurate pipetting.), as in Claim 5.
Further note that the recitation to “a holding part” is a nominal part not recited with any functionality(ies) thereto.
Regarding Claim 6, the prior art meets the limitations of Claim 2 as discussed above. Further, Umetsu teaches the cartridge discussed above, wherein the inclined surface is inclined at 30 degrees to 60 degrees with respect to the vertical direction of the sample containing part (Note that the term “vertical direction” is indefinite as discussed above. Further, Umetsu [0072] states “The upper peripheral wall 8a is formed so that its inner wall surface forms an inclination angle of 0.5 to 70° with a plumb line X1 to the opening 12.” and Umetsu is commensurate in structural arrangement in as much as claimed herein.) as in Claim 6.
Regarding Claim 7, the prior art meets the limitations of Claim 2 as discussed above. Further, Umetsu teaches the cartridge discussed above, wherein the inclined surface is continuously formed with the liquid reservoir part so as to form a part of the liquid reservoir part (Fig. 3b shows that the inclined surface right side wall 11d is continuously formed with the liquid reservoir 10b and as such forms a part of the liquid reservoir part.), as in Claim 7.
Additionally, the recitation to “…is continuously formed…” in Claim 7 is drawn to a process-type recitation not afforded patentable weight in a device claim.
Regarding Claim 9, the prior art meets the limitations of Claim 1 as discussed above. The claim’s statement that “a liquid surface of the sample dilution solution is located between an upper end and a lower end of the inclined surface” merely recites an intended use as it describes how the inclined surface is expected to function rather than affirmatively limiting the structure of the inclined surface. Further, the physical presence of liquid within the cartridge is not positively claimed, wherein such liquid surface/sample dilution solution is drawn to an intended workpiece, thus this liquid/its surface within the cartridge is not explicitly required. Umetsu provides a cartridge of commensurate structure and arrangement as claimed and is fully capable of holding a sample dilution solution wherein the liquid surface of the sample dilution solution is located between an upper end and a lower end of the inclined surface as in Claim 9.
Regarding Claim 10, the prior art meets the limitations of Claim 1 as discussed above. Further, Umetsu teaches the cartridge discussed above, comprising: at least one of a reagent containing part (Fig. 2 shows a plurality of reagent containing wells 6b.),
that contains the reagent (Umetsu states, “…after injecting a necessary amount of reagent into the reagent well 6b, each cartridge 2 is thermocompression-bonded to the surface of the well forming portion 2b with an aluminum seal…” The injection of a reagent solution into the reagent well 6b must necessarily provide a reagent solution contained in the reagent containing part as gravity will pull the reagent solution downward and into the closed cavity of the reagent well 6b.), as in Claim 10.
Further regarding Claim 10, Umetsu does not teach an antibody containing part that contains an antibody, as in Claim 10.
However, the claim is written as an alternative-type recitation wherein only one of the “reagent containing part that contains the reagent” and/or the “antibody containing part that contains an antibody” is positively required. Thus, Umetsu remains anticipatory over Claim 10 as Umetsu teaches the “reagent containing part that contains the reagent” as discussed above.
Regarding Claim 11, the prior art meets the limitations of Claim 10 as discussed above. The claim’s statement that “…at least either one of the liquid reservoir part, and the reagent containing part and the antibody containing part is substantially arranged on an operation line of the analysis apparatus…” merely describes an intended use of how the wells are to interact with an analysis apparatus (intended workpiece), rather than positively claiming an analysis apparatus itself or imposing a structural limitation to the cartridge. Since an analysis apparatus is not affirmatively claimed as part of the invention, it cannot serve to limit the scope of the claim.
Further regarding Claim 11, Umetsu commensurately discloses the claimed structural arrangement of the cartridge and is thereby fully capable of being arranged on such an operation line of an analysis apparatus in as much as claimed and required herein.
Regarding Claim 16, the prior art meets the limitations of Claim 1 as discussed above. Further, Umetsu teaches the cartridge discussed above wherein the injection region and the liquid suction region together serve as an injection and liquid suction region (Fig. 3B shows the liquid injection region 8b and the liquid suction region as forming a continuous volume. Thus, they together form a liquid injection and liquid suction region.), as in Claim 16.
Regarding Claim 17, the prior art meets the limitations of Claim 1 as discussed above. Further, Umetsu teaches the cartridge discussed above wherein the pipette insertion position regulating portion defines an insertion position for the pipette tip during discharge of the sample (As noted above regarding Claim 1, the edge rim of the sample containing part upper opening serves as a portion against which a pipette tip may be rested to define a position. Further, this recitation is predicated on a conditional (“during discharge of the sample”) which is not positively required by the claim, and thus the preceding recitation thereto is not positively required by the claim.), and
wherein a liquid surface of the sample dilution solution is located such that a droplet of the sample discharged from the pipette tip positioned at the insertion position reaches the same dilution solution before being separated from the pipette tip (As Applicant has not particularly defined the pipette tip positioning portion or the pipette position seemingly restricted therethrough, a user is fully capable of operating the device of Umetsu wherein the pipette tip is inserted close enough to the dilution solution such that a droplet of the sample discharged from the pipette tip reaches the dilution solution before being separated from the pipette tip.),
as in Claim 17.
Regarding Claim 18, the prior art meets the limitations of Claim 17 as discussed above. Further, Umetsu teaches the cartridge discussed above wherein the injection region and the liquid suction region together serve as an injection and liquid suction region (Fig. 3B shows the liquid injection region 8b and the liquid suction region as forming a continuous volume. Thus, they together form a liquid injection and liquid suction region.), as in Claim 17.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Umetsu, as applied to Claims 1-7 and 9-11 above, in light of Shimamoto et al. (US20090170714A1), referred to herein as “Shimamoto”.
Regarding Claim 12, as best understood herein, the prior art meets the limitations of Claim 10 as discussed above. Further, Umetsu does not teach the cartridge discussed above further comprising a closing part including a first closing part that closes the at least one of the reagent containing part and the antibody containing part, and in which an air vent hole is formed at a position corresponding to at least one of the reagent containing part and the antibody containing part, and a second closing part that closes the air vent hole are laminated. (Note that the recitation “…and a second closing part that close the air vent hole are laminated” is drawn to a process recitation not afforded patentable weight in a device claim.)
However, Shimamoto teaches an analogous microwell incubation apparatus, wherein the microwell lower tray 13 is covered by a first closing part upper tray 11 comprising holes 5 corresponding to each of the wells (reagent containing parts), and a second closing part comprising LEDs 15 which compliment and plug/seal the holes 5. Shimamoto teaches the benefit of this assembly as allowing for photometric observation of the liquid contained by each of the wells ([0076]). (Note that gasket 14 is interpreted as ‘laminated’ sealing of the holes across the first and second covering parts 11/15, in as much as claimed and understood herein).
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the cartridge taught by Umetsu with the first and second coverings taught by Shimamoto to allow for photometric observation of the liquid contained by each of the wells while blocking outside interfering elements.
Regarding Claim 13, the prior art meets the limitations of Claim 12 as discussed above. Further, modifying the cartridge taught by Umetsu with the first covering taught by Shimamoto results in the covering of at least one of the liquid suction region and/or the injection region, given that the first covering taught by Shimamoto cover the entirety of the wells of the bottom microtiter plate (Shimamoto Fig. 7.), and that Shimamoto Claim 4 states “…each of the holes in the lid and in the well-housing vessel has a diameter smaller than that of the wells…”, as in Claim 13.
Further regarding Claim 13, note that the process of closing at least one of the liquid suction part or the injection part is not required by the claim as the claims are drawn to a device, and the claim provides for a functionality of the first closing part to have this capability (which is met by Umetsu in view of Shimamoto as discussed above).
Thus, it would have been obvious to one of ordinary skill in the art to modify Umetsu to provide a first closing part for closing at least one of the liquid suction part and injection part such as taught by Shimamoto above in order to allow for securely sealing the suction part or injection part from external interfering elements.
Regarding Claim 14, the prior art meets the limitations of Claim 13 as discussed above. Further, Claim 12 (on which Claim 14 depends) already specifies “an air vent hole” and the dependent Claim 14 introduces an additional air vent hole without clearly distinguishing it from the air vent hole of Claim 12. Mere duplication of parts has no patentable significance unless a new and unexpected result is produced – see MPEP 2144.04(VI)(B).
Further regarding Claim 14, the device having the claimed relative arrangement of air vent holes “formed at a position corresponding to the liquid suction region in the first closing part” would not perform differently than the prior art device taught by Umetsu/Shimamoto, absent evidence of criticality, non-obviousness, or unexpected results associated with the position of said air vent holes – see MPEP 2144.04 (VI)(C). Umetsu/Shimamoto has the capability of providing multiple vent holes, as in Claim 14.
Regarding Claim 15, the prior art meets the limitations of Claim 13 as discussed above. Further, Claim 12 (on which Claim 14 depends) already specifies “an air vent hole” and the dependent Claim 15 introduces an additional air vent hole without clearly distinguishing it from the air vent hole of Claim 12. Mere duplication of parts has no patentable significance unless a new and unexpected result is produced – see MPEP 2144.04(VI)(B).
Further, the device having the claimed relative arrangement of air vent holes “formed at a position corresponding to the injection region in the first closing part” would not perform differently than the prior art device taught by Umetsu/Shimamoto, absent evidence of criticality, non-obviousness, or unexpected results associated with the position of said air vent holes – see MPEP 2144.04 (VI)(C). Umetsu/Shimamoto has the capability of providing multiple vent holes as in Claim 15.
Response to Arguments
35 USC 112
Applicant’s amendments sufficiently overcome the indefiniteness rejections set forth over Claim 1 under 35 USC 112b. As such, those rejections of Claim 1 under 35 USC 112b are withdrawn herein.
35 USC 102 and 103
Applicant argues on the alleged grounds that Umetsu fails to teach a structure corresponding to the amended Claim 1 requirement of “a pipette insertion position regulating portion” which “defines an insertion position for a pipette tip”.
Applicant’s arguments are not persuasive because the rim edge of the upper opening of the sample containing part of Umetsu is fully capable of having a pipette tip rested thereagainst so as to define/regulate an insertion position of the pipette tip, thereby anticipating the claimed “a pipette insertion position regulating portion”. Applicant’s terminology merely requires the device have a generic “portion” for defining an insertion position, which is satisfied by the rim portion of Umetsu. Applicant may wish to claim the actual particular structure responsible for positioning the pipette tip so as to overcome any arbitrary portion of Umetsu being used therefor by an operator.
Further, the “a pipette insertion position regulating portion” need not even be a structural portion of the device as construed by Examiner herein. The “portion” may merely refer to a region/portion of space through which a pipette is inserted, and the “insertion position for a pipette tip” merely being another region of space where a pipette tip is intended to be positioned.
Examiner further notes that the recitation is predicated on a conditional (“when the sample is discharged”) which is not positively required and necessitated by the claim. As such, the recitation thereto regarding the positioning of the pipette tip is not positively required by the claim.
Applicant further argues on the alleged grounds that Umetsu fails to teach the Claim 1 requirements of "the sample containing part includes an injection region and a liquid suction region" in which "a sample dilution solution is contained in the sample containing part in advance".
Applicant’s arguments are not persuasive because Umetsu teaches a solution injected into the well in advance, wherein the well 6b is interpreted as the sample containing part as discussed above in the body of the action with respect to Claim 1 (“In the above-described embodiment, the reagent well 6b stores a necessary amount of reagent solution that has been injected in advance after the cartridge 2 is molded.”).
Further while Applicant contends that the solution of Umetsu is a reagent and not a sample dilution solution, the reagent solution of Umetsu is interpreted herein as a sample dilution solution as claimed given that combining said reagent solution with a sample will inherently result in the dilution of said sample, resulting in a less concentrated sample, and thereby represents a dilution solution. The claimed sample dilution solution is broadly recited to encompass such a reagent solution as in Umetsu as constituting this element.
Applicant’s additional arguments are further drawn to process-based arguments (“injection of the sample and subsequent liquid suction are performed in a sample containing part”) and, as the claims are drawn to a device, such process arguments are not afforded weight. "Apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc. – MPEP 2114(II).
Applicant’s argument against Umetsu allegedly not containing the claimed “regions” is not persuasive because the regions are mere arbitrary designations of space not corresponding to a particularly restricted area. The claimed “regions” are purely nominal in nature and correspond to no specific structure of the claimed device. The regions of Umetsu discussed above and as illustrated in previous office actions fully meet the requirements of the claim.
Applicant asserts that Claims 2-7 and 9-11 are patentable through their dependence on Claim 1 because Umetsu is allegedly deficient in teaching Claim 1. However, as discussed above, Umetsu commensurately teaches each and every aspect of Claim 1. Thus, Claims 2-7 and 9-11 are not patentable merely by virtue of dependency to Claim 1.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/B.J.K./
Examiner, Art Unit 1798
/NEIL N TURK/Primary Examiner, Art Unit 1798
Prosecution Insights