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 .
Claims 16-21 remain withdrawn from further consideration as being non-elected by original presentation.
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 and 4-15 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.
The claims are indefinite for the reasons set forth in the last two Office actions. Thus, as already indicated now several times over, applicant has expressly drafted the claim preambles as well as other parts of the claims to suggest that the one or more biodiffusion chambers recited in the claims are only functionally claimed. For example only, applicant drafted the preamble of claim 1 to expressly recite “An apparatus configured to at least temporarily store one or more biodiffusion chambers”. This claim construction clearly suggests that the biodiffusion chambers are not positively claimed but are rather merely recited in the claims as an intended use of that which is claimed (the apparatus and its positively claimed chamber container). In other words the biodiffusion chambers are only functionally claimed given the express terminology the applicant has chosen to use in this and some other parts of the application claims.
On the other hand, portions of the claims have also been drafted by the applicant to suggest that the biodiffusion chamber is in fact positively claimed. For example only, applicant has drafted claim 1 to require that the tray “(1) place the biodiffusion chamber in a predetermined orientation and (2) maintain the biodiffusion chamber in a substantially fixed position relative to the tray”. Well, this depends on the biodiffusion chamber in question. In another example only, claim 1 also requires the first and second retention surfaces of the positively recited tray to be configured to be in contact with a first portion and a second portion of a flange of the biodiffusion chamber, respectively. See claim 1 lines 18-20. Again, this depends on the particular biodiffusion chamber in question. In yet another example, the last two lines of claim 1 require that the second portion of the flange of the biodiffusion chamber be substantially opposite the first portion of the flange of the biodiffusion chamber. This is an express further structural limitation on the biodiffusion chamber itself, which therefore suggests that the biodiffusion chamber is positively claimed. In these three examples in claim 1 the claimed apparatus is further structurally limited by reference to the biodiffusion chamber or parts thereof which suggests that the biodiffusion chamber is in fact positively claimed. It is by now well settled that features that are not claimed may not be relied upon by the applicant in support of patentability.
In another example, applicant has expressly drafted dependent claim 13 to suggest that the tool is not positively claimed (note claim 13’s “configured to receive a tool configured to be used with the biodiffusion chamber”). Not only that, but claim 14 that is dependent on claim 13 begins with “...wherein the tool configured to be used with the biodiffusion chamber...”, language that also suggests consistent with claim 13 that the tool is not positively claimed. However, claim 14 continues by requiring that the tool supposedly not positively claimed be “coupled to a seal member...” (this seal member being configured to be inserted into an injection port of the biodiffusion chamber). By requiring the tool to be coupled to the seal member in claim 14, applicant is further structurally limiting the claimed apparatus by reference to the tool, which suggests that applicant is in fact claiming the tool applicant also expressly suggested in both claims 13 and 14 was not positively claimed.
In a final example, it is apparent that claim 14 is unclear as to whether the seal member is positively recited therein or not, given the commentary above.
Once more, it is by now well settled that features that are not claimed cannot be relied upon by the applicant in support of patentability. Additionally once more, the applicant cannot avoid the rejection by submitting claims for examination that expressly suggest that certain features recited therein are only functionally claimed but then further structurally limit that which is claimed by reference to the same features.
Claims 1 and 4-15 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action. In finding the claims allowable only for purposes of the comparison of the claims with the prior art, the examiner is reading the claims as if they positively recite all features therein that applicant has drafted on the one hand to suggest are not positively claimed and on the other hand to suggest are positively claimed, as indicated above. Therefore, claims 1 and 4-15 will be allowed once the applicant amends these claims to remove the noted inconsistency by positively reciting the noted features in the usual manner.
Applicant's arguments filed 1/23/26 have been fully considered but they are not persuasive. As to the indefiniteness rejection note the commentary above. As to the prior art rejection it has been withdrawn as indicated above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB K ACKUN whose telephone number is (571)272-4418. The examiner can normally be reached Monday-Thursday 11am-7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Orlando E. Aviles can be reached at (571) 270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB K ACKUN/Primary Examiner, Art Unit 3736