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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/25/2025 has been entered.
Information Disclosure Statement
The information disclosure statement submitted on 9/12/2025 has been considered by the examiner.
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 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 covering member that covers the pipe in claim 10.
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.
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 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.
Claim 5 is rejected under 35 U.S.C. 112(b) 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 5 depends on claim 4, but claim 4 has been canceled; therefore, the metes and bounds of claim 5 cannot be determined. The examiner has interpreted the claim to mean that claim 5 depends on claim 1 rather than canceled claim 4.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 5, 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent 5,032,283 issued to Scott et al. (“Scott”) in view of U.S. Patent 4,234,427 issued to Boehme (“Boehme”).
As for claim 1, Scott discloses a flow-path member (Fig. 1) which is used in an analysis device and through which a sample flows in the analysis device (col. 4, lines 8-13), comprising:
a pipe (12); and
a covering member (16) that covers the pipe (12), wherein
the pipe (12) has
a first portion (“first portion” circled in annotated Fig. 1 below) including a first direction (down in Fig. 1), which is orthogonal to a direction (right in Fig. 1) in which the flow-path member extends as a whole, as at least an element of a local extending direction,
a second portion (“second portion” circled in annotated Fig. 1 below) including a second direction (up in Fig. 1), which is opposite to the first direction, as at least an element of the local extending direction,
a first bent portion (“first bent portion” at bump between first portion and second portion in annotated Fig. 1 below) in which the local extending direction changes from the first direction to the second direction, and
a second bent portion (“second bent portion” at bump in annotated Fig. 1 below) in which the local extending direction changes from the second direction to the first direction, wherein a part of the flow-path member is installed in a column over (This limitations describes the intended use of the flow-path member and does not structurally distinguish the claimed invention over the prior art. The flow-path member of Scott is capable of being installed in an oven.) and
a space (between first bent portion and 16 in Fig. 1 and between second bent portion and 16 in Fig. 1) is formed between the covering member (16) and the pipe (12) at least in the first portion, the second portion, the first bend portion and the second bent portion, such that the first portion, second portion, first bent portion and second bent portion are spaced form the covering member (see Fig. 1), and the space forms an air layer that acts as a heat insulating layer against the heat of the column oven (see Fig. 1).
Scott does not disclose that the covering member is constituted by an elastic member
However, Boehme discloses a covering member (20) that is constituted by an elastic member (steel is elastic; col. 4, lines 53-57).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the present application to modify the covering member of Scott to be constituted by an elastic member as disclosed by Boehme because it has been held that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination. See MPEP 2144.07 and Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
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As for claim 2, the examiner notes that the claim recites the intended use of the flow-path member and that the flow-path member is capable of being used in the recited fashion, therefore the claim does not distinguish itself over the prior art. The flow-path member of Scott and Boehme is capable of connecting an autosampler to a separation column (Scott: see col. 4, lines 8-13).
As for claim 3, the examiner notes that the claim recites the intended use of the flow-path member and that the flow path member is capable of being used in the recited fashion, therefore the claim does not distinguish itself over the prior art of Scott and Boehme.
As for claim 5, Scott as modified by Boehme discloses that a sleeve (Scott: 18) having a diameter larger than diameters of the first portion and the second portion is provided at an end portion of the pipe (Scott: 12), and the covering member (Scott: 16) is provided across the sleeve (Scott: 18) and the first portion (Scott: see Fig. 1), or the sleeve (Scott: 18) and the second portion (Scott: see Fig. 1).
As for claim 8, Scott as modified by Boehme discloses a liquid chromatograph (Scott: col. 4, lines 8-13) comprising the flow-path member which is used in an analysis device according to claim 1.
As for claim 9, Scott as modified by Boehme discloses that the space acts as a heat insulating layer between the covering member and the pipe (Scott: see Fig. 1).
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent 5,032,283 issued to Scott et al. (“Scott”) in view of U.S. Patent 4,234,427 issued to Boehme (“Boehme”) as applied to claim 1, further in view of U.S. Patent Application Publication 2019/0369060 by Aoki et al. (“Aoki”).
As for claim 6, Scott disclose the flow path member of claim 1 (see the rejection of claim 1 above).
Scott does not disclose that a filling member for reducing a volume of the space is arranged in the covering member.
However, Aoki discloses a filling member (40; paragraph [0081]) for reducing a volume of the space that is arranged in a covering member (46). Aoki discloses that the filling member functions as a heater (paragraph [0076]).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the present application to modify the flow path member of Scott by including the filling member as disclosed by Aoki in order to heat the sample, thus improving separation performance (Aoki: paragraph [0074]).
As for claim 7,Scott as modified by Aoki discloses that the filling member (Aoki: 40) is a bar member (Aoki: 40) extending substantially parallel to the direction in which the flow-path member extends as a whole (Aoki: see Fig. 8).
Claims 10, 11, 13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication 2016/0274074 by Fujiwara (“Fujiwara”) in view of U.S. Patent 5,032,283 issued to Scott et al. (“Scott”).
As for claim 10, Fujiwara discloses a liquid chromatograph (Fig. 1) comprising
an autosampler (8);
a separation column (10), and
a flow path member (2b) connects the autosampler and the separation column to each other through which a sample flows.
Fujiwara dose not explicitly disclose that the flow path member includes a pipe and covering member as recited.
However, Scott discloses a flow-path member (Fig. 1) that includes:
a pipe (12); and
a covering member (16) that covers the pipe (12), wherein
the pipe (12) has
a first portion (“first portion” circled in annotated Fig. 1 above) including a first direction (down in Fig. 1), which is orthogonal to a direction (right in Fig. 1) in which the flow-path member extends as a whole, as at least an element of a local extending direction,
a second portion (“second portion” circled in annotated Fig. 1 above) including a second direction (up in Fig. 1), which is opposite to the first direction, as at least an element of the local extending direction,
a first bent portion (“first bent portion” at bump between first portion and second portion in annotated Fig. 1 above) in which the local extending direction changes from the first direction to the second direction, and
a second bent portion (“second bent portion” at bump in annotated Fig. 1 above) in which the local extending direction changes from the second direction to the first direction, wherein a part of the flow-path member is installed in a column over (This limitations describes the intended use of the flow-path member and does not structurally distinguish the claimed invention over the prior art. The flow-path member of Scott is capable of being installed in an oven.) and
a space (between first bent portion and 16 in Fig. 1 and between second bent portion and 16 in Fig. 1) is formed between the covering member (16) and the pipe (12) at least in the first portion, the second portion, the first bend portion and the second bent portion, such that the first portion, second portion, first bent portion and second bent portion are spaced form the covering member (see Fig. 1), and the space forms an air layer that acts as a heat insulating layer against the heat of the column oven (see Fig. 1).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the present application to modify the flow-path member of Fujiwara to include the pipe and covering member as disclosed by Scott in order to minimize band dispersion (Scott: col. 1, lines 56-58).
As for claim 11, Fujiwara as modified by Scott discloses that an end portion of the flow-path member (Fujiwara: 2b) connected to the separation column (Fujiwara: 10) is arranged in a column oven (Fujiwara: 11).
As for claim 13, Fujiwara as modified by Scott discloses that a sleeve (Scott: 18) having a diameter larger than diameters of the first portion and the second portion is provided at an end portion of the pipe (Scott: 12), and the covering member (Scott: 16) is provided across the sleeve (Scott: 18) and the first portion (Scott: see Fig. 1), or the sleeve (Scott: 18) and the second portion (Scott: see Fig. 1).
As for claim 16, Fujiwara as modified by Scott discloses that the space acts as a heat insulating layer between the covering member and the pipe (Scott: see Fig. 1).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication 2016/0274074 by Fujiwara (“Fujiwara”) in view of U.S. Patent 5,032,283 issued to Scott et al. (“Scott”) as applied to claim 10, further in view of U.S. Patent 4,234,427 issued to Boehme (“Boehme”)
As for claim 12, Fujiwara as modified by Scott discloses the liquid chromatograph according to claim 10 (see the rejection of claim 10 above).
Fujiwara as modified by Scott does not disclose that the covering member is constituted by an elastic member
However, Boehme discloses a covering member (20) that is constituted by an elastic member (steel is elastic; col. 4, lines 53-57).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the present application to modify the covering member of Fujiwara and Scott to be constituted by an elastic member as disclosed by Boehme because it has been held that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination. See MPEP 2144.07 and Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication 2016/0274074 by Fujiwara (“Fujiwara”) in view of U.S. Patent 5,032,283 issued to Scott et al. (“Scott”) as applied to claim 10, in view of U.S. Patent Application Publication 2019/0369060 by Aoki et al. (“Aoki”).
As for claim 14, Fujiwara as modified by Scott disclose the flow path member of claim 10 (see the rejection of claim 10 above).
Fujiwara as modified by Scott does not disclose that a filling member for reducing a volume of the space is arranged in the covering member.
However, Aoki discloses a filling member (40; paragraph [0081]) for reducing a volume of the space that is arranged in a covering member (46). Aoki discloses that the filling member functions as a heater (paragraph [0076]).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the present application to modify the flow path member of Fujiwara and Scott by including the filling member as disclosed by Aoki in order to heat the sample, thus improving separation performance (Aoki: paragraph [0074]).
As for claim 15, Fujiwara as modified by Scott and Aoki discloses that the filling member (Aoki: 40) is a bar member (Aoki: 40) extending substantially parallel to the direction in which the flow-path member extends as a whole (Aoki: see Fig. 8).
Response to Arguments
Applicant's arguments filed 11/25/2025 have been fully considered but they are not persuasive.
On page 10 of the Remarks, Applicant argues that one having ordinary skill in the art would not have combined Scott with Boehme. Applicant argues that Scott and Boehme are in different technical fields. The examiner respectfully disagrees. Scott and Boehme are both in the technical field of liquid chromatography; therefore they are analogous art. Applicant argues that the instant invention requires an air layer while Boehme requires a liquid-filled cavity. The examiner respectfully disagrees. The examiner notes that Boehme is not bodily incorporated into Scott.
On pages 10-11 of the Remarks, Applicant argues that Aoki’s heater teaches away from the use of insulation to prevent a temperature rise in the instant invention. The examiner respectfully disagrees. The examiner can see no suggestion that the combination wo Scott and Aoki would not function; therefore there is no teaching away from the combination of Scott and Aoki.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN N OLAMIT whose telephone number is (571)270-1969. The examiner can normally be reached M-F, 8 am - 5 pm (Pacific).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephen Meier can be reached at (571) 272-2149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JUSTIN N OLAMIT/Primary Examiner, Art Unit 2853