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 .
Status of the Claims
The Amendment filed May 6, 2026 has been entered. Claims 1-7, 9(w), 17(w)-18(w), 20-22, and 23(w) have been amended; and claims 9-19 and 23-24 have been withdrawn previously. Claims 1-8 and 20-22 are currently examined herein.
Status of the Rejection
Applicant’s amendments to the Claims have overcome each objection and 112(b) rejections previously set forth in the Non-Final Office Action mailed November 6, 2025.
New ground of claim objection as outlined below.
The claim interpretation under 35 U.S.C. § 112(f) from the previous office action is maintained.
All 35 U.S.C. § 102 and 103 rejections for claims 1-8 and 20-21 from the previous office action are withdrawn in view of the Applicant’s amendment.
New grounds of rejection under 35 U.S.C. § 102 and 35 U.S.C. § 103 for claims 1-4, 6-8 and 20-21 are necessitated by the amendment as outlined below.
New ground of rejection under 35 U.S.C. § 112(a) for claim 22 is necessitated by the amendment as outlined below.
The 35 U.S.C. § 102 rejection for claim 22 is essentially maintained and modified in response to amendment.
Claim Objection
Claims 5 and 22 are objected to because of the following informalities:
Claim 5: please amend “the lower sample reservoir utilized includes” to -- the lower sample reservoir
Claim 22: please amend “the sample and upper active reservoirs” to – the lower sample and upper active reservoirs--.
Appropriate correction is required.
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.
Claim 4, “an adjusting mechanism in communication with the upper active and lower sample reservoirs and is configured to control an insertion depth of the upper active reservoir”, is being interpreted under 35 U.S.C. 112(f) . Prong 1: an adjusting mechanism (uses the generic placeholder), prong 2: configured to control an insertion depth of the upper active reservoir (functional language), prong 3: sufficient structure for performing the function not recited. Therefore, claim 4 invokes 112(f). A threaded contact region between the active and sample reservoirs for performing the functions is shown in Figs. 2, 4, and 5.
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.
Claim 22 is 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 22 recites “wherein the sample and upper active reservoirs are configured to provide passage of water into the upper active reservoir through a permeable membrane without an application of external force”. MPEP 2173.05(i) states that “Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977)”, “The mere absence of a positive recitation is not basis for an exclusion” and further states that “Any claim containing a negative limitation which does not have basis in the original disclosure should be rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement”. In the instant case, the specification does not disclose the negative limitation of “without an application of external force”. Therefore, the amended claim 22 is a new matter.
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, 3-4, 6, and 20-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dorian et al. (WO2004009207A1).
Regarding claim 1, Dorian teaches a device for concentrating liquids (Figs.3-5 show a device for concentrating plasma concentration from plasma 54 [Ln 16-24 on page 16]) comprising:
a lower sample reservoir (plasma syringe 52 in Figs. 3-5 [Ln 17 on page 16]) and an upper active reservoir (syringe device 30 in Figs. 3-5 [Ln 15-22 on page 15]; Fig.2 shows the syringe device 30 [Ln 15-22 on page 15]) ,
wherein the upper active reservoir includes at least one orifice and a permeable membrane covering the at least one orifice and contains at least one water binding material therein (Figs. 3-5 show the syringe 30 includes inlet/outlet port 50 and a filter 38 covering the inlet/outlet port 50 and contains desiccated hydrogel beads 44 [Ln 17-18 on page 15; Ln 18-24 on page 16]),
wherein the lower sample reservoir includes at least one orifice (inlet/outlet port 58 in Figs. 3-5); and the limitations “is configured to receive an aqueous sample, to removably receive the upper active reservoir therein, and to provide contact between the aqueous sample and the permeable membrane” is functional recitation. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, Dorian teaches the lower sample reservoir of plasma syringe 52 as shown in Figs. 3-5 configured to receive an aqueous sample (plasma 54), and to provide contact between the aqueous sample and the permeable membrane (Movement of plunger 60 toward the inlet/outlet port 58 displaces the plasma 54 through the coupling and inlet/outlet port 50 and through the filter 38 into contact with the desiccated hydrogel beads 44 to the position shown in Fig. 4 [Ln 19-24 on page 16]), and to removably receive the upper active reservoir therein (Figs. 3-5 show the syringe 52 is removably coupled to the syringe 30 through the coupling 56, thus the lower syringe 52 is configured to removably receive the upper syringe 30 by coupling the ports 58 and 50 with the coupling 56),
the limitation “wherein the upper active reservoir is configured to receive, through the permeable membrane, an aqueous portion of the sample from the lower sample reservoir, retain at least some of the aqueous portion received by the at least one water binding material, and provide a concentrated sample in the lower sample reservoir” is functional recitation. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, Dorian teaches the upper active reservoir of the syringe 30 as shown in Figs. 3-5 configured to receive, through the permeable membrane, an aqueous portion of the sample from the lower sample reservoir (Movement of plunger 60 toward the inlet/outlet port 58 displaces the plasma 54 through the coupling and inlet/outlet port 50 and through the filter 38 into contact with the desiccated hydrogel beads 44 to the position shown in Fig. 4 [Ln 19-24 on page 16]), retain at least some of the aqueous portion received by the at least one water binding material (Figs. 4-5 show the syringe 30 retaining at least some of the aqueous portion received by the at least one water binding material), and provide a concentrated sample in the lower sample reservoir (Fig.5 shows providing a concentrated sample [plasma concentrate 62] in the syringe 52). Thus, the disclosed upper active reservoir is configured to perform the claimed functions above.
Regarding claim 3, Dorian teaches the device of claim 1, and “wherein the device is configured to operate to provide the concentrated sample regardless of its orientation” is functional recitation. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, Dorian teaches the device which is capable of being operated to provide the concentrated sample regardless of its orientation since the movements of the plungers 60 and 36 in the two syringes do not depend on the orientation of the device.
Regarding claim 4, Dorian teaches the device of claim 1, wherein the device includes an adjusting mechanism (coupling 56 in Figs. 3-5) in communication with the upper active and lower sample reservoirs (see Figs. 3-5) and is configured to control an insertion depth of the upper active reservoir (the port 50 of the syringe 30 is inserted into the coupling 56 as shown in Figs. 3-5, thus the coupling 56 is configured to control an insertion depth of the syringe 30 into the coupling 56).
Regarding claim 6, Dorian teaches the device of claim 1, wherein the upper active reservoir includes the at least one water-binding material selected from the group consisting of a hydrogel (hydrogel beads 44 in Fig.3 [Ln 24 on page 15]).
Regarding claim 20, Dorian teaches a device for concentrating liquids (Figs.3-5 show a device for concentrating plasma concentration from plasma 54 [Ln 16-24 on page 16]) comprising:
a lower sample reservoir (plasma syringe 52 in Figs. 3-5 [Ln 17 on page 16]) and an upper active reservoir (syringe device 30 in Figs. 3-5 [Ln 15-22 on page 15]; Fig.2 shows the syringe device 30 [Ln 15-22 on page 15]) ,
“wherein the lower sample reservoir is configured to receive an aqueous sample
for concentration and to receive the upper active reservoir therein” is functional recitation. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, Dorian teaches the lower sample reservoir of plasma syringe 52 as shown in Figs. 3-5 configured to receive an aqueous sample for concentration (plasma 54) and to receive the upper syringe 30, thus the lower sample reservoir is configured to perform the claimed functions,
wherein the upper active reservoir is constructed of a permeable membrane (filter 38 in Figs. 3-5) having a water binding material therein (hydrogel beads 44 in Figs. 3-5 [Ln 15-25 on page 15]), and a predetermined volume (the syringe 30 has a predetermined volume as shown in Figs. 3-5); and the limitation “ configured to limit a final volume of an aqueous portion of the sample to be contained in the lower sample reservoir when the upper active reservoir is filled and expanded to a maximum volume
” is functional recitation. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, Dorian teaches the upper active reservoir of syringe 30 as shown in Figs. 3-5 which is configured to limit a final volume of an aqueous portion of the sample to be contained in the lower sample reservoir (see plasma concentrate 62 in Fig.5) when the upper active reservoir is filled and expanded to a maximum volume (see Fig.5).
Regarding claim 21, Dorian teaches a device for concentrating liquids (Figs.3-5 show a device for concentrating plasma concentration from plasma 54 [Ln 16-24 on page 16]) comprising:
a lower sample reservoir (plasma syringe 52 in Figs. 3-5 [Ln 17 on page 16]) and an upper active reservoir (syringe device 30 in Figs. 3-5 [Ln 15-22 on page 15]; Fig.2 shows the syringe device 30 [Ln 15-22 on page 15]) ,
“wherein the lower sample reservoir is configured to receive an aqueous sample
for concentration and to receive the upper active reservoir therein” is functional recitation. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, Dorian teaches the lower sample reservoir of plasma syringe 52 as shown in Figs. 3-5 configured to receive an aqueous sample for concentration (plasma 54) and to receive the upper syringe 30, thus the lower sample reservoir is configured to perform the claimed functions,
wherein the upper active reservoir is constructed of a permeable membrane (filter 38 in Figs. 3-5) having a water binding material therein (hydrogel beads 44 in Figs. 3-5 [Ln 15-25 on page 15]),
wherein the upper active reservoir is included within a rigid caged structure having openwork and a predetermined volume (Figs. 3-5 show the upper active reservoir is included within a rigid caged structure [body of the syringe 30] having openwork [opening in the body of the syringe 30] and a predetermined volume [see Figs. 3-5]); “configured to limit final volume of an aqueous portion of the sample to be contained in the lower sample reservoir when the upper active reservoir is filled and expanded to a maximum volume” is functional recitation. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, Dorian teaches the upper active reservoir of syringe 30 as shown in Figs. 3-5 which is configured to limit a final volume of an aqueous portion of the sample to be contained in the lower sample reservoir (see plasma concentrate 62 in Fig.5) when the upper active reservoir is filled and expanded to a maximum volume (see Fig.5).
Regarding claim 22, Dorian teaches a device for concentrating liquids (Figs.3-5 show a device for concentrating plasma concentration from plasma 54 [Ln 16-24 on page 16]) comprising a lower sample reservoir (plasma syringe 52 in Figs. 3-5 [Ln 17 on page 16]) and an upper active reservoir (syringe device 30 in Figs. 3-5 [Ln 15-22 on page 15]; Fig.2 shows the syringe device 30 [Ln 15-22 on page 15]),
“wherein the lower sample and upper active reservoirs are configured to provide passage of water into the upper active reservoir through a permeable membrane without an application of external force” is functional recitation. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, Dorian teaches the lower sample and upper active reservoirs are coupled by the coupling 56; the syringe 52 is filled with plasma 54; and the syringe 30 has a filter 38 covering the port 50 [Ln 16-24 on page 16]. Thus, the two syringes are configured to provide passage of water into the upper active reservoir through a permeable membrane (filter 38) without an application of external force. Note the passage is a structure bridging the two syringes, and the passage exists without an application of external force as shown in Figs. 3-5,
wherein the upper active reservoir includes a water binding material (hydrogel beads 44 in Fig.2 [Ln 20-22 on page 15]), and
the limitation “wherein the lower sample reservoir is configured to: contain an aqueous sample in contact with the permeable membrane, provide the passage of water through the permeable membrane into the upper active reservoir, cause the water to bind to the water binding material, and provide a concentrated sample in the lower sample reservoir” is a functional recitation. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, Dorian teaches the lower sample reservoir of plasma syringe 52 as shown in Figs. 3-5 configured to contain an aqueous sample (plasma 54) in contact with the permeable membrane (Movement of plunger 60 toward the inlet/outlet port 58 displaces the plasma 54 through the coupling and inlet/outlet port 50 and through the filter 38 into contact with the desiccated hydrogel beads 44 to the position shown in Fig. 4 [Ln 19-24 on page 16]), provide the passage of water through the permeable membrane into the upper active reservoir (displaces the plasma 54 through the coupling and inlet/outlet port 50 and through the filter 38 into contact with the desiccated hydrogel beads 44 to the position shown in Fig. 4; Reciprocal motion of the syringes along their vertical axis moves the agitator 46 through the plasma-hydrogel mixture, stirring the mixture to minimize gel polarization and facilitating transfer of water from the plasma into the hydrogel beads 44 [Ln 19-24 on page 16]), cause the water to bind to the water binding material (facilitating transfer of water from the plasma into the hydrogel beads 44), and provide a concentrated sample in the lower sample reservoir (provide a plasma concentrate 62 in the syringe 52 as shown in Fig.5). Thus, the disclosed lower sample reservoir is configured to perform the claimed functions above.
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.
Claim 2 are rejected under 35 U.S.C. 103 as being unpatentable over Dorian, as applied to claim 1 above.
Regarding claim 2, Dorian teaches the device of claim 1, and in the embodiment of Figs. 3-5 Dorian is silent to wherein the upper active reservoir includes a plurality of orifices, wherein the plurality of orifices includes the at least one orifice, and wherein the plurality of orifices is covered by one or more permeable
membranes, the one or more permeable membranes including the permeable membrane.
In the embodiment of Figs. 6-13, Dorian further teaches the upper active reservoir includes a plurality of syringes (syringes 80 and 82 in Figs. 6-9 or syringes 140 and 142 in Figs. 10-13), each including an orifice (ports 84 and 86 in Figs. 6-9 or ports 144 and 146 in Figs. 10-13) and a filter (filters 112 and 124 in Figs. 6-9 or filters 164 and 180 in Figs. 10-13) covering the respective port (see Figs. 6-13) [Ln 11 on page 17 to Ln 12 on page 21]. Thus, Dorian teaches wherein the upper active reservoir includes a plurality of orifices, wherein the plurality of orifices includes the at least one orifice (one port of one syringe), and wherein the plurality of orifices is covered by one or more permeable membranes, the one or more permeable membranes including the permeable membrane (the filter of one syringe).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the upper active reservoir by providing a second syringe which is similar to the syringe of the upper active reservoir, and have both upper syringes coupled to the lower sample reservoir (the lower syringe), as taught by Dorian in Figs. 6-13, since it would allow for multiple concentrations (abstract in Dorian).
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Dorian, as applied to claim 1 above, and in view of Shapiro et al. (US20240158834A1).
Regarding claim 7, Dorian teaches the device of claim 1, and is silent to wherein the lower sample reservoir includes a preservative material configured to preserve and stabilize biological and/or chemical materials added thereto (of claim 7), and wherein the preservative material is selected from the group consisting of osmolytes, polyols, sugars, polymers, amino acids, anionic compounds, cationic compounds, surfactants, biocides, and derivatives of thereof (of claim 8).
Shapiro teaches compositions and methods for biological sample processing (title). Compositions may comprise an additive. Examples of additives include bactericides, biocides, biopolymer degrading agents, bleaching agents, bleaching systems, buffers, chelators, enhancing agents, fungicides, polymers, reagents, salts, preservatives, and stabilizing agents [para. 0196]. Salts may be used to maintain osmolarity of a composition. Exemplary salts used include alkali salt, sodium salt, potassium salt, chloride salt, and acetate salt [para. 0203]. Stabilizing agents may be chosen from polyol or sugar [para. 0209].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the lower sample reservoir in Dorian by adding a preservative material selected from the group consisting of polyols, sugars, polymers, anionic compounds (i.e., buffers), cationic compounds (i.e., buffers), and biocides, as taught by Shapiro, since it would allow to preserve the target analytes in the sample [para. 0003, 0285 in Shapiro].
Allowable Subject Matter
Claim 5 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter.
Regarding claim 5, the prior art of the record does not teach wherein the lower sample reservoir includes a second sample reservoir having a reduced volume compare to the lower sample reservoir.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Response to Arguments
Applicant's arguments, see Remarks Pgs. 8-15, filed 5/6/2026, with respect to the claim interpretation and 35 U.S.C. § 102(a)(1) and 35 U.S.C. § 103 rejections have been fully considered.
Applicant’s Argument #1:
Regarding claim interpretation, Applicant argues at pages 9-10 that the specification discloses the adjusting mechanism.
Examiner’s Response #1:
Applicant’s arguments have been fully considered, but are not persuasive. Since the specification does provide the structure of the adjusting mechanism to perform the claimed functions, claim 4 is only interpreted under 112(f) and is not rejected under 112(b).
Applicant’s Argument #2:
Regarding claims 1, 5-6 and 20-21, Applicant argues at pages 11-12 that Indriksons fails to teach the amended feature: "wherein the lower sample reservoir ... is configured to ... removably receive the upper active reservoir therein".
Examiner’s Response #2:
Applicant’s arguments have been fully considered, but are moot in view of the new grounds of rejection for claims 1 and 20-21 above.
Applicant’s Argument #3:
Regarding claim 22, Applicant argues at pages 12-13 that Dorian fails to teach the amended feature: "without an application of external force".
Examiner’s Response #3:
Applicant’s arguments have been fully considered, but are moot in view of the new ground of rejection for claim 22 above. Furthermore, claim 22 is rejected under 112(a) as a new matter since the specification does not disclose the negative limitation.
Applicant’s Argument #4:
Regarding dependent claims 3 and 7-8, Applicant argues at page 13 that Indriksons fails to teach the amended claim 1, and Pathak cannot remedy Indrikson’s failure to provide the noted necessary claimed elements.
Examiner’s Response #4:
Applicant’s arguments have been fully considered, but are moot in view of the new ground of rejection for claim 1 above.
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 SHIZHI QIAN whose telephone number is (571)272-3487. The examiner can normally be reached Monday-Thursday 8:00 am-5:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan V Van can be reached on 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/SHIZHI QIAN/Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795
Prosecution Insights