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 Claims
The claim set submitted on 25 SEPTEMBER 2025 is acknowledged and considered. In the claim set, Claims 1, 7, 12 and 13 are ‘Currently Amended’; Claims 2-6 are ‘Canceled’; Claims 8-11 and 14 are ‘Currently Amended’.
Current pending claims are Claims 1 and 7-14 and are considered on the merits below.
Response to Amendment
Applicant’s arguments with respect to claim(s) 1-14 have been considered. The Applicant’s arguments moot because the new ground of rejection below has been amended based on Applicant’s amendment to the claims. The prior art used for the rejection is the same as previously used but has been amended based on Applicant’s amendments.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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, 7-11 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over BAYER, EP 0 973 039 A2.
Applicant’s invention is directed towards a device, a testing equipment system.
Regarding Claim 1, the BAYER reference discloses a testing equipment system to collect a specimen from a subject and measure the specimen, Figure 1, instrument 10, [0001, 0022], the testing equipment system comprising:
a first unit portion comprising a collection room including equipment to collect the specimen, Figure 1, module 31, [0022];
a second unit portion comprising a measurement room including equipment to measure the specimen, Figure 1, module 33, [0022]; and
a third unit portion comprising an accommodation room including equipment to output a measurement result, Figure 1, module 34, [0022], the third unit portion being provided with an operation device, , Figure 1, immunoassay module 34 is to be performed by staff, [0022]; and
a fourth unit portion comprising an examination room to examine the subject to collect the specimen from the subject, separately from the measurement room, one or more additional modules, [0022, 0096];
wherein the testing equipment system is placed at a moving base for passenger transportation, Figure 1, robotic arm 100, [0024],
the first unit portion includes a first robot operable to perform an action for collecting the specimen, [0035];
the second unit portion includes a second robot operable to perform an action for measuring the specimen, [0035], and
an operator in the accommodation room separate from the collection room is capable of operating the robot using the operation device, [0075, 0078, 0080], operator and user are mention to be used with the testing system. Examiner Note: It should be noted that the operator him/herself is not structurally part of the testing system itself. The operator has been given a relative amount of patentable weight.
The BAYER reference discloses the claimed invention, but is silent in regards the system comprising a mobile body; a box capable of being placed on and removed from the mobile body; and the box containing the testing equipment is moved by the mobile body and placed at a base for passenger transportation.
However, in BAYER, any well-known analytical instrument 10, can be used in a single location or in various locations such as in the field.
Therefore, it would be obvious to one having ordinary skill in the art before the effective filing date to modify the system of BAYER to include a mobile body, such as a vehicle, or truck; a box capable of being placed on and removed from the mobile body; and the box containing the testing equipment is moved by the mobile body and placed at a base for passenger transportation, to move the analytical instrument 10 and patients to different locations to be used in the field for on-site testing as well as laboratory sites.
Additional Disclosure Included are: Claim 7: wherein the testing equipment system according to claim 1, wherein an operator [[placed]] at a remote location away from all of the unit portions each including [[the]] a robot to remotely operating each [[the]] robot via a communicator. Examiner Note: It should be noted that the operator him/herself is not structurally part of the testing system itself. The operator has been given a relative amount of patentable weight. An operator provides instructions, [0075, 0080, 0081, 0099].; Claim 8: wherein the testing equipment system according to claim1, wherein at least one of the unit portions forms a separate unit separable from the remaining unit portions, [0022], one or more additional modules, [0023], varying number of modules. ; Claim 9: wherein the testing equipment system according to claim 1, wherein the unit portions are integral and unitary with each other to form one unit, see Figure 1; all unit portions are in one instrument 100.; Claim 10: wherein the testing equipment system according to claim 9, wherein the one unit includes one container to house an entirety of the unit portions, Figure 1, covers, [0022], [0053] cover , [0030], housing.; Claim 11: wherein the testing equipment system according to claim 8, wherein the unit formed by the unit portions is ready-to-assemble, Figure 1. It is interpreted by the Examiner that the instrument of BAYER is assemble at some point and is considered to be ‘ready-to-assemble’. This instant claim language is directed to its intended use, ‘ready-to-assemble’. ; Claim 13: wherein the testing equipment system according to claim 1, placed in a terminal building of an airport corresponding to the moving base for passenger transportation. Examiner Note: It should be noted that the instant claim language does not further define the device structurally but rather it is directed to where the device can be located. The instant claim has been given a relative amount of patentable weight. The device of BAYER can be place anywhere including a terminal building of an airport. ; and Claim 14: wherein the testing equipment system according to claim 1 , wherein the specimen is subjected to a PCR (polymerase chain reaction) test; and the measurement is performed for the PCR test. Examiner Note: It should be noted that the instant claim does not further define the device structurally, but rather what the device is capable of doing. See MPEP 2114. “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Furthermore, there is nothing structural in claim 1 which is particular to PCR. Claim 1 is broadly claimed and any test can be performed by the system and its unit including PCR.
Claims 1 and 8-14 are rejected under 35 U.S.C. 103 as being unpatentable over JP 04-333782 A, TAKAMOTO, submitted on the Information Disclosure Statement on 28 NOVEMBER 2022, and further in view of BAYER, EP 0 973 039 A2.
Applicant’s invention is directed to a device, a testing equipment system.
Regarding Claim 1, the TAKAMOTO reference discloses a mobile testing equipment system to collect a specimen from a subject and measure the specimen, [0001, 0006], the testing equipment system comprising: a mobile body , page 2, CONSTITUTION, Claim 2 and 7, [0002, 0006, 0011], air tent, it is known in the art that tents are mobile, in addition it is known that tent are to be transported by vehicles from location to location; and a box capable of being placed on and removed from the mobile body, page 2, CONSTITUTION, air tent, Claim 3 and 5-7, [0002, 0005, 0006, 0011], the box containing testing equipment comprising: a first unit portion comprising a collection room including equipment to collect the specimen, Figure 1, D: clinic , [0009]; a second unit portion comprising a measurement room including equipment to measure the specimen, Figure 1, C: laboratory, [0009]; and a third unit portion comprising an accommodation room including equipment to output a measurement result, Figure 1, B, Claim 6: intensive care unit, [0009], the third unit portion being provided with an operation device, Claim 6, [0009], clinic and laboratory, Figure 1; and a fourth unit portion forming an examination room to examine the subject to collect the specimen from the subject, separately from the measurement room, one or more additional modules, Figure 1, E: sickroom, E1, E2, E3, [0010], wherein the box containing the testing equipment system is moved by the mobile body and placed at a [[moving]] base for passenger transportation, [0006, 0011], carried by trailer or the like,
the first unit portion includes a robot operable to perform an action for collecting the specimen, [0035],
The TAKAMOTO discloses the claimed invention, but is silent in regards to the units include a robot to perform desired actions of each portion.
BAYER reference discloses a testing equipment system to collect a specimen from a subject and measure the specimen, Figure 1, instrument 10, [0001, 0022], the testing equipment system comprising:
a first unit portion comprising a collection room including equipment to collect the specimen, Figure 1, module 31, [0022];
a second unit portion comprising a measurement room including equipment to measure the specimen, Figure 1, module 33, [0022]; and
a third unit portion comprising an accommodation room including equipment to output a measurement result, Figure 1, module 34, [0022], the third unit portion being provided with an operation device, , Figure 1, immunoassay module 34 is to be performed by staff, [0022]; and
a fourth unit portion comprising an examination room to examine the subject to collect the specimen from the subject, separately from the measurement room, one or more additional modules, [0022, 0096];
wherein the testing equipment system is placed at a moving base for passenger transportation, Figure 1, robotic arm 100, [0024],
the first unit portion includes a first robot operable to perform an action for collecting the specimen, [0035];
the second unit portion includes a second robot operable to perform an action for measuring the specimen, [0035], and
an operator in the accommodation room separate from the collection room is capable of operating the robot using the operation device, [0075, 0078, 0080], operator and user are mention to be used with the testing system. Examiner Note: It should be noted that the operator him/herself is not structurally part of the testing system itself. The operator has been given a relative amount of patentable weight.
It would be obvious to one having ordinary skill in the art before the effective filing date to modify TAKAMOTO with the robots disclosed by BAYER to minimize any cross contamination and maintain spatial cleanliness and keep operators safe from testing as well as to automate the overall system with robots as providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art, In reVenner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958).
Additional Disclosure Included are: Claim 8: wherein the testing equipment system according to claim1, wherein at least one of the unit portions forms a separate unit separable from the remaining unit portions, Figure 1. ; Claim 9: wherein the testing equipment system according to claim1, wherein the unit portions are integral and unitary with each other to form one unit, Figure 1, [0009], all units portions are integral and unitary (forming one big unit).; Claim 10: wherein the testing equipment system according to claim 9, wherein the one unit includes one container to house an entirety of the unit portions, Figure 1, exterior of Figure 1 to house enclosed by frame, [0011].; Claim 11: wherein the testing equipment system according to claim 8, wherein the unit formed by the unit portions is ready-to-assemble, Figure 1, each modules are connected together as ready to assemble. It is interpreted by the Examiner that the instrument of BAYER is assemble at some point and is considered to be ‘ready-to-assemble’. This instant claim language is directed to its intended use, ‘ready-to-assemble’. ; Claim 12: wherein the testing equipment system according to claim 1, wherein the second unit portion includes: a first measurement unit portion comprising a first measurement room including equipment to perform a first measurement on the specimen, separately from the collection room; and a second measurement unit portion comprising a second measurement room including equipment to perform a second measurement on the specimen, separately from the collection room and the first measurement room; the first measurement unit portion includes an air conditioning system to create one of a positive pressure environment and a negative pressure environment in the first measurement room; and the second measurement unit portion includes an air conditioning system to create the other of the positive pressure environment and the negative pressure environment in the second measurement room, [0011-0015, 0019].; Claim 13: wherein the testing equipment system according to claim 1, placed in a terminal building of an airport corresponding to the base for passenger transportation. Examiner Note: It should be noted that the instant claim language does not further define the device structurally but rather it is directed to where the device can be located. The instant claim has been given a relative amount of patentable weight. The device of BAYER can be place anywhere including a terminal building of an airport as well as the device of TAKAMOTO [0006, 0011] ; and Claim 14: wherein the testing equipment system according to claim 1 , wherein the specimen is subjected to a PCR (polymerase chain reaction) test; and the measurement is performed for the PCR test. Examiner Note: It should be noted that the instant claim does not further define the device structurally, but rather what the device is capable of doing. See MPEP 2114. “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Furthermore, there is nothing structural in claim 1 which is particular to PCR. Claim 1 is broadly claimed and any test can be performed by the system and its unit including PCR.
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 CHRISTINE T MUI whose telephone number is (571)270-3243. The examiner can normally be reached M-Th 5:30 -15:30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, LYLE ALEXANDER can be reached at (571) 272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CTM
/CHRISTINE T MUI/Primary Examiner, Art Unit 1797