DETAILED CORRESPONDENCE
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 .
Information Disclosure Statement
The information disclosure statement filed 3/3/26 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Amendment
As to applicants amended claims and remarks, filed on 3/3/26, the previous 112b rejections are withdrawn.
As to the amended claims and remarks, the previous prior art rejection is modified to address the claim amendments.
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: “retention mechanism configured to retain…” in claims 16-17.
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.
As to the “retention mechanism configured to retain…” in claims 16-17, the specification describes both the retention mechanism as a screw #50 (see [42, 46, 48, 91, 135], See also figures 3, 4, 7, 12). The specification even describes that screw 50 can serve as both the retention mechanism and lift mechanism (see [91]). The examiner notes that there are various different species of mechanisms, including a spring and actuator (see figures 14-17) where these variations were restricted in the restriction requirement. Therefore, because applicants have elected the species not including these restricted embodiments, then the examiner will interpret the retention mechanism to be defined by a screw, and equivalents thereof, as described in the specification.
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 Status
Claims 14-27 are pending with claims 14-20 and 26-27 being examined and claims 21-25 deemed withdrawn. Claims 1-13 are canceled.
Claim Rejections - 35 USC § 102
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 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 14-19, 27 are rejected under 35 U.S.C. 102a1 as being anticipated by Translation of JP 2000-258425 (hereinafter “ ’425 ”; already of record)
As to claim 14, ’425 teaches an automatic analysis apparatus (‘425; [14], Fig. 1-4) comprising: a driving rotor configured such that a rotational center extends vertically (‘425; #3/4/2, [3], Fig. 1-4. ‘425 also teaches rotor as #6 with #2/3/4; Fig. 3); a reaction disk mounted on the driving rotor (‘425; #6/8, [3-5], Fig. 1-4); a plurality of reaction cells installed in the reaction disk and configured to form a circular row concentric with the driving rotor (‘425; #1 [3-5], Fig. 1-4); a circular reaction chamber configured to accommodate the reaction cells (‘425; #9/11 [4-5], Fig. 1-4); a guide configured to guide an elevation trajectory of the reaction disk with respect to the driving rotor (‘425 teaches the guide as the through hole in 4/6 for the screw that guides the screw for placement of the disk 6 with respect to the rotor 2/3/4; Fig. 3. ‘425 also teaches the guide as the through hole in 8 for the screw that guides the screw for placement of the disk 8 with respect to the rotor 6; Fig. 3; #4 or #14 [3, 14], Fig. 1-4. ‘425 also teaches the guide as the portion of 6 that is cutout/raised to guide placement of disk 8; Fig. 1-2); and an in-chamber component installed inside the reaction chamber and configured such that a portion of the in-chamber component is closer to the reaction cell than a wall surface of the reaction chamber (‘425 teaches #12 or #14 that are in the chamber components and are closer to the reaction vessel that the outer wall of 9/11, [4, 14], Fig. 1-4), wherein a guide distance of the reaction disk by the guide is set so that the reaction disk is guided vertically until a bottom end of the reaction cell ascends to a height of an upper end of the in-chamber component (This limitation is related to intended use, and the guide distance could be any distance that a user holds the components as they are attaching disk 6/8 such that it is separated from the in-chamber component 12/14 during placement and can also be a height at which the vessel is removed/placed, or even resting in use, with respect to the component 12/14; Fig. 1-4. ‘425 also teaches that the distance is set, and also that the reaction cell 1 is at a height and touching 12/14 in fig. 2 or where the reaction cell 1 is set at the height of 12/14 in figure 1; [3, 14], Fig. 1-4).
Note: The instant Claims contain a large amount of functional language (ex: “configured to…”, etc…). However, functional language does not add any further structure to an apparatus beyond a capability. Apparatus claims must distinguish over the prior art in terms of structure rather than function (see MPEP 2114 and 2173.05(g)). Therefore, if the prior art structure is capable of performing the function, then the prior art meets the limitation in the claims.
As to claim 15, ’425 teaches the automatic analysis apparatus according to claim 14, wherein the guide distance is set to a difference distance or more of a height from a lower end of the reaction cell to the upper end of the in-chamber component in a state in which the reaction disk comes into contact with the driving rotor (The limitation of the guide distance is related to intended use, and also would be any arbitrary distance. ‘425 teaches that when the disk 6 or 8 and rotor 4 or 6, respectively, are contacting each other and attached that there is a height between the lower end of the reaction vessel 1 and the in-chamber component 12/14; Fig. 1-4. In ‘425, as the disk 6 or 8 is above and is placed onto the rotor 4 or 6, respectively, the disk 6 or 8 would be at a greater distance away from the device prior to securing it onto the device).
As to claim 16, ’425 teaches the automatic analysis apparatus according to claim 14, further comprising a retention mechanism configured to retain the reaction disk in a state in which the reaction disk is lifted with respect to the driving rotor (‘425 teaches screws/bolts #5/7 which connect the disk 6 or 8 to rotor 4 or 6, respectively; [3], Fig. 1-4. The screws or bolts would hold the disk in a lifted state as it was placed. Further, ‘425 teaches mechanism 7 would hold 8 into place on 6 while 6/8 was removed or placed with respect to the rotor.).
As to claim 17, ’425 teaches the automatic analysis apparatus according to claim 16, further comprising a lift mechanism configured to translate the reaction disk vertically with respect to the driving rotor (‘425 teaches screws/bolts #5/7 which connect the disk 6 or 8 to rotor 4 or 6, respectively; [3], Fig. 1-4. The screws/bolt would help to translate the disk 6 or 8 vertically as it was attached to rotor 4 or 6; Fig. 1-4. The examiner notes that the same screw/bolt could be both the retention mechanism and the lift mechanism, as evidenced by the 112(f) interpretation and as disclosed in applicants specification in [91]).
As to claim 18, ’425 teaches the automatic analysis apparatus according to claim 17, wherein the retention mechanism and the lift mechanism are screws screwed to the driving rotor in relation to the reaction disk (‘425 teaches screws/bolts #5/7 which connect the disk 6 or 8 to rotor 4 or 6, respectively; [3], Fig. 1-4).
As to claim 19, ’425 teaches the automatic analysis apparatus according to claim 18, wherein the screw includes a head portion, a threaded shaft portion, a body portion connecting the head portion to the shaft portion, and a protrusion portion provided in the body portion, and wherein, when the screw is tightened, the reaction disk comes into contact with the driving rotor and the protrusion portion becomes away from the reaction disk, and when the screw is loosened, the protrusion portion lifts up the reaction disk (‘425 teaches screws/bolts; #7/5, [3], Fig. 1-4. ‘425 teaches that screw 5 has a head portion at the top, a body portion just below the head, and a smaller diameter protruding portion below the body portion, where when fully tightened the protruding portion is downward and away from the disk 6 and where when the screw is loosened then the reaction disk can be lifted; Fig. 3. ‘425 teaches that screw 7 has a head portion at the top, a body portion just below the head, and a smaller diameter protruding portion below the body portion, where when fully tightened the protruding portion is downward and away from the disk 8 and where when the screw is loosened then the reaction disk can be lifted; Fig. 1-2).
As to claim 27 ’425 teaches the automatic analysis apparatus according to claim 14, wherein the guide positions the reaction disk with respect to the driving rotor in a radial direction and a circumferential direction (‘425 teaches the guide; see claim 14 above. ’425 teaches that the disk is radially and circumferentially positioned; Fig. 1-4).
Claim Rejections - 35 USC § 103
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Translation of JP 2000-258425 (hereinafter “ ’425 ”; already of record) alone or alternatively in view of Lee, C (US 20080019037; hereinafter “Lee”; already of record).
As to claim 20,’425 teaches the automatic analysis apparatus according to claim 18, where there are screws holding the disk to the rotor (see above and ‘425 Fig. 1-4).
‘425 does not specifically teach only one screw is disposed at the rotational center. However, without some statement of criticality or unexpected results, it would have been obvious to one of ordinary skill in the art at the time the invention was made to rearrange the screws of ‘425 to be a singular screw in the middle at the rotational center because this would ensure that the components were still fixed together while ensuring that the screw did not contribute to rotational imbalance of the rotating disk since it has been generally recognized that to shift location of parts when the operation of the device is not otherwise changed is within the level of ordinary skill in the art, In re Japikse, 86 USPQ 70; In re Gazda, 104 USPQ 400.' However, Lee teaches the analogous art of a rotating disc and rotor that are fixed together via a central screw (Lee teaches screw 130 screwed into rotor shaft 111 to secure rotating disks; [43-46], Fig. 3-4. Lee also teaches screw 35/75 in shaft 21/61; [9-11], Fig. 1-2). It would have been obvious to one of ordinary skill in the art to have modified the screw(s) connecting the rotor to the disk of ‘425 to have been a centralized screw along the axis of rotation as in Lee because Lee teaches that using a central screw enables a rotating disk to still be connected to a rotating rotor (Lee; [9-11, 43-46]), thereby accomplishing the same function by rearranging the location, and since it has been generally recognized that to shift location of parts when the operation of the device is not otherwise changed is within the level of ordinary skill in the art, In re Japikse, 86 USPQ 70; In re Gazda, 104 USPQ 400.'
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Translation of JP 2000-258425 (hereinafter “ ’425 ”; already of record) in view of Yamano, T (US 20170151570; hereinafter “Yamano”; already of record).
As to claim 26,’425 teaches the automatic analysis apparatus according to claim 14, with the reaction chamber and reaction cell within the reaction chamber and guide distance (see above).
‘425 does not specifically teach a drain pipe connected to the reaction chamber; a drain valve provided in the drain pipe; and a controller configured to control the drain valve, wherein, when a signal to give an instruction to start maintenance is input, the controller controls the drain valve such that a liquid level of the reaction chamber descends lower than the lower end of the reaction cell ascending highest in a range of the guide distance. However, Yamano teaches the analogous art of a reaction cell 20 in a reaction chamber 19 (Yamano; Fig. 1-3, [38-39]) and a drain pipe connected to the reaction chamber; a drain valve provided in the drain pipe; and a controller configured to control the drain valve, wherein, when a signal to give an instruction to start maintenance is input, the controller controls the drain valve such that a liquid level of the reaction chamber descends lower than the lower end of the reaction cell ascending highest in a range of the guide distance (Yamano teaches a drain pipe and valve 49 that are controlled by a control unit, where when the device is in a maintenance state that is not the operating state, then the valve is controlled to drain the liquid to a level 46 lower than reaction cell 20; [12, 33, 35, 36, 41, 50, 51, 81, 83], Fig. 2). It would have been obvious to one of ordinary skill in the art to have modified the reaction chamber with the reaction cell of ‘425 to have included a drain pipe and controlled valve for draining as in Yamano because Yamano teaches that draining the water helps to circulate and replace the water (Yamano; [83]), and helps to ensure and improve antibacterial activity of the water (Yamano; [37]), and also helps to more efficiently replace the water without fully stopping operation (Yamano; [9, 50-52]).
Response to Arguments
Applicant's arguments filed 3/3/26 have been fully considered but they are not persuasive.
Applicants argue on pages 7-8 of their remarks that Kihara (reference ’425) does not teach guides, and that the screws do not function as guides and that the notch/protrusion 6 does not function as a guide. However, the examiner respectfully disagrees. The examiner is not stating that the screws 5/7 are guides. ’425 teaches a guide configured to guide an elevation trajectory of the reaction disk with respect to the driving rotor (‘425 teaches the guide as the through hole in 4/6 for the screw that guides the screw for placement of the disk 6 with respect to the rotor 2/3/4; Fig. 3. ‘425 also teaches the guide as the through hole in 8 for the screw that guides the screw for placement of the disk 8 with respect to the rotor 6; Fig. 3; #4 or #14 [3, 14], Fig. 1-4. ‘425 also teaches the guide as the portion of 6 that is cutout/raised to guide placement of disk 8; Fig. 1-2). Rather, ’425teaches that the through holes 4/6 for the screw guide the screw for placement of the disk. Specifically, in the instance where the disk 6 (or disk 8) is moved with respect to rotor 2/3/4 (or 6), and where screw 5 (or 7) is joined with 6 (or 8) and then placed into 4 (or 6) then the hole guides both the screw and the disk 6 (or 8). In this respect, ’425teaches a guide distance of the reaction disk by the guide is set so that the reaction disk is guided vertically until a bottom end of the reaction cell ascends to a height of an upper end of the in-chamber component (This limitation is related to intended use, and the guide distance could be any distance that a user holds the components as they are attaching disk 6/8 such that it is separated from the in-chamber component 12/14 during placement and can also be a height at which the vessel is removed/placed, or even resting in use, with respect to the component 12/14; Fig. 1-4. ‘425 also teaches that the distance is set, and also that the reaction cell 1 is at a height and touching 12/14 in fig. 2 or where the reaction cell 1 is set at the height of 12/14 in figure 1; [3, 14], Fig. 1-4. The examiner notes that functional language does not add any further structure to an apparatus beyond a capability. Apparatus claims must distinguish over the prior art in terms of structure rather than function (see MPEP 2114 and 2173.05(g)). Therefore, if the prior art structure is capable of performing the function, then the prior art meets the limitation in the claims). The examiner points out that applicants have not actually claimed the guide to be as configured as shown in instant specification in figures 3 or 7.
Other References Cited
The prior art of made of record and not relied upon is considered pertinent to applicant's disclosure include;
Kuroda, C (US 20110311397; hereinafter “Kuroda”; already of record) teaches a screw that guides into a component; Fig. 3-4
Watari et al (US 20010019702; hereinafter “Watari”; already of record) teaches an ultrasonic component in a reaction chamber; Fig. 1.
Katou et al (US 20030166260; hereinafter “Katou”; already of record) teaches an ultrasonic component in a reaction chamber; Fig. 1-10.
Schreiber et al (US 5489414; hereinafter “Schreiber”; already of record) teaches a screw 16 that is centered on the rotational axis; col. 6 line 15-22, Fig. 2a.
Iftikar et al (US 5444586; hereinafter “Iftikar”; already of record) teaches a centered screw that connects a rotating cartridge/disk to rotor 56; Fig. 7.
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 BENJAMIN R WHATLEY whose telephone number is (571)272-9892. The examiner can normally be reached Mon- Fri 8am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Capozzi can be reached at (571) 270-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Benjamin R Whatley/Primary Examiner, Art Unit 1798