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 (IDS) submitted on 1/14/26 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Status
Claims 1, 3, 5-8 are pending.
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: “target position setting unit configured to execute…” in claim 1.
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.
The specification describes the target position setting unit #22 as a function realized by a CPU executing programs in [16]. Therefore, the examiner will interpret the target position setting unit to be a program executed on the computer/controller that performs the claimed functions recited in the claims.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As to claim 5, it is unclear how the vial placement unit has a circumference. Specifically, the vial placement unit is just a region of space and it has not been further defined structurally beyond that of a region of space. Is the circumference just the perimeter of the vial placement unit or are applicants intending to state that the vial placement unit is circular? Therefore, it is unclear what applicants are intending to describe with respect to a circumference of the unit, and a potential infringer would not know what is or is not being required by the vial placement unit.
Appropriate correction and/or clarification is required.
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.
Claims 1, 3, 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Miyoshi et al (Translation of JP H03-245059A; hereinafter “Miyoshi”; already of record) in view of Farrelly et al (US 20060047363; hereinafter “Farrelly”; already of record) in view of Noda et al (US 10274506; hereinafter “Noda”; already of record).
As to claim 1, Miyoshi teaches an automatic sample injection device (Miyoshi; Fig. 1-8, [1]) comprising:
a vial placement unit configured to place a vial thereon (Miyoshi teaches a tray 3 that contains vials; [1], Fig. 5);
a sampler provided at a position different from a position of the vial placement unit, the sampler being configured to collect a liquid from the vial (Miyoshi teaches sampler 6/7 that collects liquid from vials; Fig. 1-2, [1]);
a conveyance unit provided with a gripper configured to grip the vial from above and convey the vial between the vial placement unit and the sampler (Miyoshi teaches gripper claws 10/11 that move containers from the tray to the sampler; Fig. 1-5, [1]);
and a control unit configured to position the gripper at the target position when placing the vail (Miyoshi teaches that a CPU performs the operations of controlling the device; [1]);
where the gripper is configured to grip an outer peripheral surface of the vial by adjusting an opening degree of the gripper, wherein the target position setting unit is configured to set the gripper to have an opening degree corresponding to an outer diameter of the vial, as an auxiliary operation when the user performs positioning of the gripper (Miyoshi teaches determining the degree of opening based on an outer diameter of the cap/vial; [1], Fig. 7-8).
Note: The instant Claims contain a large amount of functional language (ex: “configured to…”, “for…”, 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.
Miyoshi does not specifically teach a target position setting unit configured to execute a teaching mode for setting a target position at which the gripper is to be placed when placing the vial at a predetermined position, enable a user to position the gripper to a position to be the target position in the teaching mode, and set a position of the gripper positioned by the user as the target position, and a control unit configured to position the gripper at the target position set by the target position setting unit when placing the vial at the predetermined position, wherein the target position setting unit is configured to execute, in the teaching mode, an auxiliary operation for visually assisting positioning of the gripper by the user when causing the user to perform positioning of the gripper to a position to be the target position. However, Farrelly teaches the analogous art of a laboratory gripper that moves specimen containers (Farrelly teaches a gripper moving specimen containers; [14, 15], Fig. 1-3, 7, 8) with a target position setting unit configured to execute a teaching mode for setting a target position at which the gripper is to be placed when placing the vial at a predetermined position, enable a user to position the gripper to a position to be the target position in the teaching mode, and set a position of the gripper positioned by the user as the target position, and a control unit configured to position the gripper at the target position set by the target position setting unit when placing the vial at the predetermined position, wherein the target position setting unit is configured to execute, in the teaching mode, an auxiliary operation for visually assisting positioning of the gripper by the user when causing the user to perform positioning of the gripper to a position to be the target position (Farrelly teaches teaching/calibration performed as a control program, where a target position is set and a user manually positions the gripper to be centered over the object to be gripped based on the visual marking patterns; [39, 42, 43, 50]. The visual markings represent an auxiliary operation as part of the calibration/teaching to correctly align the gripper. The gripper is then set by the calibration/teaching and then is subsequently used for operating; [50]). It would have been obvious to one of ordinary skill in the art to have modified the gripper for gripping sample containers of Miyoshi to have further included a calibration/teaching mode whereby a user helps to ensure that the gripper is centered on the specimen container via a visual auxiliary operation as in Farrelly because Farrelly teaches that the visual indicators help to ensure the gripper is calibrated for subsequent operations and to ensure that the gripper is centered on the object in which it is gripping (Farrelly; [50]).
Modified Miyoshi does not specifically teach a vial information storage unit configured to store information on the vial, wherein the gripper is configured to grip the vial by adjusting and using the information stored in the vial information storage unit. However, Noda teaches the analogous art of a gripper for an analyzer with a vial information storage unit configured to store information on the vial, wherein the gripper is configured to grip the vial by adjusting and using the information stored in the vial information storage unit (Noda teaches that a barcode on the container is read and that the barcode stores information of the diameter, where the gripper is operated based on the diameter read from barcode; claim 1, col. 5 line 62- col. 6 line 19). It would have been obvious to one of ordinary skill in the art to have modified the gripper that teaches and calibrates the gripping of containers with varying diameters in modified Miyoshi to have read the barcode to determine the diameter as in Noda because Noda teaches that this helps to determine how far to open the grippers and also helps to ensure that excessive force is not applied to larger containers (Noda; col. 5 line 62- col. 6 line 19).
As to claim 3, modified Miyoshi teaches the automatic sample injection device as recited in claim 1, wherein the target position setting unit is configured to determine the opening degree of the gripper when enabling the user to position the gripper, based on an outer diameter of a cap mounted on a top portion of the vial (Miyoshi teaches determining the degree of opening based on an outer diameter of the cap/vial; [1], Fig. 7-8. Further, the modification of the gripper to grip containers with varying diameters of Miyoshi to have adjusted the gripper based on the diameter of Noda has already been discussed above in claim 1).
As to claim 5, modified Miyoshi teaches the automatic sample injection device as recited in claim 1, wherein the gripper comprises a plurality of claws for gripping an outer peripheral surface of the vial, the plurality of claws being arranged on a same circumference as a circumference of the vial placement unit, and wherein the opening degree of the gripper is adjusted by changing a diameter of a circumference along which the plurality of claws is arranged, and wherein the gripper includes a visible marker at a center of a circumference along which the plurality of claws is arranged (As best understood, Miyoshi teaches a plurality of claws 10, where the degree of opening is based on changing the diameter, and with a marker 14/16 at the center that can be visually recognized; Fig. 6-8, 10, [1]).
As to claim 6, modified Miyoshi teaches the automatic sample injection device as recited in claim 1, wherein the vial placement unit and the sampler are provided as separate members, and wherein the conveyance unit is integrally provided to the vial placement unit (Miyoshi teaches the gripper conveyance unit 10/11 is integral to the vial placement unit 3, and that the sampler is separate; Figs. 1-5, [1]).
As to claim 7, modified Miyoshi teaches the automatic sample injection device as recited in claim 6, wherein the predetermined position is a position of a vial receiving unit provided to the sampler to convey the vial between the sampler and the conveyance unit (Miyoshi teaches the position at which the vial is picked up; Figs. 1-8, [1]. Further, the modification of the gripper of Miyoshi to rely on training the gripping position of Farrelly has already been discussed above in claim 1).
As to claim 8, modified Miyoshi teaches the automatic sample injection device as recited in claim 1, wherein the auxiliary operation is an operation for visually assisting the user to align a center of the gripper with a center of a cap mounted on a top portion of the vial to position the gripper (Miyoshi teaches picking up the container with a cap; Figs. 1-8, [1]. Further, the modification of the gripper which picks up the container with the cap of Miyoshi to rely on training the gripping position to be the center of the container based on visual markings of Farrelly has already been discussed above in claim 1).
Claim 5 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Miyoshi et al (Translation of JP H03-245059A; hereinafter “Miyoshi”; already of record) in view of Farrelly et al (US 20060047363; hereinafter “Farrelly”; already of record) in view of Noda et al (US 10274506; hereinafter “Noda”; already of record) in view of Ebi et al (US 20140297200; hereinafter “Ebi”).
As to claim 5, modified Miyoshi teaches the automatic sample injection device as recited in claim 1, wherein the gripper comprises a plurality of claws for gripping an outer peripheral surface of the vial, the plurality of claws being arranged on a same circumference as a circumference of the vial placement unit, and wherein the opening degree of the gripper is adjusted by changing a diameter of a circumference along which the plurality of claws is arranged, and wherein the gripper includes a visible marker at a center of a circumference along which the plurality of claws is arranged (As best understood, Miyoshi teaches a plurality of claws 10, where the degree of opening is based on changing the diameter, and with a marker 14/16 at the center that can be visually recognized; Fig. 6-8, 10, [1]).
If it is deemed that the vial placement unit is required to be circular, then modified Miyoshi does not teach that the vial placement unit has a circumference. However, Ebi teaches the analogous art of a vial placement unit from which vials are gripped (Ebit eaches that vials 5 are gripped by gripper 15a from the circumference of circular vial placement unit 18a; Fig. 2, [50-53, 151]). It would have been obvious to have changes the shape of the vial placement unit of modified Miyoshi to be circular as in Ebi because Ebi teaches that vial placement units are commonly formed as rotating discs/tables (Ebi; Fig. 2, [50-53, 151]). Further, it would have been obvious to change the shape of the vial placement unit of modified Miyoshi to have been circular as in Ebi to provide the advantage of a holder that was able to rotate rather than linearly translate depending on the space requirements and layout of the analytical system, since it has been held that changes in shape are not patentably distinct from prior art (MPEP 2144.04 IV).
Response to Arguments
Applicant’s arguments filed 1/9/26 have been considered, but are moot because the arguments are towards the amended claims and not the current grounds of rejection. However, because the examiner is relying on the same references, then the examiner has fully considered applicants arguments, but they are not persuasive.
Applicants argue on pages 9-10 that neither Miyoshi, Farrelly, or Noda teaches a vial information storage unit configured to store information on the vial or adjustin the gripping using the information stored in the vial. However, the examiner respectfully disagrees.
First, applicants argue against each of the references without accounting for the modification made in the prior art rejection. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Second, Miyoshi teaches the gripper is configured to grip an outer peripheral surface of the vial by adjusting an opening degree of the gripper, wherein the target position setting unit is configured to set the gripper to have an opening degree corresponding to an outer diameter of the vial, as an auxiliary operation when the user performs positioning of the gripper (Miyoshi teaches determining the degree of opening based on an outer diameter of the cap/vial; [1], Fig. 7-8), and although Miyoshi does not teach the teaching/calibrating, then Farrelly is used to teach the analogous art of a laboratory gripper that moves specimen containers (Farrelly teaches a gripper moving specimen containers; [14, 15], Fig. 1-3, 7, 8) with a target position setting unit configured to execute a teaching mode for setting a target position at which the gripper is to be placed when placing the vial at a predetermined position, enable a user to position the gripper to a position to be the target position in the teaching mode, and set a position of the gripper positioned by the user as the target position, and a control unit configured to position the gripper at the target position set by the target position setting unit when placing the vial at the predetermined position, wherein the target position setting unit is configured to execute, in the teaching mode, an auxiliary operation for visually assisting positioning of the gripper by the user when causing the user to perform positioning of the gripper to a position to be the target position (Farrelly teaches teaching/calibration performed as a control program, where a target position is set and a user manually positions the gripper to be centered over the object to be gripped based on the visual marking patterns; [39, 42, 43, 50]. The visual markings represent an auxiliary operation as part of the calibration/teaching to correctly align the gripper. The gripper is then set by the calibration/teaching and then is subsequently used for operating; [50]). It would have been obvious to one of ordinary skill in the art to have modified the gripper for gripping sample containers of Miyoshi to have further included a calibration/teaching mode whereby a user helps to ensure that the gripper is centered on the specimen container via a visual auxiliary operation as in Farrelly because Farrelly teaches that the visual indicators help to ensure the gripper is calibrated for subsequent operations and to ensure that the gripper is centered on the object in which it is gripping (Farrelly; [50]). Therefore, the modification of Miyoshi with Farrelly results in a gripper that teaches/calibrates as an initial operation.
Modified Miyoshi does not specifically teach a vial information storage unit configured to store information on the vial, wherein the gripper is configured to grip the vial by adjusting and using the information stored in the vial information storage unit. However, Noda teaches the analogous art of a gripper for an analyzer with a vial information storage unit configured to store information on the vial, wherein the gripper is configured to grip the vial by adjusting and using the information stored in the vial information storage unit (Noda teaches that a barcode on the container is read and that the barcode stores information of the diameter, where the gripper is operated based on the diameter read from barcode; claim 1, col. 5 line 62- col. 6 line 19). It would have been obvious to one of ordinary skill in the art to have modified the gripper that teaches and calibrates the gripping of containers with varying diameters in modified Miyoshi to have read the barcode to determine the diameter as in Noda because Noda teaches that this helps to determine how far to open the grippers and also helps to ensure that excessive force is not applied to larger containers (Noda; col. 5 line 62- col. 6 line 19). In other words, the modification results in the reading the vial information and adjusting the gripper accordingly in Noda to be part of the calibration/teaching operation of Miyoshi/Farrelly.
Other References Cited
The prior art of made of record and not relied upon is considered pertinent to applicant's disclosure include;
Kleinschmitt, D (US 20050283274; hereinafter “Kleinschmitt”; already of record) teaches the analogous art of a gripper with a light source configured to emit light vertically downward is provided at a center of the circumference along which the plurality of claws of the gripper is arranged, and wherein the target position setting unit is configured to turn on the light source of the gripper (Kleinschmitt teaches a light source 58 that is centered between the gripper claws; Figs. 3-9, [35, 43, 45, 47-50]). It would have been obvious to one of ordinary skill in the art to have modified the gripper that uses visual marks to calibrate of Miyoshi to include a light centered between the gripper as in Kleinschmitt because Kleinschmitt teaches that using a light centered between the gripper claws provides a light to indicate to an operator that the gripper is properly calibrated and aligned (Kleinschmitt; [47-50]) and Kleinschmitt teaches that the light centered between the gripper helps indicate that is co-axial with the gripper claw axis (Kleinschmitt; [45]) and achieves precise alignment (Kleinschmitt; [60, 61]).
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.
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/BENJAMIN R WHATLEY/Primary Examiner, Art Unit 1798