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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “202” has been used to designate two different elements in Fig. 3. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
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 12, 13 and 17 are 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.
Claim 12 is indefinite and ambiguous. The limitation stating “the dispensing nozzle moves only in the horizontal plane during washing and does not move vertically within the nozzle washing tank” renders the scope of the claim unclear. Specifically, it is ambiguous whether the applicant intends to claim structural elements of the automatic analyzer or method steps. In addition, it is unclear what specific instance and/or structural elements the applicant is trying to claim by reciting “does not move vertically within the nozzle washing tank,” because the present specification indicates that the dispensing nozzle moves in the z-direction (i.e., to a lower position). For purposes of examination, the examiner interprets “the dispensing nozzle moves only in the horizontal plane during washing and does not move vertically within the nozzle washing tank” as a process/intended use limitation of the automatic analyzer.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 12, 13 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sasao (US 5,279,794) in view of Kuroda (US 2012/0003731 A1) or Shimase et al. (US 2014/0377132 A1).
Regarding claim 12, Sasao teaches:
12. An automatic analyzer comprising:
a dispensing nozzle (e.g., 5) capable of dispensing a specimen or a reagent (C4/L7-39+); and
a nozzle washing tank (e.g., 103) capable of washing the dispensing nozzle (C2/L9-65+), wherein
the nozzle washing tank includes a spraying portion (e.g., 1b) capable of spraying washing water (e.g., 104) to the dispensing nozzle and an opening (see i.e., inner hollow portion of the washing body 1; the arcuate transfer route of the sample probe 5, C5/L1-16) capable of taking the dispensing nozzle in and out (see Fig. 3 for example),
the spraying portion includes a first spraying portion (i.e., outlet of 1b) disposed on a side of the nozzle washing tank and is capable of spraying the washing water from the first spraying portion downward at an angle toward a tip of the dispensing nozzle (see flow pattern shown in Fig. 3 for example),
the opening is provided along a track (e.g., 1a, 1d) along which the dispensing nozzle is movable in a horizontal plane of the dispensing nozzle on a side surface of the nozzle washing tank (see i.e., [...] the sample from the sample tube 4 is moved towards the body 1 of the washing unit 103 substantially horizontally in a plane through the operation of the sample arm 100a as shown by a position of reference numeral 5a, C5/L35-39), and the opening includes an extending portion (i.e., channel-shaped waterway 2 portion, C4/L61) extending outward from a surface of the nozzle washing tank along the track (see Fig. 2 for example),
the nozzle washing tank includes a roof capable of covering the nozzle washing tank on both sides of the track (see annotated Fig. 2), wherein a lower surface of the roof is an inclined surface in which a side closer to the track is higher than a side farther from the track (see Fig. 3 for example), and
a bottom surface of the extending portion is inclined toward the nozzle washing tank (see Fig. 3 for example).
Annotated Fig. 2 of Sasao (US 5,279,794)
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However, Sasao does not explicitly teach: the spraying portion includes a first spraying portion and a second spraying portion that are disposed on opposite sides of the nozzle washing tank and are configured such that the washing water from the first spraying portion and the second spraying portion sprays downward at an angle toward a tip of the dispensing nozzle,
Kuroda teaches: An automatic analyzer comprising:
a dispensing nozzle (e.g., 50) which dispenses a specimen or a reagent (¶ 0059+); and
a nozzle washing tank (e.g., 60) which washes the dispensing nozzle (¶ 0068-0071+), wherein
the nozzle washing tank includes a spraying portion (e.g., 61) spraying washing water (e.g. L2) to the dispensing nozzle and an opening (e.g., 60) for taking the dispensing nozzle in and out (see Figs. 4, 8 for example),
the spraying portion includes a first spraying portion (e.g., 61a) and a second spraying portion (e.g., 61a) that are disposed on opposite sides of the nozzle washing tank (see Fig. 8 for example) and are configured such that the washing water from the first spraying portion and the second spraying portion sprays downward at an angle toward a tip of the dispensing nozzle (see Fig. 8 for example), and
a bottom surface of the nozzle washing tank is inclined toward the nozzle washing tank (see ¶ 0072 for example).
Shimase et al. teach: An automatic analyzer comprising:
a dispensing nozzle (e.g., 2) which dispenses a specimen or a reagent (¶ 0045+); and
a nozzle washing tank (e.g., 110, 111) which washes the dispensing nozzle (¶ 0047+), wherein
the nozzle washing tank includes a spraying portion (e.g., 5) spraying washing water (¶ 0040+) to the dispensing nozzle and an opening (e.g., 3) for taking the dispensing nozzle in and out (see Fig. 2 for example),
the spraying portion includes a first spraying portion (e.g., 5) and a second spraying portion (e.g., 5) that are disposed on opposite sides of the nozzle washing tank (see Fig. 2 for example) and are configured such that the washing water from the first spraying portion and the second spraying portion sprays downward at an angle toward a tip of the dispensing nozzle (see Fig. 2 for example),
the nozzle washing tank includes a roof (e.g., 9) configured to cover the nozzle washing tank (see Fig. 4A for example), and
a bottom surface of the nozzle washing tank is inclined toward the nozzle washing tank (see Fig. 3 for example).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the nozzle washing tank of Sasao with the teachings of Kuroda, for the purpose of providing the spraying portion with a first spraying portion (e.g., 61a) and a second spraying portion (e.g., 61a) that are disposed on opposite sides of the nozzle washing tank (see Fig. 8 for example) and are configured such that the washing water from the first spraying portion and the second spraying portion sprays downward at an angle toward a tip of the dispensing nozzle (see Fig. 8 for example). Overall design would allow cutting the washing time and reducing the amount of washing water (Kuroda ¶ 0028); or Shimase et al., for the purpose of providing the spraying portion with a first spraying portion (e.g., 5) and a second spraying portion (e.g., 5) that are disposed on opposite sides of the nozzle washing tank (see Fig. 2 for example) and are configured such that the washing water from the first spraying portion and the second spraying portion sprays downward at an angle toward a tip of the dispensing nozzle (see Fig. 2 for example). Overall design would reduce maintenance frequency, as well as prevent the cleaning water from splashing (Shimase et al. ¶ 0068-0069). The Court stated that if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Id. at ___, 82 USPQ2d at 1396.
With regard to limitations in claims 12 and 17 (e.g., [...] which dispenses a specimen or a reagent, which washes the dispensing nozzle, [...] the washing water from the first spraying portion and the second spraying portion sprays downward at an angle toward a tip of the dispensing nozzle, [...] the dispensing nozzle moves only in the horizontal plane during washing and does not move vertically within the nozzle washing tank, etc.), these claim limitations are considered process or intended use limitations, which do not further delineate the structure of the claimed apparatus from that of the prior art. The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)). "Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim." Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Furthermore, "[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims." See In re Young, 75 F.2d *>996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115). Further, reciting “configured to” without identifying any structural differences between the structure in the claims and the structure disclosed by the prior art does not further limit the claims.
Regarding claims 13 and 17, modified Sasao teaches:
13. The automatic analyzer according to claim 12, wherein a width of the extending portion is narrower than a width of the nozzle washing tank (see annotated Fig. 2 for example).
17. The automatic analyzer according to claim 12, wherein the nozzle washing tank has a bottom portion inclined toward a drain pipe (e.g., 7) capable of discharging the washing water (see Fig. 2 for example).
Claim(s) 12 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shinohara et al. (JP 2011-21993, see Google translated version) in view of Kuroda (US 2012/0003731 A1) or Shimase et al. (US 2014/0377132 A1).
Regarding claim 12, Shinohara et al. teach:
12. An automatic analyzer comprising:
a dispensing nozzle (e.g., 142c) capable of dispensing a specimen or a reagent (see Description P3-4); and
a nozzle washing tank (e.g., 200) capable of washing the dispensing nozzle (see Description P3-4), wherein
the nozzle washing tank includes a spraying portion (e.g., 208) spraying washing water to the dispensing nozzle and an opening capable of taking the dispensing nozzle in and out (see Figs. 3-4 for example),
the spraying portion includes a first spraying portion (e.g., 208) and a second spraying portion (e.g., 208) that are disposed on opposite sides of the nozzle washing tank (see Fig. 3 for example) and are capable of spraying the washing water from the first spraying portion and the second spraying portion downward at an angle (it is noted that discharged fluid from pipes 208 would flow downward at an angle toward a tip of the dispensing nozzle),
the opening is provided along a track (e.g., cleaning mechanism guide 201) along which the dispensing nozzle is movable in a horizontal plane of the dispensing nozzle on a side surface of the nozzle washing tank (see i.e., The cleaning mechanism that is moved by the cleaning mechanism moving means is guided by a rail that is disposed on a rotation trajectory of the probe by the probe moving means, P2/~¶ 5; The cleaning mechanism guide 201 is formed in a rail shape, and is provided so that the interval is slightly wider than the width of the moving base 204 in the cleaning mechanism 200 as shown in FIG., P7/¶ 4), and the opening includes an extending portion extending outward from a surface of the nozzle washing tank along the track (see Figs. 2, 6 for example),
the nozzle washing tank includes a roof (see e.g., walls 202 forming a roof in Fig. 3) capable of covering the nozzle washing tank on both sides of the track (see i.e., the cleaning mechanism 200 is formed so as to be surrounded by the walls 202 and 202. P6/¶ 6), wherein a lower surface of the roof is an angled surface in which a side closer to the track is higher than a side farther from the track (see the wall portions 202 (roof) are erected in a direction away from the top surface of the automatic analyzer 100 on which the reaction disk 130 and the disk sampler 141 are installed, and are disposed to face each other (P6/¶ 6), and a lower surface of the wall portions 202 (roof) is positioned at an angle to guide the discharge ports 206 (P7/¶ 2, 8 & Fig. 3), and
a bottom surface of the extending portion is inclined toward the nozzle washing tank (see Fig. 3 for example).
However, Shinohara et al. do not explicitly teach: the first spraying portion and the second spraying portion are configured such that the washing water from the first spraying portion and the second spraying portion sprays downward at an angle toward a tip of the dispensing nozzle.
See Kuroda & Shimase et al. above.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the nozzle washing tank of Shinohara et al. with the teachings of Kuroda, for the purpose of providing the first spraying portion and the second spraying portion are configured such that the washing water from the first spraying portion and the second spraying portion sprays downward at an angle toward a tip of the dispensing nozzle (see Fig. 8 for example). Overall design would allow cutting the washing time and reducing the amount of washing water (Kuroda ¶ 0028); or Shimase et al., for the purpose of providing the first spraying portion and the second spraying portion are configured such that the washing water from the first spraying portion and the second spraying portion sprays downward at an angle toward a tip of the dispensing nozzle (see Fig. 2 for example). Overall design would reduce maintenance frequency, as well as prevent the cleaning water from splashing (Shimase et al. ¶ 0068-0069). The Court stated that if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Id. at ___, 82 USPQ2d at 1396.
Regarding claim 12, Shinohara et al. do not explicitly teach: wherein a lower surface of the roof is an inclined surface. It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the wall portions 202 (roof), wherein a lower surface of the roof is an inclined surface in which a side closer to the track is higher than a side farther from the track, so as to direct the cleaning liquid from the discharge ports 206 towards the sampling probe 142c. This would further reduce splashing of the cleaning liquid if it is being discharged directly to one another. Varying a surface angle is merely a design choice that would be prima facie obvious to one of ordinary skill in the art according the cleaning liquid from the discharge ports being directed.
With regard to limitations in claims 12 and 17 (e.g., [...] which dispenses a specimen or a reagent, which washes the dispensing nozzle, [...] the washing water from the first spraying portion and the second spraying portion sprays downward at an angle toward a tip of the dispensing nozzle, [...] the dispensing nozzle moves only in the horizontal plane during washing and does not move vertically within the nozzle washing tank, etc.), these claim limitations are considered process or intended use limitations, which do not further delineate the structure of the claimed apparatus from that of the prior art. The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)). "Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim." Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Furthermore, "[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims." See In re Young, 75 F.2d *>996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115). Further, reciting “configured to” without identifying any structural differences between the structure in the claims and the structure disclosed by the prior art does not further limit the claims.
Regarding claim 17, modified Shinohara et al. teach: 17. The automatic analyzer according to claim 12, wherein the nozzle washing tank has a bottom portion inclined toward a drain pipe for discharging the washing water (see Fig. 3 & P3/¶ 5 for example).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shinohara et al. (JP 2011-21993, see Google translated version) in view of Kuroda (US 2012/0003731 A1) or Shimase et al. (US 2014/0377132 A1), and further in view of Sasao (US 5,279,794).
Regarding claim 13, modified Shinohara et al. do not explicitly teach: wherein a width of the extending portion is narrower than a width of the nozzle washing tank.
See Sasao above.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to further modify the nozzle washing tank of Shinohara et al. with a width of the extending portion is narrower than a width of the nozzle washing tank, as taught by Sasao et al. since such a modification would have involved a mere change in the size (or dimension) of a component. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claim is a recitation of relative dimensions of the claimed device. As stated by the Court in KSR, “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one”, 550 U.S. at ___, 82 USPQ2d at 1396 (emphasis added), or solves a problem which is different from that which the applicant was trying to solve, may also be considered for the purposes of 35 U.S.C. 103. See MPEP 2141.
Response to Arguments
Applicant’s arguments have been considered but are moot in view of the new ground(s) of rejection.
The amendments have been considered and new 35 USC § 112 rejections have been added.
In response to the Applicant's arguments to Sasao (US 5,279,794) in view of Kuroda (US 2012/0003731 A1) or Shimase et al. (US 2014/0377132 A1), a recitation of the intended use 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. The Courts have held that limitations regarding the contents, intended use or manner of operating an apparatus do not further limit the patentability of apparatus claims. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488,492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)). "Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim." Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Furthermore, "[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims." See In re Young, 75 F.2d *>996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Further, reciting “configured to” without identifying any structural differences between the structure in the claims and the structure disclosed by the prior art does not further limit the claims.
The Examiner notes that the claim does not require a specific angle of the spraying portions. The claim is sufficiently broad to have been properly rejected as set forth above because it recites, “[...] configured such that the washing water from the first spraying portion and the second spraying portion sprays downward at an angle toward a tip of the dispensing nozzle.”; and any angle at which the washing water is sprayed toward a tip of the dispensing nozzle meets this limitation.
In response to the Applicant's arguments Shinohara et al. (JP 2011-21993, see Google translated version) in view of Kuroda (US 2012/0003731 A1) or Shimase et al. (US 2014/0377132 A1), the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the wall portions 202 (roof), wherein a lower surface of the roof is an inclined surface in which a side closer to the track is higher than a side farther from the track, so as to direct the cleaning liquid from the discharge ports 206 towards the sampling probe 142c. This would further reduce splashing of the cleaning liquid if it is being discharged directly to one another. Varying a surface angle is merely a design choice that would be prima facie obvious to one of ordinary skill in the art according the cleaning liquid from the discharge ports being directed.
Applicant is thanked for their thoughtful amendments to the claims.
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 DEAN KWAK whose telephone number is (571)270-7072. The examiner can normally be reached M-TH, 4:30 am - 2:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, LUAN VAN can be reached at (571) 272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEAN KWAK/Primary Examiner, Art Unit 1795
DEAN KWAK
Primary Examiner
Art Unit 1795
