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 .
Response to Amendment
The 112b rejection of claim 1 has been withdrawn in view of the amendments.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:
claim 1 – “liquid injecting portion” is deemed to read on a port or equivalent structure capable of allowing liquid to flow
claim 1 – “liquid discharging portion” is deemed to read on a port or equivalent structure capable of allowing liquid to flow
claim 5 line 2 – “adhesion preventing unit” is deemed to read on a spacer (Fig. 8B) or equivalent structure for forming a space inside of the housing portion
claim 14 line 2 – “adhesion preventing unit” is deemed to read on a spacer (Fig. 8B) or equivalent structure for forming a space inside of the housing portion.
claim 15 line 2 – “adhesion preventing unit” is deemed to read on a spacer (Fig. 8B) or equivalent structure for forming a space inside of the housing portion
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.
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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 23 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The disclosure does not support the negative limitation “configured to not house the container”, per MPEP2173.05(i) the mere absence of a positive recitation is not basis for an exclusion.
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 (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.
Claims 1, 3-5, 12, 14-15, 21, and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gilar et al (US20100132799A1 published 06/03/2010; hereinafter Gilar).
Regarding claim 1, Gilar teaches a frozen egg culturing device (a device 10’ – Fig. 5), comprising:
a housing portion (a vessel body 12' – Fig. 5);
a liquid injecting portion (a housing inlet 62 – Fig. 5);
a liquid discharging portion (a first chamber opening 26’ – Fig. 5); and
an egg outflow preventing portion (a dispenser housing 52 – Fig. 5), wherein
the egg outflow preventing portion is placed directly in the housing portion (the dispenser housing 52 is placed directly in the vessel body 12’ – Fig. 5) to partition the housing portion between a portion configured to house a container for containing a frozen egg (“configured to house a container for containing a frozen egg” does not positively recite the container or egg; per MPEP 2115 material or article worked upon does not impart patentability to the claims) (a first portion of the vessel body 12' including chamber 22’ capable of housing a container containing a frozen egg – see annotated Fig. 5 below) and a portion on a side of the liquid injecting portion and the liquid discharging portion (“a portion on a side of the liquid injecting portion and the liquid discharging portion” is interpreted to be a side located outside of the housing portion since the claim does not explicitly require the claimed side portion to be inside the housing portion) (a second portion including inlet 62 and chamber opening 26’ – see annotated Fig. 5 below) (the dispenser housing 52 creates the partition between the first and second portions via the interface between surface 54 and interior wall of chamber 20 – paragraph 0069; see annotated Fig. 5 below).
[AltContent: rect]
Regarding claim 3, Gilar teaches the frozen egg culturing device according to claim 1, wherein the container for containing the frozen egg has a shape of letter V in a front view thereof (the second chamber 22’ is capable of housing a container having the container a shape of letter V – Fig. 5).
Regarding claim 4, Gilar teaches the frozen egg culturing device according to 1, wherein the frozen egg is a frozen mammalian egg (the second chamber 22’ is capable of holding a frozen mammalian egg – Fig. 5).
Regarding claim 5, Gilar teaches the frozen egg culturing device according to 1, further comprising an adhesion preventing unit in the housing portion (an abutment ridge 131 forms a space inside of the vessel body 12’ – Fig. 5).
Regarding claim 12, Gilar teaches the frozen egg culturing device according to claim 3, wherein the frozen egg is a frozen mammalian egg (the sample dispenser 50 is capable of holding a frozen mammalian egg – Fig. 5).
Regarding claim 14, Gilar teaches the frozen egg culturing device according to claim 3, further comprising an adhesion preventing unit in the housing portion (an abutment ridge 131 in the vessel body 12' suspending the sample dispenser 50 and forming a space inside of the vessel body 12’ – Fig. 5).
Regarding claim 15, Gilar teaches the frozen egg culturing device according to claim 4, further comprising an adhesion preventing unit in the housing portion (an abutment ridge 131 forming a space inside of the vessel body 12’ – Fig. 5).
Regarding claim 21, Gilar teaches the frozen egg culturing device according to claim 1, wherein the frozen egg culturing device has a bag shape (the device 10’ is deemed to have a bag shape because a bag can have a cylindrical shape – Fig. 5).
Regarding claim 23, Gilar teaches the frozen egg culturing device according to claim 1, wherein the portion on the side of the liquid injecting portion and the liquid discharging portion is configured to not house the container (the second portion of the vessel body 12’ is capable of not housing the container – Fig. 5).
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.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Gilar in view of Haywood et al (US20120058553A1 published 03/08/2012; hereinafter Haywood) .
Regarding claim 22, Gilar teaches the frozen egg culturing device according to claim 1, the egg outflow preventing portion is placed in a form of a wall (the dispenser housing 52 is in a form of a wall – Fig. 5) to partition the housing portion between the portion configured to house the container and the portion on the side of the liquid injection potion and the liquid discharging portion (the dispenser housing 52 partitions the vessel body 12' between the first and second portions – Fig. 5).
However, Gilar does not teach wherein the egg outflow preventing portion has a mesh structure.
Haywood teaches a device for transporting a biological sample wherein the egg outflow preventing portion (a sample holder 16 is dimensioned to be received in container 12 and to support a biological sample – paragraph 96) has a mesh structure (permeable mesh 92 and 94 preferably have a sufficiently small pore size to enable holder 16 to strain small pieces of the biological sample – paragraph 110 and Fig. 1). Haywood teaches to use the mesh so that the holder with sample can be immediately put into a container assembly to immerse the sample in the reagent for transport from remote locations (paragraph 114).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the dispenser housing 52, as taught by Gilar, with the mesh structure, taught by Haywood, to gain the advantage where the devices 10’ can be put into a container assembly for transport from remote locations. One of ordinary skill would have expected that this modification could have been performed with a reasonable expectation of success because Gilar and Haywood teach containers for biological samples.
Response to Arguments
Applicant's arguments filed 03/11/2026 have been fully considered but they are not persuasive.
Point 1: The applicant’s argument regarding Gilar where “the egg outflow preventing portion of the present invention is not provided in the container for containing a frozen egg" is not persuasive.
Applicant’s arguments with respect to Gilar have been considered, and the prior art rejection has been modified in order to address the amended claim language. The examiner has presented a new interpretation where the “dispenser housing 52” reads on the “egg outflow preventing portion”.
Furthermore, the examiner points out that the limitation “a container for containing a frozen egg” is not positively recited and per MPEP 2115 material or article worked upon does not impart patentability 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 TINGCHEN SHI whose telephone number is (571)272-2538. The examiner can normally be reached M-F 9am-6pm.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/T.C.S./ Examiner, Art Unit 1796
/CHARLES CAPOZZI/ Supervisory Patent Examiner, Art Unit 1798
Prosecution Insights