DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
The claim set submitted on 09 JULY 2026 is acknowledged and considered. In the claim set, Claims 1 and 8 are ‘Currently Amended’; Claims 5-7 and 9 are ‘Original’; and Claims 2-4 and 10 are ‘Canceled’.
Current pending claims are Claims 1 and 5-9 and are considered on the merits below.
Response to Arguments
Applicant's arguments filed 09 JULY 2026 have been fully considered but they are not persuasive.
In the REMARKS filed on 09 JULY 2026 Applicant asserts the ‘Yoshida does not disclose all the limitations of amended claim1. Specifically, Yoshida does not expressly or inherently disclose "wherein the control device causes the display unit to display a setting screen for setting the unique identification information ... wherein the control device causes the display unit to display a read-write screen on which the cumulative information is readable and writable.".’; Examiner respectfully disagrees.
Amended Claim 1 recites claim language which was previously presented in Claim 2 and 3.
In the amended portion of Claim 1 (original Claim 2 and Claim 3), the language presented includes the limitation of ‘a display unit configured to display information of the automatic analysis system’ which has been given patentable weight. In the Non-Final Office Action on 23 DECEMBER 2025, in the 112(f) analysis, the display unit is defined in [0047] of the specification. YOSHIDA discloses this display unit as cited by the Examiner in Figure 2, [0030-0031, 0034].
The language directed to "wherein the control device causes the display unit to display a setting screen for setting the unique identification information ... wherein the control device causes the display unit to display a read-write screen on which the cumulative information is readable and writable." is now in Claim 1 and was originally in Claims 2 and 3. This language is directed to a method intended use of the apparatus rather than a structural feature that accomplishes these functions.
Applicant is reminded that an “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) .
The instant claim language does not positively claim a functionality of the control device but what it could do. The claim is absent any language of what the control device is programmed to do.
Even if Applicant amended the claim language such that the control device is ‘programmed to’ or ‘configured to’ perform these function, the citations that the Examiner had previous cited teaches these limitations.
In [0030-0031 and 0034], there is operation unit which includes a keyboard, mouse and other device; these elements read on “the control device causes the display unit to display a setting screen for setting the unique identification information”. Keyboards are known in the art for inputting information ‘for setting unique identification information’. In addition, the operation unit includes a keyboard, mouse and other device and in [0031], an information communication terminal 130 is also constructed based on a PC including a CPU, RAM, hard disk and other device, reads on ‘wherein the control device causes the display unit to display a read-write screen on which the cumulative information is readable and writable.’ It is known in the art that at least a RAM is inherently a read-write memory.
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 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.
Claims 1, 5 and 8-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by YOSHIDA, EP 3 410 442 A1, submitted on the Information Disclosure Statement on 29 OCTOBER 2024.
Applicant’s invention is directed towards a device, an automatic analyzer.
Regarding Claim 1, the YOSHIDA reference discloses an automatic analysis system, Figure 1, [0028, 0029], abstract, system, comprising:
two or more analyzers having unique identification information and cumulative information associated with the unique identification information, and configured to analyze a sample, Figure 1, 114a-c, detection units, [0007, 0030] with module identifier, [0013] ; and
a control device, [0029, 0032], Figure 1, management server 150, configured to control operations of the analyzers and manage the unique identification information and the cumulative information of each of the analyzers, [0032], management server 150 includes controller 151, as well as information communication terminal 150 and LC information storage section 152, and
a display unit configured to display information of the automatic analysis system, wherein the control device causes the display unit to display a setting screen for setting the unique identification information, Figure 2, [0030-0031, 0034],
wherein, in response to detecting a newly introduced analyzer that is introduced into the automatic analysis system, [0022], the analyzing device management system is configured to…the module transfer detecting means … transfer of a new operation module, i.e. 111a-c, 112a-c, 113a-c, 1114a-c, (interpreted to an analyzer, [0016, 0033]), the control device is configured to take over the cumulative information that the newly introduced analyzer has in a pre-rearrangement system based on the unique identification information, and manage cumulative information in a new system including the newly introduced analyzer based on the taken-over cumulative information, [0022], information managing means has function of storing new module identifier of a new operation module in the information storing means (information manager 163, [0031], if it is judged by the module transfer detecting means that a transfer of the new operation module has occurred, and wherein the control device is configured to write and read the unique identification information and the cumulative information to an external storage medium, [0022, 0032], controller controls the reading and writing of data from and in the storage sections 152-154 as well as achieves basic management functions, and
wherein the control device causes the display unit to display a read-write screen on which the cumulative information is readable and writable, Figure 2, [0030-0032].
Additional Disclosures Included are: Claim 5: wherein the automatic analysis system according to claim 1, further comprising: an internal record medium, wherein the control device records a device serial number on the internal record medium as the unique identification information, [0032]. ; Claim 8: wherein the automatic analysis system according to claim 1, wherein the control device is configured to, transmit the cumulative information to a record medium of a host computer connected to the automatic analysis system via a network, and manage the cumulative information on the record medium of the host computer, Figure 1, 6-8, [0004, 0007, 0029, 0032].; and Claim 9: wherein the automatic analysis system according to claim 8, wherein the control device is configured to, transmit the unique identification information input on the read-write screen to the host computer, [0034], Figure 2, information stored in the storage section 152-154 of the management server 150 can be read by the controller 151 and transmitted through the Internet 140 to the information communication terminal 130, to be displayed on the screen of the display unit , and when the record medium of the host computer includes the cumulative information associated with the unique identification information, receive the relevant cumulative information, [0034], displayed on the screen of the display unit connected to the information communication terminal 130, [0037], updating of information is considered to be cumulative information.
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 6 is rejected under 35 U.S.C. 103 as being unpatentable over YOSHIDA, EP 3 410 442 A1, submitted on the Information Disclosure Statement on 29 OCTOBER 2024, and further in view of AKUTSU, US Publication No. 2019/0317119 A1.
Regarding Claim 6, the reference YOSHIDA discloses the claimed invention, but is silent in regards to the system according to claim 1, further comprising: a barcode reader, wherein the control device is configured to write out the unique identification information as a barcode, and manage the bar-coded unique identification information read by the barcode reader.
The AKUTSU reference discloses an automatic analysis system, Figure 1, automatic analysis device 100, [0022], comprising:
two or more analyzers having unique identification information and cumulative information associated with the unique identification information, abstract, Figure 1 and 9-10, [0007, 0032], in graphs, the different patterns are the two analyzers/analysis occurring, and configured to analyze a sample, [0058]; and
a control device configured to control operations of the analyzers and manage the unique identification information and the cumulative information of each of the analyzers, Figure 1 and 2, control device 4 (control unit), [0022, 0035, 0036], wherein when the analyzers in a system are rearranged, the control device takes over the cumulative information that a newly introduced analyzer has in a pre-rearrangement system based on the unique identification information, and manages cumulative information in a new system based on the taken-over cumulative information, [0032, 0033-0038],
further comprising: a barcode reader, Figure 3, [0031], wherein the control device is configured to write out the unique identification information as a barcode, and manage the bar-coded unique identification information read by the barcode reader, Figure 7, [0046].
It would be obvious to one having ordinary skill in the art before the effective filing date to modify the claimed invention of YOSHIDA to include the barcode reader as taught by AKUTSU to decrease the turnaround time where there are a lot of specimens to be tested, [0054].
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over YOSHIDA, EP 3 410 442 A1, submitted on the Information Disclosure Statement on 29 OCTOBER 2024, and further in view of SHIBITA, US Publication No. 2012/0003121 A1.
Regarding Claim 7, the reference YOSHIDA discloses the claimed invention, but is silent in regards to wherein the system according to claim 1, wherein the external storage medium is one or more of a USB media, a CD media, and a DVD media.
SHIBATA discloses an automatic analysis system, abstract, Figure 1, comprising:
two or more analyzers having unique identification information and cumulative information associated with the unique identification information, Figure 1, 5a5b, [0023, 0024], and configured to analyze a sample, [0023, 0024]; and
a control device configured to control operations of the analyzers and manage the unique identification information and the cumulative information of each of the analyzers, Figure 1, control unit 12, [0023, 0024, 0027, 0028], wherein when the analyzers in a system are rearranged, the control device takes over the cumulative information that a newly introduced analyzer has in a pre-rearrangement system based on the unique identification information, and manages cumulative information in a new system based on the taken-over cumulative information, [0027-0029], wherein the control device is able to write and read the unique identification information and the cumulative information to an external storage medium, [0027-0030].
SHIBITA further teaches the memory device is configured to be downloaded by a portable disk drive from a portable recording medium such as a DVD, or a CD-ROM, [0029, 0030].
It would be obvious to one having ordinary skill in the art before the effective filing date to modify the claimed invention of YOSHIDA to include the external storage medium is of one or more of a USB media, a CD media, and a DVD media as taught by SHIBITA to have a media that is portable to be used in more than one location and/or in different device, [0029].
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE T MUI whose telephone number is (571)270-3243. The examiner can normally be reached M-Th 5:30 -15:30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, LYLE ALEXANDER can be reached at (571) 272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CTM
/CHRISTINE T MUI/Primary Examiner, Art Unit 1797
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