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 most recent claim set submitted on 14 JULY 2023 is acknowledged and considered.
In the claim set, the claims have status identifiers and Claims 1-15 are presented.
Current pending claims are Claims 1-15 and are considered on the merits below.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02 FEBRUARY 2023 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
The information disclosure statement (IDS) submitted on 20 SEPTEMER 2024 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
The information disclosure statement (IDS) submitted on 03 DECEMBER 2024 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
The information disclosure statement (IDS) submitted on 23 FEBRUARY 2026 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: character 601 (the characters 601A-D are present though). Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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.
Specification
The disclosure is objected to because of the following informalities:
There is missing close parenthesis for (PVC) in [00105].
Appropriate correction is required.
Claim Objections
Claim 13 is objected to because of the following informalities:
There is a missing close parenthesis at the instance of PVC.
In addition, in Claim 13, there is awkward wording from line 1-2 where it recites ‘the liquid capsule is a made from…’ ; should be ‘the liquid capsule is made from…’?
Appropriate correction is required.
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 6 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.
In the instant claim, it is unclear in the wording of “to provide fluid communication between the liquid capsule”, between the liquid capsule and ….? Is there a missing element after the liquid element? Or should the wording be “to provide fluid communication from the liquid capsule”?
Claims 9 and 10 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 9 recites the limitation "the surface" . There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitation "the liquid channel" . There is insufficient antecedent basis for this limitation in the claim.
Claim 13 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.
In Claim 13 it is unclear if the liquid capsule is made from polyethylene, polypropylene… or if the body of the liquid capsule is made from polyethylene, polypropylene…?
Claim 14 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.
In the instant claim where it reads ‘and a liquid capsule according to claim 11’ is unclear. A liquid capsule is positively claimed in the preamble of Claim 11. In Claim 14, it should read ‘and the liquid capsule according to claim 11’ for proper reference back to Claim 11.
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:
A “liquid releasing mechanism ..to release the liquid in the liquid capsule…” in Claim 1.
A mechanism does not connote any particular structure. The mechanism as defined by the specification and Claim 3 is a hinged element or a piercing element as defined in Claim 5.
A “piercing element ..to release liquid …’ in Claim 5.
An element does not connote any particular structure. The element is in the form a needle, [0083].
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 § 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.
(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 1-15 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by WEIGUM, US Publication No. 2008/0038738 A1, submitted on the Information Disclosure Statement on 03 DECEMBER 2024; US Patent Application Publications Cite No.3.
Regarding Claim 1, the WEIGUM, US Publication No. 2008/0038738 A1, testing device for analyte measurements, Figure 4, abstract, the testing device comprising:
a body and a liquid releasing mechanism, Figure 4, cartridge 100 and fluid packs 152, 152’, [0167], the body comprising a reaction chamber and a capsule receiving aperture for receiving a liquid capsule containing a liquid, Figure 4, region 108, fluid packages 152, 152’, [0167], wherein the reaction chamber and capsule receiving aperture are in fluid communication with each other, Figure 4, communication via channels, [0167];
the body further comprising at least one gas inlet and at least one gas outlet, [0090, 0099, 0131], sample is gaseous sample, [0147], vent 140 as gas outlet, with inlet wherein the gas inlet is arranged to receive a gas under test, Figure 30, inlet 246/outlet 240, [0240].
WEIGUM further discloses wherein the body further comprises: at least one liquid store in communication with the reaction chamber, wherein the liquid store is arranged to receive excess liquid from the liquid in the liquid capsule during the test, Figure 4, [0021], overflow reservoir and/or waste reservoir, [0021, 0128, 034, 0135, 0136, 0156], reservoir 132/134.
The language directed at “wherein the reaction chamber is arranged to receive, during a test of the gas under test, a first transparent plate and a second transparent plate with a test paper positioned between the first transparent plate and the second transparent plate” and “wherein the liquid releasing mechanism is arranged to release the liquid in the liquid capsule into the reaction chamber during the test” is directed at language towards the intended use of the cassette and directed towards a manner of operating the device.
WEIGUM discloses wherein the liquid releasing mechanism is arranged to release the liquid in the liquid capsule into the reaction chamber during the test, Figure 10 and 11, [0196].
It is brought to Applicant’s attention that the while the features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). As rejected above the Claim 1 is anticipated and the functional limitation is an inherent characteristics of the prior art.
In addition, 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) . The language directed “wherein the reaction chamber is arranged to receive, during a test of the gas under test, a first transparent plate and a second transparent plate with a test paper positioned between the first transparent plate and the second transparent plate” and “wherein the liquid releasing mechanism is arranged to release the liquid in the liquid capsule into the reaction chamber during the test” is directed towards language of a manner of operating the device. 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 WEIGUM anticipates the cassette and all the structural limitation of the claim.
Additional Disclosures Included are: Claim 3: wherein the testing device of claim 1, wherein the liquid releasing mechanism comprises a hinged element that is hingedly connected to the body, and a protrusion positioned on the hinged element that is arranged to enter the capsule receiving aperture when the hinged element is hingedly moved relative to the body to engage with the liquid capsule and squeeze out the liquid into the reaction chamber, Figure 10-12, [0196-197].; Claim 4: wherein the testing device of claim 1, wherein the capsule receiving aperture comprises a capsule chamber located in the body, wherein the capsule chamber is in fluid communication with the reaction chamber via a capsule fluid channel, Figure 3 and 4, [0166, 0167].; Claim 5: wherein the testing device of claim 1, wherein the liquid releasing mechanism comprises a piercing element that is arranged to release the liquid in the liquid capsule when the liquid capsule is provided to the capsule receiving aperture, Figure 10-12, [0196-197].; Claim 6: wherein the testing device of claim 5, wherein the piercing element comprises at least one hollow channel through the piercing element to provide fluid communication between the liquid capsule, Figure 10-12, [0196-197].; Claim 7: wherein the testing device of claim 1, wherein the capsule receiving aperture is an aperture in the side of the body that is in fluid communication with the reaction chamber, the capsule receiving aperture comprising an aperture thread that corresponds with a capsule thread on the liquid capsule, Figure 4, fluid delivery system 150 is in communication with detection region 108, Figure 10-12.; Claim 8: wherein the testing device of claim 1, wherein the liquid store comprises at least one liquid channel and at least one liquid chamber, wherein the liquid channel is in fluid communication with the reaction chamber, and the liquid channel is arranged to receive excess liquid from the liquid in the liquid capsule during the test; and the liquid chamber is in fluid communication with the liquid channel to receive and store the excess liquid, Figure 4, [0021], overflow reservoir and/or waste reservoir, [0021, 0128, 034, 0135, 0136, 0156], reservoir 132/134.; Claim 9: wherein the testing device of claim 8, wherein the liquid channel is arranged around a circumference of the reaction chamber and positioned below the surface of the test paper when in use, Figure 30, [0132, 0238] ; Claim 10: wherein the testing device of claim 1, wherein the liquid channel has one of an annular, rectangular, circular or elliptical shape, [0100], Figure 4, 30.
Regarding Claim 2, the reference WEIGUM discloses wherein the reaction chamber is arranged to detachably connect to a first transparent plate at an upper surface of the reaction chamber and detachably connect to a second transparent plate at a lower surface of the reaction chamber, Figure 3 and 4, [0163, 0164] and the remainer of the instant claim language is directed the intended use of the cassette and directed towards a manner of operating the device.
It is brought to Applicant’s attention that the while the features of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997). As rejected above the Claim 1 is anticipated and the functional limitation is an inherent characteristics of the prior art.
In addition, 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) . The language directed “wherein during a test of the gas under test, the second transparent plate is arranged to receive a test paper positioned upon the second transparent plate and between the first transparent plate and the second transparent plate” is directed towards language of a manner of operating the device. 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 WEIGUM anticipates the cassette and all the structural limitation of the claim.
Applicant’s invention is directed towards a device, a liquid capsule for use with a testing device.
Regarding Claim 11, the reference WEIGUM discloses a liquid capsule for use with the testing device of claim 1, See Rejection to Claim 1 above, wherein the liquid capsule comprises a body forming an enclosure for containing a liquid, Figure 10-12, 18-20, 22A, 22B, a nozzle with an opening that is in fluid communication with the enclosure, Figure 20, at bottom of a accordion shape has nozzle at bottom, [0211], and a seal placed across the opening to retain the liquid inside the enclosure, wherein the seal is arranged to release the liquid upon either i) the body being deformed and/or ii) the seal being penetrated by a piercing element of the testing device, [0198].
Additional Disclosures Included are: Claim 12: wherein the liquid capsule of claim 11, wherein the seal is one of a flexible metal layer, a metal layer, a plastic laminate layer, a rubber seal, a plastic film and a one way silicone valve, [0198, 0208, 0213].; and Claim 13: wherein the liquid capsule of claim 11, wherein the liquid capsule is a made from polyethylene, polypropylene (PP), polytetrafluoroethylene (PTFE), polybutylene terephthalate (PBT), polyamide (PA) or polyvinyl chloride (PVC), [0191].
Applicant’s invention is directed towards a device, a test kit.
Regarding Claim 14, the WEIGUM test kit, Figure 4, comprising a testing device of claim 1, See Rejection to Claim 1 above, and further comprising at least one of a test paper, at least two transparent sheets, [0163, 0240, 0243], and a liquid capsule according to of claims 11, See Rejection to Claim 11 above.
Additional Disclosures Included are: Claim 15: wherein the test kit of claim 14, wherein the at least two transparent sheets are polymethyl methacrylate sheets, [0243, 0249, 0393, 0394, 0413, 0422].
Conclusion
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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CTM
/CHRISTINE T MUI/Primary Examiner, Art Unit 1797