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 .
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 capturing unit” in claims 5-6, associated with branch holes 321 [see Fig. 11; ¶0046];
“an injection unit” in claims 13-14, associated structure is indefinite [see rejection under 35 U.S.C. 112(b) below];
“a first discharge unit” in claims 13-14, associated structure is indefinite [see rejection under 35 U.S.C. 112(b) below];
“a second discharge unit” in claims 13-14, associated structure is indefinite [see rejection under 35 U.S.C. 112(b) below];
“a first flow path forming unit” in claims 13-14, associated with a conduit connecting the first flow path 21 and the first discharge unit 202 [see 202A in Fig. 1; ¶0082];
“a second flow path forming unit” in claims 13-14, associated with a conduit connecting the second flow path 22 and the second discharge unit 203 [see 203A in Fig. 1; ¶0082].
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 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.
Claims 12-16 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.
Regarding claim 12,
Claim 12 depends from claim 10, wherein claim 10 defines that the first axis is parallel to a vertical direction and claim 12 further defines that the third axis is parallel to a vertical direction. It is seemingly contradictory that the first and third axes are both parallel to a vertical direction given that independent claim 1 defines that the third axis intersects a plane including the first axis and the second axis. The scope of the claim cannot be ascertained and is therefore rendered indefinite.
Regarding claims 13-14,
Claim limitations “an injection unit”, “a first discharge unit”, and “a second discharge unit” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Upon review, the disclosure is devoid of any structure that performs the functions in the claim. The descriptions provided by the specification with regard to these claim limitations merely define their function but do not recite any associated structure. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Regarding claim 15,
Line 2 recites “the particle removal apparatus according to claim 8” which lacks proper antecedent basis in the claim; rather, claim 8 defines a fluid flow path. It is unclear if applicant intends rather for claim 15 to depend from claim 13.
Line 4 recites the limitation "the injection unit". There is insufficient antecedent basis for this limitation in the claim.
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 1-4 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 10-082723A (hereinafter “JP’723”, machine translation provided).
Regarding claim 1,
JP’723 discloses [see ¶0008-¶0053 and Fig. 1-15] a fluid device (fine particle processing device) comprising:
a first flow path (a flow path between resonance plates 1512, 1522 [Fig. 9-10]) that extends along a first axis and through which a fluid flows in a positive side of the first axis;
a first ultrasonic element (ultrasonic vibrator 1312, 1322 [Fig. 9-10]) configured to generate a first standing wave along a second axis orthogonal to the first axis in the first flow path; and
a second flow path (a flow path in a suction pipe 1712 [Fig. 9-10]) connected to the first flow path such that the fluid flows therethrough and extending along a third axis intersecting a plane including the first axis and the second axis, wherein
a first connection port (a suction port 1713 [Fig. 9-10] for connecting the first flow path and the second flow path is formed corresponding to a position of either an antinode of the first standing wave or a node of the first standing wave [¶0032].
Regarding claim 2,
JP’723 discloses the fluid device according to claim 1, wherein a length of the first connection port (1713) along the second axis is smaller than a half wavelength of an ultrasonic wave that forms the first standing wave (width of flow path is a half wavelength [¶0020], therefore so is first connection port 1713 [see Fig. 10]).
Regarding claim 3,
JP’723 discloses the fluid device according to claim 1, wherein
an end portion of the first connection port on a negative side of the first axis is positioned on the positive side of the first axis with respect to an end portion of the first ultrasonic element on the negative side of the first axis [Fig. 9-10].
Regarding claim 4,
JP’723 discloses the fluid device according to claim 2, wherein
an end portion of the first connection port on a negative side of the first axis is positioned on the positive side of the first axis with respect to an end portion of the first ultrasonic element on the negative side of the first axis [Fig. 9-10].
Regarding claim 11,
JP’723 discloses the fluid device according to claim 1, wherein the third axis is parallel to a vertical direction (see Fig. 9).
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.
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.
Claims 5-10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over JP’723.
Regarding claims 5-6,
JP’723 discloses the fluid device according to claim 1, wherein a single inflow part is connected to a capturing unit (1713) corresponding to a node of the first standing wave [Fig. 10; ¶0032]. JP’723 does not expressly teach that a plurality of fluid inflow parts are connected to the capturing unit. However it would have been an obvious matter of design choice for one having ordinary skill in the art at the time of filing to modify the device of JP’723 to further include multiple fluid inflow parts connected to the capturing unit corresponding to positions of nodes of the first standing wave. Mere duplication of parts has no patentable significance unless a new and unexpected result is produced [MPEP 2144.04(VI)(B)].
Regarding claims 7-8,
JP’723 discloses the fluid device according to claim 1, but does not disclose a third flow path, second ultrasonic element, fourth flow path, and second connection port as defined by claims 7 and 8. These features are configured similarly to the corresponding first flow path, first ultrasonic element, second flow path, and first connection port defined by independent claim 1. It would have been an obvious matter of design choice for one having ordinary skill in the art at the time of filing to modify the device of JP’723 to further include a third flow path, second ultrasonic element, fourth flow path, and second connection port. Mere duplication of parts has no patentable significance unless a new and unexpected result is produced [MPEP 2144.04(VI)(B)].
Regarding claims 9-10,
JP’723 discloses the fluid device according to claim 1, but does not expressly teach that the first axis is parallel to a vertical direction. However it would have been an obvious matter of design choice for one having ordinary skill in the art at the time of filing to merely reorient the fluid device of JP’723 such that the first axis is parallel to a vertical direction.
Regarding claim 12,
JP’723 discloses the fluid device according to claim 10, wherein the third axis is parallel to a vertical direction (see Fig. 9).
Conclusion
14. See the attached PTO-892 for a list of the prior art made of record which includes additional prior art not relied upon that is considered pertinent to applicant’s disclosure.
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS BUCCI whose telephone number is (571)270-5406. The examiner can normally be reached Mon-Fri 8:00 - 5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Barr can be reached at (571) 272-1414. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS BUCCI/Examiner, Art Unit 1711
/MICHAEL E BARR/Supervisory Patent Examiner, Art Unit 1711
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