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 under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “first rack”, “second rack”, and “third rack”, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “40” has been used to designate both everything in Fig. 5 and the second tier in Fig. 11.
The drawings are objected to under 37 CFR 1.84(l) for being unsatisfactorily reproducible. All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. Lines and strokes of different thicknesses may be used in the same drawing where different thicknesses have a different meaning. The Examiner is requesting darker & thicker lines.
The drawings are objected to because unlabeled non-descriptive representations are impermissible under 37 CFR 1.83(a) which states (bold for emphasis):
The drawing in a nonprovisional application must show every feature of the invention specified in the claims. However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation (e.g., a labeled rectangular box). In addition, tables that are included in the specification and sequences that are included in sequence listings should not be duplicated in the drawings.
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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 lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Applicant is reminded of the proper content, language, and/or format for an abstract of the disclosure:
The language in the abstract should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. The abstract of the disclosure is objected to because: the use of a phrase which can be implied (“Disclosed is”).
Appropriate correction is required. See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
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) include:
i. “ascending/ descending mechanism” (42/72) in claim 1, which has been interpreted by the examiner as corresponding to an upward-downward moving portion 510 and a support portion 520 or structural equivalents thereof, as disclosed in the applicant’s corresponding publication US 2023/0228779; hereinafter ‘779, see paras [0113] and [0124];
ii. “container transfer mechanism” (45/74)” in claim 1, which has been interpreted by the examiner as corresponding to a forward-rearward moving section 610, a leftward-rightward moving section 620, an upward-downward moving section 630, and a holding section 640 or structural equivalent thereof, see para [0127] et seq. in ‘779);
iii. “first transport mechanism” (303, 319-322, 423, 439-442) in claim 1 has been interpreted by the examiner as corresponding to a member for pushing the side surface of the rack or structural equivalents thereof, see para [0062] et seq., in ‘779);
iv. “a take-out section” (472) in claim 15 has been interpreted by the examiner as corresponding to a hole 472a in which the container 110 can be held or structural equivalents thereof (see para [0111] et seq., in ‘779); and
v. “specimen processing unit” in claims 16-18 has been interpreted by the examiner as corresponding to a smear sample preparation unit 52 and/or analyzer 62, or structural equivalents thereof (see para [0048] et seq. in ‘779),
vi. “specimen rearrangement unit” has been interpreted as corresponding element 40, see para [0125] et seq in ‘779), which is unclear (see below).
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.
The apparatus type claims 1-19 contain a large amount of functional/process language. Functional/process language does not add any further structure to an apparatus claim beyond a capability. Apparatus claims must distinguish over the prior art in terms of structure rather than function. Therefore, if the prior art structure is capable of performing the function or intended use, then the prior art meets the limitation in the claims. 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 MPEP § 2114 & § 2173.05(g)).
In addition, apparatus claims 1-19 are only limited by positively claimed elements. Thus,"[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims”, see MPEP 2115 (Material or Article Worked Upon by Apparatus). Also, recitations in the preamble of the claim(s) are generally not considered a limitation and is of no significance to claim construction. See MPEP § 2111.02.
In the patentability analysis of instant claims, the examiner uses different typestyles, i.e., italics and bold font. An element interpreted as functional/process language is shown in italicized font whereas limitations interpreted as structural limitations are normally bolded. The examiner has applied this formatting for both the examiner’s and applicant’s convenience. The bold font and italics are shown when the structure and function/process limitations are initially introduced in the claim set, though not necessarily repeated particularly in the dependent claims. However, absent the referenced typestyles, the patentability analysis will be clear regarding which limitation the examiner interprets as structural limitations versus functional/process limitations.
Claims 1-19 are directed to an apparatus, not a process of use. There is no requirement for the claimed apparatus device to be used in any process at all including using, for example, a rack, first rack, second rack, container, etc., nor should it be interpreted to include other structures or materials that are not positively claimed as elements of the invention. Elements not part of the claimed device structure have not received patentable weight. See MPEP 2115. Generally, the elements that are bolded are considered positively recited whereas structural elements not positively recited are italicized.
Note: the functional/process recitations and/or structural elements not positively recited in the claims have not been ignored by the examiner, rather these elements have been considered and given the appropriate amount of patentable weight consistent with current US patent practice.
If applicant desires that the steps/functional language in the claims be afforded patentable weight, then these elements should as a filed in steps in method type claims. However, replacing the all of the examined apparatus type claims with a new set of method claims in response to the instant Official action would be considered “a shift in invention”, since the method and apparatus type claims are subject to different interpretations. The general policy of the Office is that applicants are not permitted to shift to another invention after an action of the merits has been issued. New method claims should be filed in a continuing type application. Also, adding additional method claims in response to this Official action, may result in a restriction by the Office under election by original presentation since method and apparatus type claims are subject to different interpretations and/or patentable weight.
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 1-19 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.
The claims are generally narrative and indefinite. That is, the instant apparatus type claims 1-19 contain a lot of functional/ process recitations and/or elements that are not positively recited and/or indefinite. The examiner has attempted to point out all of these issues, however applicant’s assistance is requested in clarifying the claims in conformance with current U.S. practice that the examiner may have missed.
For example, claim 1, line 3 recites “a rack”. Claim 1, line 8, recites “a first rack” and “a second rack”. The relationship between the rack, first rack and second rack has not been established in the claim. It is not clear if the “first rack” and “second rack” are related to the “rack”. Furthermore, the “rack” (if interpreted as a single rack) would not agree in number with a first and second rack (plurality of racks). This same logic extends the “third rack” in claim 7. For clarity, the examiner suggests applicant positively recite in claim 1 “a plurality racks including a first rack, second rack and third rack”.
Claim 3 recites “the first transportation mechanism moves the first rack along the rack waiting region in a transverse direction of the first rack”. This is confusing and indefinite. Specifically, it is not clear what applicant means by a transverse direction of the first rack. The claims do not set forth any structure with respect to any direction, thus, it is unclear what direction is transverse relative to what structure.
Claim 7 recites “”the specimen transfer device of claim 1…comprises the specimen transfer device is a specimen rearrangement unit for rearranging specimens, the specimen transfer device further comprising…” It is not clear what applicant is trying to claim. The specimen transfer device comprises the positively recited elements of claim 1 (i.e., ascending/descending mechanism, container transfer mechanism, rack waiting region, and first transportation mechanism). It is unclear what is meant by “the specimen transfer device is a specimen rearrangement unit for rearranging specimens”. This phrase does not further limit the specimen transfer device. The examiner recommends deleting this phrase.
Claim 8 recites “the rack reserving section is disposed on a side opposite to the second rack side with respect to the second ascending/descending position”. The second rack side or direction has not been established with respect to the second ascending/descending position” This is confusing and indefinite.
Claim 10 recites “the rack reserving section”. This lacks antecedent basis. Furthermore, claim 10 recites “the rack setting section, the rack reserving section, the second ascending/descending position, and the second rack are aligned in order, respectively, from a front side of the specimen transfer device”. It is confusing how these elements are aligned in order of the specimen transfer device since they are the specimen transfer device. Also, the claims do not positively recite any “sides” of the specimen transfer device, much less the front side. Same logic extends to claim 13. Moreover claim 13 does not positively recite “the second rack”. The disposition of elements relative to the second rack is not further limiting.
Claim 12 recites “the specimen transfer device of claim 1, wherein the specimen transfer device is a specimen storage unit for storing specimens, a tray that is movable to outside of the specimen transfer device is disposed in the second tier, and the second rack is placed in the tray”. The specimen transfer device comprises the positively recited elements of claim 1. It is not clear what applicant means by “the specimen transfer device is a specimen storage unit for storing specimens”. Also, is not clear from claim 12 whether the tray is an additional element of the specimen transfer device and how the tray structurally relates to the other positively recites elements of claim 1.
Claim 14 recites “the rack waiting region being disposed on a front side of the specimen transfer device as compared with the first ascending/descending position”. This is confusing and indefinite since the rack waiting region and first ascending/descending positions are both part of the specimen transfer device (see claim 1).
Claim 15 recites “the specimen transfer device of claim 12, wherein a take-out section for allowing a specimen container to be taken out to outside is disposed in the second tier”. It not clear what applicant considers “outside”. This confusing and indefinite.
Claim 16 is an independent claim directed to a specimen testing system comprising;
a specimen processing unit configured to process a specimen;
the specimen rearrangement unit of claim 7; and
a transportation unit comprising the rack transportation path, the transportation unit configured to transport the first rack between the specimen processing unit and the specimen rearrangement unit.
However, “the specimen rearrangement unit” is claim 7 is undefined (see above) and “the rack transportation path” is not positively recited in claim 1. Thus, claims 16 and 18 are indefinite and confusing due to the dependance on claim 1. Even if the “specimen rearrangement unit” was positively recited in claims 16 and 18 it is not clear what it corresponds to in the specification. That is, the claim limitation “the specimen rearrangement unit” invokes 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. The disclosure is devoid of any structure that performs the function of the “specimen rearrangement unit” of claim 7 and 16. The same reasoning is applied to independent claim 18. Therefore, claims 16 and 18 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.
Claims 16-18 attempt to include certain elements recited in claims 7, claim 12, and both claim 7 and 12. These elements incorporated into the independent claims are either not positively in claims 7 and 12 or indefinite. Thereby rendering claims 16-19 indefinite and confusing.
Thus, the scope of the claims cannot be determined.
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 1-18, as best understood, are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Itoh (US 2019/0329983)- already of record.
Regarding claim 1, Itoh discloses a specimen transfer device connected to a rack transportation path 1 of a specimen testing system,
the specimen transfer device comprising:
an ascending/descending mechanism 10 configured to move a rack 30 between a first ascending/descending position at which the rack in a first tier 21B is disposed, and a second ascending/descending position at which the rack in a second tier 21A is disposed (see Fig 3)”;
a container transfer mechanism (transferring head) configured to transfer a specimen container 40, to a second rack 150 disposed in the second tier 21a, from a first rack 30 moved by the ascending/descending mechanism from the first ascending/descending position to the second ascending/descending position; see Figs. 1-6 and para [0067] et seq.);
a rack waiting region disposed in the first tier (area shown as conveyor(s) 20 in bottom tier 21B) and configured to cause the rack to stay in a waiting state between the first ascending/descending position and a carrying-out position to the rack transportation path (waiting state reads on any location or point of time on 21B); and
a first transportation mechanism (16a, 216) configured to transport the first rack moved by the ascending/descending mechanism from the second ascending/descending position to the first ascending/descending position, through the rack waiting region, to the carrying-out position 15, see Fig.12 and para [0082] et seq.)
Again, the elements in italics have not received patentable weight for the reasons delineated above, however some of these elements have been mapped to the prior art reference in the interest of compact prosecution.
Regarding claim 2, Itoh discloses the rack waiting region is a rectangular region between the first ascending/descending position and the carrying-out position (see Fig. 5).
Regarding claim 3, as best understood, Itoh discloses the first transportation mechanism 16a, 216 moves the first rack along the rack waiting region (area shown as conveyor(s) 20 in bottom tier 21B) in a transverse direction of the first rack (see Fig. 12 and para [0080] et seq.)
Regarding claim 4, Itoh discloses a carrying-in path (conveyor 21a) for carrying in the first rack is disposed in the first tier on a side opposite to the rack waiting region side with respect to the first ascending/descending position, and the specimen transfer device further comprises a second transportation mechanism 22 configured to transport the first rack carried into the carrying-in path, to the first ascending/descending position (see Fig. 12).
Regarding claim 5, Itoh discloses implies a reader, since the sample containers 40 include a label 42 including information and a controller 50 transports the container based on the container information) configured to read, at the carrying-in path, identification information of the specimen container held in the first rack (see para [0045] and [0072] et seq.)
Regarding claim 6, Itoh discloses the second tier 21A is disposed above the first tier 21B (see Fig. 12).
Regarding claim 7, as best understood, Itoh discloses the specimen transfer device is a specimen rearrangement unit for rearranging specimens, the specimen transfer device further comprising:
a rack reserving section (area where racks 150 are held) disposed in the second tier 21A and configured to reserve a third rack that is empty (see para [0067] et seq.); and
a third transportation mechanism configured to transport the third rack reserved in the rack reserving section, to the second ascending/descending position, the specimen container transferred to the second rack is transferred to the third rack by the container transfer mechanism (transferring head), and the third rack to which the specimen container has been transferred is moved to the first ascending/descending position by the ascending/descending mechanism, and transported through the rack waiting region to the carrying-out position by the first transportation mechanism.
Regarding claim 8, as best understood, Itoh discloses the rack reserving section 150 is disposed on a side opposite to the second rack side with respect to the second ascending/descending position (see Fig. 7).
Regarding claim 9, as best understood, Itoh discloses a rack setting section (area 150) in which an operator is allowed to set the third rack; and a fourth transportation mechanism (guide device 122) configured to transport the third rack set in the rack setting section, to the rack reserving section (see para [0072] et seq.)
Regarding claim 10, as best understood, Itoh discloses the rack setting section 150, the rack reserving section, the second ascending/descending position, and the second rack are aligned in order, respectively, from a front side of the specimen transfer device.
Regarding claim 11, the rack waiting region is disposed on a front side of the specimen transfer device as compared with the first ascending/descending position, and the rack transportation path is connected to the front side of the specimen transfer device.
Regarding claim 12, as best understood, Itoh discloses wherein the specimen transfer device is a specimen storage unit for storing specimens, a tray (reads on surface of a that is movable to outside of the specimen transfer device is disposed in the second tier, and the second rack is placed in the tray.
Regarding claim 13, as discussed above, the second rack has not received patentable weight and therefor does not serve to distinguish against the Itoh reference.
Regarding, claim 14 recites the rack waiting region is disposed on a front side of the specimen transfer device as compared with the first ascending/descending position, and the rack transportation path is connected to the front side of the specimen transfer device. The “rack waiting region” is not positively recited in this claim and the “rack transportation path” is not considered part of the specimen transfer device as it is only recited in the preamble. The “rack transportation path” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See MPEP § 2111.02.
Regarding claim 15, as best understood, Itoh discloses a take-out section (area on second tier) for allowing a specimen container to be taken out to outside is disposed in the second tier, and the container transfer mechanism (transfer head) transfers a specimen container to be taken out, from the second rack, to the take-out section (see para [0074] et seq.).
Regarding claim 16, as best understood, Itoh discloses specimen testing system comprising; a specimen processing unit (analyzer 120A-D) configured to process a specimen; the specimen rearrangement unit of claim 7; and a transportation unit comprising the rack transportation path 1B (not positively recited in claims 1 or 7), the transportation unit configured to transport the first rack between the specimen processing unit and the specimen rearrangement unit.
Regarding claim 17, as best understood, Itoh discloses a specimen processing unit configured to process a specimen (analyzers 120A-D); the specimen storage unit of claim 12 (indefinite); and a transportation unit comprising the rack transportation path 1B (not positively recited in claim 1), the transportation unit configured to transport the first rack between the specimen processing unit and the specimen storage unit.
Regarding claim 18, as best understood, Itoh discloses a specimen processing unit configured to process a specimen (analyzers 120A-D); the specimen rearrangement unit of claim 7 (indefinite); the specimen storage unit of claim 12 (indefinite); and a transportation unit comprising the rack transportation path 1B, the transportation unit configured to transport the first rack between the specimen rearrangement unit and the specimen storage unit.
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.
Claims 19 is rejected under 35 U.S.C. 103 as being unpatentable over Itoh.
Regarding claim 19, Itoh discloses specimen testing systems that include analyzers 120 A-D (specimen processing units). However, Itoh is silent whether or not the specimen processing units include a smear preparation unit. However, it would have been obvious to one of ordinary skill in the art at the time the claimed invention was effectively filed to have include in the specimen testing system of Itoh a smear sample preparation unit for preparing a smear sample of a specimen based on considerations such as increasing the testing capability of the system.
Citations to art
In the above citations to documents in the art, an effort has been made to specifically cite representative passages, however rejections are in reference to the entirety of each document relied upon. Other passages, not specifically cited, may apply as well.
Conclusion
No claims are allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure include:
a. Takai et al., (US 2014/0212248) which disclose a tube sorter comprising: a transporting section configured to transport a sample rack; a storage arranged at a higher level than the transporting section, capable of storing a plurality of sample tubes; a lifting section configured to lift up the sample rack transported by the rack transporting section; and a sample tube transferring section configured to remove a sample tube from the sample rack lifted up by the lifting section and set the removed sample tube in the storage.
b. Suzuki et al., (US 2013/0197690) which disclose a method for controlling an automated sample test system that includes a samples conveyance line for conveying samples racks, each holding samples, to a plurality of processing units, and an empty-rack stock section in which to stock samples racks not holding a sample. The control method is designed to collect information on whether the processing units are in need of a supply of empty samples racks, and then supply empty samples racks from the empty-rack stock section to the processing units based on the information. Decreases in throughput can be prevented by leveling the number of empty samples racks supplied to the processing units that require empty samples racks.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to P. Kathryn Wright whose telephone number is (571)272-2374. The examiner can normally be reached on Monday-Thursday 9:30am-7pm EST.
Examiner interviews are available via telephone 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.
E-mail communication Authorization
Per updated USPTO Internet usage policies, Applicant and/or applicant’s representative is encouraged to authorize the USPTO examiner to discuss any subject matter concerning the above application via Internet e-mail communications. See MPEP 502.03. To approve such communications, Applicant must provide written authorization for e-mail communication by submitting the following statement via EFS Web (using PTO/SB/439) or Central Fax (571-273-8300):
Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.
Written authorizations submitted to the Examiner via e-mail are NOT proper. Written authorizations must be submitted via EFS-Web (using PTO/SB/439) or Central Fax (571-273-8300). A paper copy of e-mail correspondence will be placed in the patent application when appropriate. E-mails from the USPTO are for the sole use of the intended recipient, and may contain information subject to the confidentiality requirement set forth in 35 USC § 122. See also MPEP 502.03.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jill A Warden can be reached on 571-272-1267. 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.
/P. Kathryn Wright/Primary Examiner, Art Unit 1798