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 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 15 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 regard to claim 15, the scope of the phrase “information indicating that the application of the disinfectant determined based on content of detection by the detection unit has been performed” is unclear due to the grammar of the phrase. For the purpose of examination, the Examiner will attempt to interpret the broadest reasonable interpretation of the limitation.
Response to Arguments
Applicant's arguments filed 5 January 2026 have been fully considered but they are not persuasive.
Applicant argues that Rahn does not disclose a “machine-readable information code comprising a plurality of symbols arranged in a pattern” as claimed as Rahn discloses a test indicator that “undergoes a change, such as complete removal, partial removal or a color change.” The Examiner has fully considered the argument but has not found it to be persuasive. The broadest reasonable interpretation of the claim merely requires that the recited “detection unit” be capable of detecting a “machine-readable information code comprising a plurality of symbols arranged in a pattern” such that the one or more processors and the one or more memories can “acquire information regarding the disinfection in response to detection of the second information code by the detection unit” as the claims regard an “information acquisition system” and not the workpiece which includes the machine-readable information code. As Rahn discloses that the color sensor 208 can be “a camera-based reader that uses a camera and image processing techniques to capture an analyze an RGB image of the verification area,” it is held that the detection unit of Rahn is capable of detecting a “machine-readable information code comprising a plurality of symbols arranged in a pattern” such that the one or more processors and the one or more memories can “acquire information regarding the disinfection in response to detection of the second information code by the detection unit” as claimed. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The Courts have held that it is well settled that the recitation of a new intended use, for an old product, does not make a claim to that old product patentable. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (see MPEP § 2114). The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that 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 Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-9, 11 and 14-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rahn et al. (US 2021/0161355; hereinafter “Rahn”).
In regard to claims 1 and 11, Rahn discloses an information acquisition system of acquiring information regarding disinfection or a chemical reaction (computing device 200), the information acquisition system comprising: a detection unit (camera comprising a color sensor 208; see [0070]) capable of detecting an information code (test indicator 104 of process verification coupon 100); one or more memories (data storage media 214 which includes instructions in the form of the subcomponent clean verification module 206 as discussed in at least [0072]); and one or more processors (one or more processors 202) in communication with the detection unit and with the one or more memories, wherein the one or more processors and the one or more memories are configured to: acquire information (such as a “pass” or “fail” determination; see [0073]) regarding the disinfection in response to detection of the code by the detection unit. See Figures 1-2 and 4A-4B and paragraphs [0044]-[0046], [0057] and [0068]-[0073].
Rahn does not explicitly disclose wherein the information code is in the form of a machine-readable information code comprising a plurality of symbols wherein the pattern before application of a disinfectant represents a first information code and a pattern after the application of the disinfectant represents a second information code different from the first information code. However, it is held that the claim does not explicitly recite the machine-readable information code as the broadest reasonable interpretation of the claim merely requires the recited detection unit to be capable of detecting a machine-readable information code comprising a plurality of symbols wherein the pattern before application of a disinfectant represents a first information code and a pattern after the application of the disinfectant represents a second information code different from the first information code. As Rahn teaches that the color sensor 208, which is viewed as analogous to the recited detection unit, can be “a camera-based reader that uses a camera and image processing techniques to capture an analyze an RGB image of the verification area,” it is held that the detection unit of Rahn is capable of detecting a machine-readable information code as recited. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The Courts have held that it is well settled that the recitation of a new intended use, for an old product, does not make a claim to that old product patentable. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (see MPEP § 2114). The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that 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 Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
In regard to claim 2, it is noted that the machine-readable information code has not been positively recited in the system as the system need only to be capable of detecting the information code. Thus, it is held that the system of Rahn is capable of detecting a machine-readable information code which includes a region where the pattern changes with the application of the disinfectant and a region where the pattern does not change with the application of the disinfectant. The Courts have held that “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See In re Young, 75 F.2d *>996<, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115). The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
In regard to claim 3, Rahn discloses computing system environment 601 wherein the information regarding the disinfection includes information regarding a place where the disinfectant has been applied (enterprise/location data 664 which includes data related to the location of cleaning machine used). See [0109], [0113], [0116] and Figure 12.
In regard to claim 4, it is noted that the machine-readable information code has not been positively recited in the system as the system need only to be capable of detecting the machine-readable information code. Thus, it is held that the system of Rahn is capable of detecting a machine-readable information code which causes at least one of disappearance of part of the pattern forming the first information code upon the application of the disinfectant and appearance of a pattern upon the application of the disinfectant, the pattern being not included in the pattern forming the first information code. The Courts have held that “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See In re Young, 75 F.2d *>996<, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115). The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
In regard to claim 5, Rahn discloses wherein the one or more processors and the one or more memories are further configured to acquire the information (from identifier 110) regarding the disinfection with the detection unit detecting both the first information code and the second information code as the identifier 110 would also necessarily be detected at the same time by the camera having a color sensor 208. The identifier 110 necessarily regards the disinfection as the identifier is used to track the disinfection results and determination of “pass” or “fail.” See Figures 1-2, [0046] and [0073].
In regard to claim 6, it is noted that the machine-readable information code has not been positively recited in the system as the system need only to be capable of detecting the machine-readable information code. It is therefore held that the information acquisition system of Rahn would be capable of detecting the second information after the application of the disinfect wherein the first information code is indicated again after a period of time as the detection unit (camera having a color sensor 208) of Rahn is not functionally impacted by a machine-readable information code which functions in the recited manner. It is noted that the Courts have held that “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See In re Young, 75 F.2d *>996<, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115). The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
In regard to claims 7 and 8, it is noted that the machine-readable information code has not been positively recited in the system as the system need only to be capable of detecting the machine-readable information code. It is therefore held that the system of Rahn is capable of detecting wherein the machine-readable information code presents a pattern after the application of the disinfectant, the pattern representing a third information code (as various levels of “fail” or “soiled” can be determined; see [0038]) different from the first information code, and the second information code and the third information code appear at different times after the application of the disinfectant. It is noted that the Courts have held that “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See In re Young, 75 F.2d *>996<, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115). The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). Rahn discloses wherein the one or more processors and the one or more memories are further configured to acquire the information (from identifier 110) regarding the disinfection with the detection unit detecting the first information code (such as test indicator 104 before application), the second information code (such as test indicator 104 representing a “pass” determination), and the third information code (such as test indicator representing a “fail” determination) as the identifier 110 would also necessarily be detected at the same time by the camera having a color sensor 208. The identifier 110 necessarily regards the disinfection as the identifier is used to track the disinfection results and determination of “pass” or “fail.” See Figures 1-2, [0046] and [0073].
In regard to claim 9, it is noted that the machine-readable information code has not been positively recited in the system as the system need only to be capable of detecting the machine-readable information code. It is therefore held that the information acquisition system of Rahn would be capable of detecting a machine-readable information code which indicates the second information code after lapse of a certain time from the application of the disinfectant as the detection unit (camera having a color sensor 208) of Rahn is not functionally impacted by a machine-readable information code which functions in the recited manner. It is noted that the Courts have held that “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See In re Young, 75 F.2d *>996<, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115). The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
In regard to claim 14, it is noted that the first information code and second information code of the machine-readable information code have not been positively recited in the system as the system need only to be capable of detecting the machine-readable information code. It is therefore held that the information acquisition system of Rahn would be capable of detecting two-dimensional machine-readable codes comprising a plurality of symbols arranged in a matrix pattern as the detection unit (camera having a color sensor 208) of Rahn is not functionally impacted by a machine-readable information code which functions in the recited manner and the instant claims do not explicitly require that the system of Rahn need to be capable of acquiring information from the machine-readable information code itself using the broadest reasonable interpretation of the claim. The instant claim is met by Rahn being capable using the detection unit to acquire information from detected images using the broadest reasonable interpretation. It is noted that the Courts have held that “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See In re Young, 75 F.2d *>996<, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115). The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
In regard to claim 15, Rahn discloses wherein the one or more processors and the one or more memories are further configured to store, as the information regarding the disinfection, information indicating that the application of the disinfectant determined based on content of detection by the detection unit has been performed (such as a “pass” or “fail” determination; see [0073]), information indicating a time at which the application of the disinfectant has been performed (the computing device 225 can store a detailed report containing “the date and time of the cleaning cycle;” [0075]), and information indicating a place where the application of the disinfectant has been performed (clean verification data 668 can include “a location identifier;” [0117] and also [0121]-[0122]), in association with each other.
In regard to claim 16, it is held that the claimed limitation is merely met by repeated use of the system of Rahn, as each detection of a test indicator 104 would constitute a different “disinfected region” as each test indicator has its own discrete location in space and the one or more processors and the one or more memories would necessarily acquire the disinfection for each of the different “regions” constituted by each of the test indicators.
In regard to claim 17, Rahn discloses an analysis unit (clearing verification module 206) which are configured to provide recommended information (“suggest corrective action(s)”) regarding disinfection of the plurality of disinfected regions based on the information stored in the one or more memories. See [0069]-[0076] and Figure 4A.
In regard to claim 18, Rahn discloses wherein the one or more processors and the one or more memories are further configured to cause a terminal device (clean verification module 206) that has read the second information code to perform a predetermined operation (such as to “automatically adjust one or more cleaning process parameters” as taught in [0072] or “cause one or more notifications for display” as taught in [0073]) in response to reading the second information code.
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 1-9, 11 and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Rahn in view of Kakinuma et al. (JP 2010220970 with reliance upon the English-language machine translation; hereinafter “Kakinuma”).
In regard to claims 1-9, 11 and 14-18, the following rejection is included in case it is determined that Rahn is deficient in disclosing wherein the detection unit is capable of detecting a machine-readable information code as recited. Rahn is applied in the same manner as above.
Kakinuma discloses a process control indicator for determining the completion of sterilization comprising a machine-readable information code (process control indicator 1) comprising a plurality of symbols wherein the pattern before application of a disinfectant represents a first information code and a pattern after the application of the disinfectant represents a second information code different from the first information code. See Figures 1-6 and pages 1-4 of the machine translation. Kakinuma also discloses in Figure 3 wherein the machine-readable information code can comprise a first and second information code in the form of two-dimensional machine-readable codes comprising a plurality of symbols in a matrix pattern.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have configured the camera of Rahn to be capable of detecting the process control indicators disclosed by Kakinuma for the purpose of containing information in the pattern of symbols of detected code without creating any new or unexpected results. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.). The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.). Applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY C CLEVELAND whose telephone number is (571)270-5041. The examiner can normally be reached M-F 9:00-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Claire Wang can be reached at (571) 270-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIMOTHY C CLEVELAND/ Primary Examiner, Art Unit 1774