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 .
Response to Amendment
The Amendment filed 12/15/2025 has been entered. Claims 1-10 are pending and being examined herein.
Status of Rejections
The rejections under Double Patenting are being withdrawn in view of Applicant’s amendments.
The rejections under U.S.C. 102 are being withdrawn in view of Applicant’s amendments.
New grounds for rejection under U.S.C. 102 and 35 U.S.C. 103 are necessitated by Applicant’s amendments.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/18/2025 is being considered by the examiner.
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 is:
“a heat source member that is configured to heat and/or cool the heat transfer member” in claim 1.
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.
In this instant case:
“heat source member” is being interpreted as a Peltier element (p. 7, line 10) and equivalents thereof.
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 7 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.
Claim 7 recites the limitation "wherein … a supply port configured to supply air into the gap is formed" in line 4. It is unclear if the applicant intends for the “a supply port” as part of the invention because the claim does not recite the temperature chamber comprises, includes or has a supply port, and it is also unclear whether “is formed” is referring to “the gap” or “a supply port”. If it is referring to the supply port, it is unclear how a supply port is formed and what it is formed with. The specification discusses a supply port on p. 6, lines 10-14 but does not disclose forming of a supply port or whether the supply port is part of the temperature chamber or it is a part of an external device. Page 6, lines 5-6 discloses opening 43, but opening 43 appears to be different from the supply port in lines 10 because line 10 states that the supply port is “not illustrated” and support is not referenced by “43”. For the purpose of examination, “is formed” is being interpreted as referring “the gap” since it unclear how and what forms a supply port and the specification does not provide further insights. Consequently, “a support port” is interpreted as not a part of an invention because it is not positively recited, and the limitation is interpreted as an intended use.
Claim Rejections - 35 USC § 102
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 1-8 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hattori (US 20080023331 A1).
Regarding claim 1, Hattori teaches a temperature chamber (110) comprising:
a body portion (123 and 120)(para. 0189, 123 is fixed by screw on mount 120),
a heat transfer member (chamber 118) in which a bottom wall (the wall at the bottom of 118) and side walls (side walls of 118) are formed as a single piece (Fig. 8), the heat transfer member being provided within the body portion (Fig. 3);
a recessed portion (the recess of 118) surrounded by the bottom wall and the side walls (Fig. 1); and
a heat source member (119) that is configured to heat and/or cool the heat transfer member (paras. 0173 and 0189, cooling and heating mechanism 119 control temperature of electrophoretic chip with is in the chamber 118. cooling and heating mechanism 119 is a Peltier device), the heat source member being provided within the body portion below the heat transfer member (Fig. 3, 119 is within 123 and 120, and 119 is below 118).
Regarding to claim 2, Hattori teaches all of the elements of the current invention as stated above with respect to claim 1. Hattori further teaches wherein at least one of the side walls has a non-uniform thickness (Fig. 3, the side walls has a step where lid 124 sits).
Regarding claim 3, Hattori teaches all of the elements of the current invention as stated above with respect to claim 1. Hattori further teaches wherein at least one of the side walls (the side walls of 118) has a larger thickness in a bottom region (the bottom region is destinated to be the region under 124) than in any other region (the side wall thickness is larger in the bottom region as shown in Fig. 3).
Regarding to claim 4, Hattori teaches all of the elements of the current invention as stated above with respect to claim 1. Hattori further teaches, wherein at least one of the side walls (the side walls of 118) has a smaller planar cross-sectional area on an upper side (destinates upper side is the part of the side wall that is horizontally next to lid 124) than on a bottom side (bottom side is the part of the side wall that is below lid 124)(Fig. 3).
Regarding claim 5, Hattori teaches all of the elements of the current invention as stated above with respect to claim 1. Hattori further teaches the temperature chamber according to claim 1, wherein the recessed portion is provided with a step portion on an inner side surface (Fig. 3, a step at where lid 124 sits).
Regarding claim 6, Hattori teaches all of the elements of the current invention as stated above with respect to claim 1. Hattori further teaches the temperature chamber further comprising: a lid member (124 and 125), wherein the recessed portion (the recess of 118) is configured to be sealed with the lid member (Fig. 3 and para. 0161, chamber 118 sealed by lids 124 and 125), the lid member has a window (para. 0161, lids 124 and 125 are transparent glass and thus the lids are a window), and inside of the recessed portion is configured to be observed from outside (para. 0161, chip 111, which is in chamber 118 can be observed from above in the outside ).
Regarding claim 7, Hattori teaches all of the elements of the current invention as stated above with respect to claim 6, wherein the window is configured by glass plates (para. 0161, lids 124 are 125 are glass plates), a gap is defined between the glass plates (para. 0161, a gap between the two lids), and a supply port configured to supply air into the gap is formed (interpreted as an intended use. This is an apparatus claim and “a supply port” is not positively recited. See 35 U.S.C. 112(b) rejection above. The gap formed by lids 124 and 125 meet the structure limitation of the intended use. A support port from an external device can supply air into the gap between lids 124 and 125).
Regarding claim 8, Hattori teaches all of the elements of the current invention as stated above with respect to claim 1. Hattori further teaches the temperature chamber further comprising: a holding plate (supporting plate 114) configured to hold a specimen (chip 111)(specimen is not positively recited) in a position in air in the recessed portion (Fig. 3).
Regarding claim 10, Hattori teaches all of the elements of the current invention as stated above with respect to claim 1. Hattori further teaches temperature chamber further comprising a specimen (humidity-controlling liquid 117)(humidity-controlling liquid 117 can be a specimen) provided on the bottom wall (the wall at the bottom of 118) of the heat transfer member(118).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Hattori (US 20080023331 A1) in view of Thompson (US 6349717 B1)
Regarding claim 9, Hattori teaches all of the elements of the current invention as stated above with respect to claim 8.
Hattori teaches a temperature chamber (110) comprises supporting plate 114 (holding plate), which holds electrophoretic chip 111 (specimen) above the cooling-heating mechanism 113 (Fig. 3 and paras. 0156-0157). Hattori teaches supporting plate 114 includes through-holes 161 (Fig. 3). Hattori teaches the lateral ends of supporting plate 114 are support on the sidewalls of 118, but Hattori does not teach the mechanism supporting plate 114 is supported on sidewalls of 118, and thus Hattori fails to teach wherein a step portion or a protrusion is provided on an inner side surface of the recessed portion, and the holding plate is placed on the step portion or the protrusion.
However Thompson teaches a temperature chamber (oven) comprising a cavity 4 (recessed portion) surrounded by side walls 14 and 16 (Fig. 1). Thompson teaches the temperature chamber include a rack 28 (holding plate with through-holes) in a position in air in cavity 4 (recessed portion). Thompson further teaches wherein plurality of support runners (steps or protrusions)arranged as associated pairs are provide on side walls 14 and 16 of cavity 4 (recessed portion), and rack 28 (holding plate with through-holes) is placed on one of the runner 22 pairs.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the side walls taught by Hattori with a pair of runner 22 taught by Thompson for the holding plate to be placed on the runners because one of ordinary skill in the art would accordingly have recognized the runners would result in the predictable result of providing a means for supporting plate 114 of Hattori (holding plate) to be supported to the side wall.
The teachings of Hattori as modified by Thompson would yield wherein a step portion or a protrusion (one of the runners 22 of Thompson) is provided on an inner side surface (the surface of one of 118’s side wall of Hattori) of the recessed portion (the recess of 118 of Hattori), and the holding plate (114 of Hattori) is placed on the step portion or the protrusion (one of the runners 22 of Thompson).
Response to Arguments
Applicant’s arguments, see pp. 4-5 , filed 12/15/2025, with respect to the rejections of claim 1 under Double Patenting have been fully considered and are persuasive. Therefore, the rejections have been withdrawn.
Applicant’s arguments, see pp. 5-6 , filed 12/15/2025, with respect to the rejections of under 35 U.S.C. 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of Hattori (US 20080023331 A1) for claims 1-8 and 10, and in view of Hattori (US 20080023331 A1) and further in view of Thompson (US 6349717 B1) for claim 9.
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.
/M.L.C./Examiner, Art Unit 1758
/MARIS R KESSEL/Supervisory Patent Examiner, Art Unit 1758