FINAL OFFICE ACTION
This application has been assigned or remains assigned to Technology Center 1700, Art Unit 1774 and the following will apply for this application:
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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 § 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 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 terms used in this respect are given their broadest reasonable interpretation in their ordinary usage in context as they would be understood by one of ordinary skill in the art, in light of the written description in the specification, including the drawings, without reading into the claim any disclosed limitation or particular embodiment. See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
The Examiner interprets claims as broadly as reasonable in view of the specification, but does not read limitations from the specification into a claim. Elekta Instr. S.A.v.O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000). "A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. Inc. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987).
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness." In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983). See MPEP 2112.
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, 2, 4, 5, 12, 15, 18, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by GB 921719 A to STOTT.
Regarding claim 1, Stott teaches a magnetic stir bar (apparatus of Fig 2, Page 1, Iines 17-24) comprising: a first portion that defines an outer perimeter that has a shape in plan view with a center point being a geometric center of the shape (Fig 2, first portion defined by a radial vane 12, Page 2, In 37-38: one or two radial or diametral vanes, indicated in chain lines at 12, the vane 12 has an outer perimeter that has a shape when viewed from above in a plan view with a center point between left and right ends of member 12; the outer perimeter being circular as seen in Figure 3; and a second portion that is connected to the first portion and includes a magnet (second portion defined by circular disk 2 and hemisphere 3, with hemisphere 3 defining a magnet as it is taught being magnetized, Page 1, In 57-59, Page 1, In 62-63: the ratio of the radii of the hemisphere and the disc is of the order of 1: 4 or 1: 3. Both components are of a ferro-magnetic material from Page 1, Iines 70-76, a magnet below a mixing vessel magnetizes the hemisphere), wherein the second portion is arranged so that (i) at least part of the second portion is positioned within the outer perimeter of the first portion; and (ii) a magnetic center point of the magnet in plan view is positioned off-center with respect to the center point of the outer perimeter (Fig 2, the area of 2, 3, Fig 2, as seen from a top view overlaps the perimeter of 12, with the magnetic center point of 2, 3, being defined in the center of the 2, 3, shown being offset to the right relative to the geometric center point of 12); wherein the second portion is secured to the first portion such that the first portion and second portion are configured to rotate together (page 2, lines 37-44); and wherein the magnetic stir bar has only one axis of symmetry when viewed from plan view (Fig 2, when seen from above an axis of symmetry cuts through the longitudinal extent of radial vane 12 and thus extends between left and right halves of radial vane 12 to the perimeter of disc 2); note the bottom view of Figure 3 shows a horizontal axis of symmetry while viewed from the top side of Figure 2, only one axis of symmetry would exist by virtue of the offset location of vane 12. Thus, the subject matter added to claim 1 is met by STOTT.
Regarding claim 2, the outer perimeter has at least one axis of symmetry in plan view and the center point falls on the at least one axis of symmetry (Fig 2, when seen from above an axis of symmetry extends between left and right halves of radial vane 12, the geometric center point is also defined between left and right halves of 12).
Regarding claim 4, the magnetic center point is a geometric center of the magnet in plan view (Page 1, In 62-63, member 3, Fig 2, the entire member is taught being magnetized causing a magnetic center point to be defined by a geometric center of hemisphere 3 when seen from above).
The method claims 12, 15, and 18 are disclosed at page 1, lines 9-41 of STOTT.
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Claim Rejections - 35 USC § 103
The terms used in this respect are given their broadest reasonable interpretation in their ordinary usage in context as they would be understood by one of ordinary skill in the art, in light of the written description in the specification, including the drawings, without reading into the claim any disclosed limitation or particular embodiment. See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). The Examiner interprets claims as broadly as reasonable in view of the specification, but does not read limitations from the specification into a claim. Elekta Instr. S.A.v.O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000).
To determine whether subject matter would have been obvious, "the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved .... Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented." Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).
The Supreme Court has noted:
Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.
KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1740-41 (2007). "Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." (Id. at 1742).
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 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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over the prior art to STOTT (GB 921719 A).
Regarding claim 8, said prior art teaches a magnetic stir bar having an outer perimeter with a length, however, said prior art does not specify the recited parameter related to the magnetic center point being off-center by at least one percent of said length.
With respect to the limitation of the parameter regarding the magnetic center point being off-center by at least one percent of said length which is present in the claim at issue, the examiner has found that the specification contained no disclosure of any unexpected results arising therefrom, and that as such the parameter is arbitrary and therefore obvious. Such unsupported limitations cannot be a basis for patentability, since where patentability is said to be based upon particular chosen parameters or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990) and MPEP 2144.05(III).
With respect to the limitation of this parameter, it would have been obvious to one of ordinary skill in the art to have provided the apparatus defined by the disclosures of STOTT (GB 921719 A), BENDER, or DUSHINE et al. with the configurations and/or dimensions recited in the claims which are considered at most optimum choices, lacking any disclosed criticality.
Applicant has the burden of proving such criticality. In re Swenson et al., 56 USPQ 372; In re Scherl, 70 USPQ 204. However, even though applicant's modification may result in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art. In re Sola, 25 USPQ 433; In re Normannet et al., 66 USPQ 308; In re Irmscher, 66 USPQ 314. More particularly, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); In re Swain et al., 70 USPQ 412; Minnesota Mining and Mfg. Co. v. Coe, 38 USPQ 213; Allen et al. v. Coe, 57 USPQ 136; MPEP 2144.05(II)(A).
No probative evidence is of record to demonstrate that the dimensions and/or other variables of the invention are significant or are anything more than one of numerous dimensions a person of ordinary skill in the art would find obvious for purposes of merely changing the configurations and/or dimensions to obtain different results. Graham v. John Deere Co., 148 USPQ 459.
Accordingly, the examiner argues that these parameters are rather arbitrary and thus obvious over the prior art per MPEP 2144.05(II)(III).
Furthermore, the Federal Circuit has explained that a reason to optimize prior art parameters may be found in a PHOSITA’s desire to improve on the prior art. In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017) (‘‘The normal desire of artisans to improve upon what is already generally known can provide the motivation to optimize variables such as the percentage of a known polymer for use in a known device.’’).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over the prior art to STOTT.
The prior art to STOTT (GB 921719 A) does not disclose the non-round mixing container. However, a simple change in shape of a container from round to other than round is considered to be prima facie obvious to one skilled in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) wherein the court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.
Thus, in this instance, to form the mixing container in STOTT to be of any desired shape, including non-round, is well within the realm of obvious to a PHOSITA, if not mere common sense.
Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over the prior art to STOTT.
The prior art to STOTT (GB 921719 A) does not disclose the recited volume of the mixing container. However, a simple change in size of a container is considered to be prima facie obvious to one skilled in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.). Also see In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Thus, in this instance, to form the mixing container of STOTT to be of any desired size/volume is well within the realm of obvious to a PHOSITA, if not mere common sense.
The term “surfactant” recited in claim 17 does not appear in the patent, thus the fluid being stirred does not apparently include a surfactant. The subject matter of claim 19 can be derived from Figure 1.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over the prior art to STOTT in view of YOKOYAMA et al. (US 4665736).
The prior art to STOTT (GB 921719 A) does not disclose the electrode. YOKOYAMA et al. discloses a mixing container 2 or 12 closed via a plug 3; a magnetic stirrer 4 or 16 within the container; and an electrode 1 or 11 inserted into the container. An electrode 1 is inserted in and substantially vertical to a vessel 2 which contains a water sample W in which dissolved oxygen is to be measured. On the intermediate portion of the electrode 1 is slidably fitted a cork 3. When the electrode 1 is inserted in the vessel 2, the electrode 1 is secured to the vessel 2 by sliding the cork 3 into the vessel in the direction of arrow P. A groove 1a is defined by a pair of supporting members 1b, 1b at the lower end of the electrode 1, and a rotor 4 comprising a magnet having N and S poles is rotatively supported through journals in the groove. The shaft 4a of the rotor 4 is supported perpendicular to the lengthwise direction of the electrode 1. A U- or horseshoe-shaped magnet 5 is disposed exterior of the bottom surface of the vessel 2. The magnet 5 is rotated by a motor (not shown) and so constructed that the S and N poles thereof alternately are brought underneath the bottom of the rotor 4 by the rotation thereof. The supporting members 1b may be removably constructed.
It would have been obvious to one skilled in the art before the effective filing date of the invention to have provided the mixing containers of the prior art to STOTT (GB 921719 A) with an electrode as taught by YOKOYAMA et al. for the purpose of obtaining accurate and consistent measurements of a property of the fluid in the mixing container, such as the amount of dissolved oxygen in water (col. 1, lines 10-30).
Allowable Subject Matter
Claims 3, 6, 7, 9, and 10-11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The arguments related to the STOTT patent are addressed in the text of the rejection above. The other prior art references are withdrawn in view of the amendments made to claim 1 in conjunction with the remarks.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited prior art document discloses magnetic stirrers of various geometrical shapes.
THIS ACTION IS MADE FINAL. 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 CHARLES COOLEY whose telephone number is (571)272-1139. The examiner can normally be reached M-F 9:30 AM - 6:00 PM.
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/CHARLES COOLEY/
Examiner, Art Unit 1774
DATED: 21 APRIL 2026
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