CTNF 18/210,612 CTNF 82007 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. 07-30-03-h AIA Claim Interpretation 07-30-03 AIA 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. 07-30-05 The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked. As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph: (A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function; (B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and (C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function. Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function. Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function. Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: 1. Processing section that performs predetermined processing…as in cl. 1 and cl. 20. 2. Hardware processor that controls holding…and releasing of the holding as in cl. 1 and cl. 20. 3. A releasing member that releases holding of the test container…as in cl. 8/9. 4. Optical measurement section that performs optical measurement…as in cl. 18. 5. A discarding section that receives the test container released as in cl. 20. 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. 1. A reagent supply section and/or an optical measurement section, and equivalents thereof, structurally constituted by those structures seen from pars.[0033-0039] of Applicant’s pre-grant publication US 2024/0033731. 2. A computer controller and equivalents thereof as seen in abstract, pars.[0023,0047,0049,0064]. 3. Those structures and equivalents thereof as seen from pars.[0043,0044,0049,0062]. 4. A light irradiation section and a light receiving section, and equivalents thereof, which are structurally constituted by those structures seen from pars.[0036-0039]. 5. A receptacle and equivalents thereof as seen through pars.[0019,0029,0044,0045]. If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 1-20 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 metes and bounds to the claimed test apparatus, as in both of independent claims 1 and 20, are indefinitely provided herein by way of the recitation to the “hardware processor that controls holding of the test container by the holder and releasing of the holding.” A hardware processor, as discussed above under the “Claim Interpretation” section, is drawn to a computer controller and equivalents thereof as seen through Applicant’s disclosure in pars.[0023,0047,0049,0064]. A controller/processor is understood as a computing element and for generating signals, but a controller/processor alone does not provide the functionality of controlling holding of the test container and releasing of the holding. Herein, it appears Applicant intends to provide the hardware for which the hardware processor affects such particular control thereto, and the present claims are absent the hardware (i.e. structure(s)) that may be automatically actuated by the processor in order to effect such holding/releasing. Further, notably herein, the claimed “holder” is without any particular functional provision to its movement/releasable holding. From Applicant’s disclosure, it appears the hardware involved in order to allow for such processor/computer-affected control is drawn to the driver 110 moving the holder that is movable by the driver by way of shaft member 21 and to engage with support member(s) of the holder 20 when driven downward (the “controls holding”), and “releasing of holding” is achieved through computer-affected control of the hardware of the driver 110 driven upward coincident with the releasing member 80 to push down on the test container, thus pushing in the support member(s) and providing to release the test container from the shaft 21 (pars.[0048,0049]). And the signals to particularly affect the hardware discussed above are generated by way of a user input or concordant with a signal from the detection section (par.[0051]). Clarification is required herein in which the recitation to a process/controller alone is insufficient to provide basis for the recited functionalities of controlling holding and releasing of the holding, wherein Applicant should provide the hardware that is controllably-affected by the hardware processor . It is further noted that the present recitation at the end of claim 1 to “wherein the test container released from the holding moves in a gravity direction” is drawn to a narrative process recitation not afforded patentable weight, wherein it may be Applicant’s intention to provide a particular configuration to the hardware processor to actively carry out such a step with the concordant hardware therewith that holds/grabs followed by releasing thereof. Further, with regard to claim 5 , the metes and bounds of the sought operative arrangement of the test apparatus are indefinitely provided herein. Claim 5 introduces the added element to the test apparatus in that of a “maintaining member that maintains…” wherein such maintaining member and its functionality are related to a prospective workpiece of the “test container” that is not a positively claimed structural element of the apparatus, and thus, the relative structural/functional arrangement of such “maintaining member that maintains…” within the confines of the apparatus are indefinitely defined. From Applicant’s specification, it appears that the maintaining member 70 is a part of the test container (an intended workpiece), and not a part of the positively provided elements to the test apparatus as claimed herein. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15-aia AIA Claim(s) 1-14 and 17-20 , as best understood , is/are rejected under 35 U.S.C. 102 a1 as being anticipated by Mueller et al. (US 2014/0107953), hereafter Mueller . With regard to claims 1, 18, Mueller discloses a test apparatus comprising a holder (robot arm with gripper unit, such as in fig. 1 1004/1008 and fig. 3. 3002/3004 that is capable of holding a test container in which a test object is to be provided; a processing section (optical sensor 4402, fig. 8 and as in cl. 18; and further discussion to an aliquotter as a reagent supply section as a work unit as described in par.[0043]) that performs predetermined processing on the test object in the test container held by the holder (pars.[0041,0042,0054,0056,0083], figs. 1, 3, 8, for example). Mueller further discloses a hardware processor 1108 (fig. 2 and in operative communication with the robot arm 1002/gripper unit 1114) that controls holding of the test container by the holder and releasing of the holding, in which the gripper fingers of the gripper unit automatically discard the containers to a waste container 3016 (pars.[0044,0045,0054], fig. 2, for example). Mueller further discloses wherein the test container released from the holding moves in a gravity direction in as much as claimed and required herein, in which such recitation is drawn to a narrative process recitation in a device claim not attributed patentable weight, and wherein Mueller provides a waste receptacle 3016 into which test containers are dropped from the gripper unit in a ‘gravity direction’ (par.[0032,0092], fig. 3, for example). With regard to claim 2, the recitation is drawn to a process recitation not afforded patentable weight and Mueller provides a commensurately-structured holder as claimed herein providing to hold, as recited herein, in as much as recited and required herein (par.[0040]). With regard to claim 3, Mueller disclose that the holder includes a shaft member, such as in top chute 3006 that constitutes a shaft member, which shaft member is fully capable of being inserted through a hole portion of a test container as claimed, wherein such “test container that is configured…” is drawn to an intended workpiece, and is not required as a positively claimed element of the apparatus (par.[0037,0054] fig.3, for example). With regard to claim 4, Mueller discloses a placement base 4004 (fig. 4) on which the test container is to be placed, and further noting that the test container itself is not a positively claimed element of the apparatus and is drawn to a prospective, intended workpiece (par.[0065], fig. 4). With regard to claim 5, Mueller discloses that the holder is configured to be movable between a first position in an axial direction of the shaft member and a second position closer to the placement base than the first position (pars.[0040,0062,0063], fig. 4, in which the holder by the output robot 4002 [likewise to gripper unit 3002/1004] is movable from a first position in an axial direction of the shaft member at lower position relative to the placement base in moving the holder downward in a position in proximity to the waste receptacle 3016 and a second position closer to the placement base as the output robot lifts the specimen container out of the placement base 4004) With regard to claim 6, Examiner asserts that such “maintaining member that maintains…” is indefinitely presented as it is functionally related with respect to an intended workpiece in that of a test container that is not a positively claimed element of the apparatus, and the apparatus of Mueller provides for such a “maintain member that maintains…” in as much as understood and required herein by way of the gantry robot 1000 coupled to the robot arm/gripper unit that affords independent movement in the x, y, and z-axes (par.[0040]). With regard to claim 7, Mueller discloses a driver which drives the holder in the axial direction, and wherein the hardware processor controls holding of the test container and releasing of the holding by instructing the driver to drive the holder in the axial direction (the gantry robot 1000 is instructed by the processor 1008, and a driver is implicitly provided given that this is a robot gantry within a disclosed automation system with a coupled processing unit to inform the processes of the system (par.[0043,0046,0047], fig. 2, for example). With regard to claim 8, Mueller discloses a releasing member 3010 that releases holding of the test container by the holder when the holder moves to the first position (par.[0055], fig. 4). With regard to claim 9, the recitation is drawn to a process recitation not afforded patentable weight and wherein Mueller discloses a structurally commensurate releasing member as discussed above. With regard to claim 10, the recitation is drawn to a process recitation not afforded patentable weight, and Mueller discloses a commensurate holder as claimed. With regard to claim 11, Mueller discloses that placement base 4004 is configured to be movable between a first position facing the holder and a position not facing the holder, as the placement base 4004 as in the tube carrier rack is fully capable of sliding back and forth within the deck 4010 and being repositioned 180 degrees such that the ‘front’ of the rack 2004 is now the ‘back’ and vice versa, and likewise such arrangement being fully capable of being slid back and forth given an applied force within the deck 4010 slot (fig. 4). With regard to claim 12, Mueller discloses the holder further includes a support member that supports the test container through which the shaft member is inserted, and a counter member that faces the support member with the test container interposed therebetween (see, for example, diametrically opposing gripping arms comprising a support/counter member as in fig. 3), and wherein the test container is drawn to a prospective workpiece not afforded patentable weight and thus no particular weight is given to a disposition of the shaft member inserted therethrough nor the particular interposed test container (fig. 3, for example). With regard to claim 13, the support member is provided on a peripheral surface of the shaft member 3006, and protrudes from the peripheral surface of the shaft member to support the test container (fig. 3). With regard to claim 14, Mueller discloses a plurality of support members are provided in a rotation direction of the shaft member (as given by the other two of the four fingers 3004) (fig. 3). With regard to claim 17, Mueller discloses further comprising a discarding section 3016 (waste receptacle) that accommodates the test container that has moved in the gravity direction (and noting that the test container is an intended workpiece not afforded patentable weight and recitation to “that has moved…” is drawn to a process recitation not afforded patentable weight herein the apparatus claim). (fig. 3, 4, for example). With regard to claim 19, Examiner asserts that the test container is an intended workpiece not afforded patentable weight and is not drawn to a positively claimed element of the apparatus. With regard to claim 20, Examiner refers back to the discussion with respect to independent claim 1 and that of dependent claim 17 wherein the waste receptacle 3016 constitutes the discarding section as claimed . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim (s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mueller in view of Rao et al. (USPN 5,948,360) . Mueller has been discussed above. Mueller does not specifically disclose that the support member includes a plunger. Rao discloses an autosampler with robot arm (abstract). Rao discloses that the gripper head includes a plunger (i.e. 218 and/or 220) wherein the plunger provides to indicate particular positions of the gripper head in order to particularly provide the location at which the gripper head/fingers are to be opened for release of the vial or closed for the holding of the vial (line 60, col. 8 – line 4, col. 9, figs. 6c-f, for example). It would have been obvious to one of ordinary skill in the art to modify Mueller to provide that the support member includes a plunger such as taught by the analogous art of Rao to an autosampler with a robot arm in which a plunger included to the support member provides a particular means for indicating a desired position at which the support member should be opened for release of the test container or closed for grabbing/holding the test container . 07-21-aia AIA Claim (s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mueller in view of Kronsender (USPN 5,295,723) . Mueller has been discussed above. Mueller does not specifically disclose the counter member includes an elastic layer on an opposite surface facing the support member. Kronsender discloses a gripping bell for bottles or the like (abstract). Kronsender discloses elastic gripping fingers to provide for taking hold and releasing of a bottle (abstract; lines 4-19, col. 1; lines 18-44, col. 2, for example). It would have been obvious to one of ordinary skill in the art to modify Mueller to provide the counter member with an elastic layer on an opposite surface facing the support member such as suggested by the analogous art of Kronsender to gripper with gripping fingers for bottles or the like in which utilizing an elastic layer(s) to the counter member finger (or all of the fingers as in Mueller) provide an obvious alternative arrangement to suitably and stabling gripping a test container (akin to a bottle) in which the elastic layer affords further flexibility and softer gripping to prevent breakage of held containers. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to NEIL N TURK whose telephone number is (571)272-8914. The examiner can normally be reached M-F 930-630. 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, Charles Capozzi can be reached at 571-270-3638. 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. /NEIL N TURK/ Primary Examiner, Art Unit 1798 Application/Control Number: 18/210,612 Page 2 Art Unit: 1798 Application/Control Number: 18/210,612 Page 3 Art Unit: 1798 Application/Control Number: 18/210,612 Page 4 Art Unit: 1798 Application/Control Number: 18/210,612 Page 5 Art Unit: 1798 Application/Control Number: 18/210,612 Page 6 Art Unit: 1798 Application/Control Number: 18/210,612 Page 7 Art Unit: 1798 Application/Control Number: 18/210,612 Page 8 Art Unit: 1798 Application/Control Number: 18/210,612 Page 9 Art Unit: 1798 Application/Control Number: 18/210,612 Page 10 Art Unit: 1798 Application/Control Number: 18/210,612 Page 11 Art Unit: 1798 Application/Control Number: 18/210,612 Page 12 Art Unit: 1798 Application/Control Number: 18/210,612 Page 13 Art Unit: 1798 Application/Control Number: 18/210,612 Page 14 Art Unit: 1798