DETAILED ACTION
Notice of AIA Status
The present application, filed on 4/6/23, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-33 are pending.
Claims 1-10 and 12-20 are rejected
Claims 1-20 are objected to.
Claims 21-33 are withdrawn.
Election/Restriction
Applicant's election with traverse of Group I, claims 1-20, in the reply filed on 12/05/2025 is acknowledged. The traversal is on the grounds that the requirement of unity of invention is fulfilled when the inventions involve one or more of the same or corresponding special technical features. This is not found persuasive because a technical feature is necessary but not sufficient for fulfillment of the unity of invention requirement. In other words, if there isn’t at least one technical feature shared there is no unity. In addition, if there is a technical feature the inquiry of unity of invention proceeds to determining whether the technical feature is a special technical feature that define a contribution over the prior art and in this case the technical feature isn’t special because even though the inventions require the technical feature of a column, which is provided with a bottom liquid inlet/outlet wherein at least part of an elongated frit has been arranged substantially parallel to the column side walls and segregating the separation media from the bottom liquid inlet/outlet, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Cook (US6761855) because Cook teaches a column (column 10 in Fig. 2), which is provided with a bottom liquid inlet/outlet (bottom orifice 16 in Fig. 1) and which is adapted to receive a separation media (solid support 52 in Fig. 2) wherein at least part of an elongated frit (lower frit 50 in Fig. 2) has been arranged substantially parallel to the column side walls (see Fig. 2) and segregating the separation media (solid support 52) from the bottom liquid inlet/outlet (bottom orifice 16).
As a result, the requirement is still deemed proper and is therefore made final.
Claims 21-33 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/05/2025.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Claim Objections
Claims 1-10 are objected to because of the following informalities: Claim 1 recites “A separation device, which includes at least one column, which is provided with a bottom liquid inlet/outlet and which is adapted to receive a separation media”. For the grammatical number clarity, consider rephrasing to ‘A separation device including a column having a bottom liquid port adapted to receive a separation medium’.
Claim 1 recites “to the column side walls”. Regarding ‘the column side walls, it's noted that according to MPEP 2173.05(e) "Inherent components of elements recited have antecedent basis in the recitation of the elements themselves". However, because a circular column may contain only a single wall, consider providing explicit antecedent basis to improve clarity beyond the minimum required under 35 U.S.C. 12(b) by rephrasing “at least one column … to the column side walls” to ‘a column comprising side walls … to the sides walls’.
Claim 1 recites “A separation device ….wherein at least part of an elongated frit has been arranged substantially parallel to the column side walls and segregating separation media from the bottom liquid inlet/outlet’. For the sake of clarity, consider rephrasing to ‘A separation device …. an elongated frit including a portion arranged substantially parallel to the column side walls and configured to segregate the separation medium from the bottom liquid port.
Claim 2 recites “the elongated frit is not arranged horizontally in the column when said column is arranged vertically”. For the sake of clarity, consider tying the orientation to a longitudinal axis of the column instead of to a user dependent positioning of the column during use, for example by rephrasing to ‘elongated frit is not arranged horizontally in the column relative to the longitudinal axis of the column’.
Claim 3 recites “at least part of the elongated frit is arranged at an angle within a range of about 45-900 to the horizontal plane of the column when said column is arranged vertically”. For the sake of clarity, consider tying the orientation to a longitudinal axis of the column instead of to a user dependent positioning of the column during use, for example by rephrasing to ‘elongated frit is arranged at an angle between about 450 and 900 relative to the longitudinal axis of the column.
Claim 4 recites “the elongated frit is arranged for allowing liquid flow which is perpendicular as well as parallel to the column side walls”. For the sake of clarity, consider rephrasing to ‘the elongated frit is arranged for enabling liquid to flow perpendicularly relative to the side as well as parallel to the column side walls ‘. Claim 11 recites “the elongated frit is comprised of a tubular support onto which the mesh has been wrapped at the side facing the separation media”. Regarding “the side”, it's noted that according to MPEP 2173.05(e) "Inherent components of elements recited have antecedent basis in the recitation of the elements themselves". However, consider providing explicit antecedent basis to improve clarity beyond the minimum required under 35 U.S.C. 12(b) by rephrasing ‘elongated frit is comprised of a tubular support having a side facing the separation medium onto which the mesh is wrapped’.
Claims dependent on an objected claim are objected to because any claim in dependent form is construed to incorporate by reference all the limitations of the claim to which it refers.
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 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.
Claim 17 recites “means for passing liquid between an upper end of the column and a lower end of the column” which invokes an interpretation under 35 U.S.C. §112(f) and the corresponding structure disclosed in the specification in [0058-0059] is a pump and equivalent thereof.
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.
Claims 1-7, 12-13 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cook (US6761855).
As to claim 1, Cook (US6761855) teaches separation device, which includes at least one column (column 10 in Fig. 2), which is provided with a bottom liquid inlet/outlet (bottom orifice 16 in Fig. 1) and which is adapted to receive a separation media (solid support 52 in Fig. 2) wherein at least part of an elongated frit (lower frit 50 in Fig. 2) has been arranged substantially parallel to the column side walls (see Fig. 2) and segregating the separation media (solid support 52) from the bottom liquid inlet/outlet (bottom orifice 16).
As to claim 2, Cook teaches the device according to claim 1, wherein the elongated frit (lower frit 50) is not arranged horizontally in the column (column 10) when said column (column 10) is arranged vertically (see Fig. 2).
As to claim 3, Cook teaches the device according to claim 2, wherein at least part of the elongated frit (lower frit 50) is arranged at an angle within a range of about 45-900 to the horizontal plane of the column (column 10) when said column (column 10) is arranged vertically (see Fig. 2).
As to claim 4, Cook teaches the device according claim 1,wherein the elongated frit (lower frit 50) is arranged for allowing liquid flow which is perpendicular as well as parallel to the column side walls (see Fig. 2).
As to claim 5, Cook teaches the device according to claim 1, which is provided with a top liquid inlet (upper orifice 14, see Fig. 2).
As to claim 6, Cook teaches the device according to claim 1, wherein an upper frit (upper frit 54, see Fig. 2) has been arranged in said column (column 10) at a position which allows the column (column 10) to receive separation media below said upper frit (upper frit 54) (the column of Cook is capable of receiving separation media below the upper frit during use, see Fig. 2).
As to claim 7, Cook teaches the device according to claim 6, wherein said upper frit (upper frit 54) has been arranged in a position in the column (column 10) which results in a volume comprised of separation media (see column 4, which recites “upper frit 54 is disposed in the central cavity portion 30 and placed on top of the solid support 52 to seal the solid phase resin while allowing fluid flow across the bed of resin”) as well as free space (lower cavity portion 40) below said upper frit (upper frit 54) (see Fig. 2).
As to claim 12, Cook teaches the device according to claim 1,wherein the bottom of the column (column 10) is provided with a tubular column end (lower tip 60 in Fig 2).
As to claim 13, Cook teaches the device according to claim 12, wherein the length of said tubular column end (lower tip 60) constitutes about one third of the length of the column (column 10) (because the tubular column end is defined to extent arbitrarily along the column, the length of said tubular column end constitutes about one third of the length of the column, see Fig. 2).
As to claim 15, Cook teaches the device according to claim 12, wherein the column is arranged with a sloped column bottom wall (see Fig. 2).
Claim Rejections under 35 U.S.C. § 103
In the event the determination of the status of the application as subject to 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.
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 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 14 is rejected under 35 U.S.C. § 103 as being unpatentable over Cook.
As to claim 14, Cook teaches the device according to claim 12.
Cook doesn’t explicitly teach that wherein the tubular column end and the elongated frit are arranged as one integral part.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device as disclosed by Cook such that the tubular column end (lower tip 60) and the elongated frit (lower frit 50) are arranged as one integral part with a reasonable expectation of success for the benefit of simplifying manufacturing and because the use of a one piece construction instead of the structure disclosed in Cook would be merely a matter of obvious engineering choice (see MPEP 2144.04).
Claims 8-10 are rejected under 35 U.S.C. § 103 as being unpatentable over Cook in view of Rigoli (US20060213823).
As to claim 8, Cook teaches the device according to claim 1.
Cook doesn’t teach that the elongated frit comprises a mesh.
In the analogous art of providing separation devices, Rigoli (US20060213823) teaches a mesh (mesh frit in [0019], which recites “Ultrasonic Welding of the Mesh Frit to the End Fitting and/or Frit Cap Welding of the mesh screen in place makes it easier for the user to pack the column without the screen becoming dislodged or mis-aligned”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device as disclosed by Cook by incorporating the mesh as disclosed by Rigoli with a reasonable expectation of success for the benefit of facilitating column packing.
As to claim 9, Cook in view of Rigoli teaches the device according to claim 8, wherein the mesh (mesh frit) is maintained in position by a hollow support (end fitting in Fig. 14 of Rigoli) which includes at least one hole (through hole in Fig 14 of Rigoli).
As to claim 10, Cook in view of Rigoli teaches the device according to claim 9, wherein the hollow support is defined by a circular (see Fig. 14 of Rigoli), oval, triangular or other angular cross section.
Claims 16-20 are rejected under 35 U.S.C. § 103 as being unpatentable over Cook in view of Gjerde (US20060124551).
As to claim 16, Cook teaches the device according to claim 12.
Cook doesn’t teach a liquid processing system comprising a column arranged in the liquid processing system.
In the analogous art of providing separation devices, Gjerde (US20060124551) teaches a liquid processing system (multiplexed extraction system in [0245]) comprising a column (extraction column 22 in [0245]) arranged in the liquid processing system (multiplexed extraction system) (see Fig. 13).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device as disclosed by Cook such that the column is arranged in a liquid processing system as disclosed by Gjerde with a reasonable expectation of success for the benefit of automatically or manually performing an extraction protocol including multiple withdraw and infusion cycles, along with optional delays between cycles (see [0245] of Gjerde).
As to claim 17, Cook teaches the device according to claim 12.
Cook doesn’t teach means for passing liquid between an upper end of the column and a lower end of the column.
In the analogous art of providing separation devices, Gjerde (US20060124551) teaches means (pump in [0152]) for passing liquid (see [0153], which recites “the pump should be capable of pumping liquid”) between an upper end of the column and a lower end of the column (see [0152], which recites “a pump is attached to the upper open end of the column and used to aspirated and discharge the sample from the column”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device as disclosed by Cook incorporating the pump disclosed by Girde such that the device includes means for passing liquid between an upper end of the column and a lower end of the column with a reasonable expectation of success for the benefit of effectively driving liquid out of the interstitial volume and contributing to a more highly purified, concentrated analyte (see [0153] of Gjerde).
As to claim 18, Cook in view Gjerde teaches the device according to claim 17, wherein said means (pump) provides positive or negative pressure (see [0152] of Gjerde, which recites “the pump can take any of a variety of forms, so long as it is capable of generating a negative internal column pressure to aspirate a fluid into the column channel through the open lower end. In some preferred embodiments of the invention the pump is also able to generate a positive internal column pressure to discharge fluid out of the open lower end”) .
As to claim 19, Cook in view Gjerde teaches the device according to claim 17, wherein said means (pump) comprises pumping means (pump) (see [0153]).
As to claim 20, Cook in view Gjerde teaches the device according claim 17, which comprises two or more columns arranged for parallel processing (see Fig. 13 of Gjerde).
Allowable Subject Matter
Claim 11 is 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.
As to claim 11, Cook in view of Rigoli teaches the device according to claim 8 teach that the elongated frit is comprised of a tubular support (see Fig. 2 of Cook).
Cook in view of Rigoli doesn’t teach that the elongated frit is comprised of a tubular support onto which the mesh has been wrapped at the side facing the separation media.
Conclusion
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/JONATHAN BORTOLI/Examiner, Art Unit 1797 /JENNIFER WECKER/Primary Examiner, Art Unit 1797