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 .
Election/Restrictions
Applicant’s election without traverse of Group I, drawn to a sample receiving device, and Species A, embodiment drawn to Figures 1-8, in the reply filed on 11/21/25 is acknowledged.
Although Applicant indicated claims 24-26 comprise elected subject matter from Group I. Applicant’s reply appears non-compliant and silent with respect to the identification of claims corresponding to the election of Species A as per the requirement set forth on page 4 of the Restriction/Election mailed 9/5/25.
In the interest of compact prosecution and with respect to withdrawn claims that were not indicated by Applicant, the Examiner respectfully notes, that consistent with the instant Specification, the claims below are directed to corresponding non-elected subject matter, including the following:
Claim 29 corresponds to at least non-elected Species F and Figure 17 description;
Claim 31 corresponds to at least non-elected Species F and Figure 17 description;
Claim 34-42 corresponds to at least non-elected Species D and Figure 13 description;
Claim 43 corresponds to at least non-elected Species F and Figure 17 description;
Claim 44 corresponds to at least non-elected Species B and Figure 9 description; and
Claim 45 corresponds to at least non-elected Species F and Figure 17 description.
Claims 29, 31, and 34-48 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention/species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/21/25.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Information Disclosure Statement
The accompanying information disclosure statement (IDS) submission(s) is/are is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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(s) is/are:
“a first part” in claim 25;
“a second part” in claim 25; and
“at least two rod-shaped sample receiving units “ in claim 25.
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.
Claim Objections
Claim 25 is objected to because of the following informalities: the positive recitation in line 8 of “the first part is place with its side facing away” should apparently read “the first part is place with a side of the first part facing away”, or the like, to improve clarity. Appropriate correction is required.
Claim 25 is objected to because of the following informalities: the positive recitation in line 10 of “the at least two sample receiving devices” should apparently read “the at least two sample receiving units”, or the like, such that it is consistent with established antecedent and the instant Specification. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 26 and 28 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 term “hinge-shaped” in claim 26 is a relative term which renders the claim indefinite. The term “hinge-shaped” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The scope of the claimed invention is indeterminate because “hinge-shaped” could have an infinite number of interpretations, such that it is unclear what is explicitly, implicitly, inherently, or inferentially required and/or necessarily excluded by the “hinge-shaped” recitation.
The term “preferably” in claim 28 is a relative/conditional term which renders the claim indefinite. The term “preferably” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. As one example, the configuration of the sponge is indeterminate because it is indeterminate what structure(s) may or may not be required and/or excluded by the recitation “preferably a solid sponge”. Similar applies to the hollowness of the “fiber”, the shape of the “rod”.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 32 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 32 recites “the first part and the second part can be connected to one another in a form-fitting or force-fitting manner”. Under the broadest reasonable interpretation, the conditional “can” is not required, such that claim 32 fails to further limit claim 25 from which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 25-28, 30, and 32-33 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kessler (US 2005/0125013 A1).
For claim 25, Kessler discloses a sample receiving device (Figs 1-8, 9-12A) ([0057-0074]), comprising inter alia:
a first part (12,14) and a second part (30) (Figs 1-8, 9-12A) ([0057-0074]),
wherein the first part has at least two rod-shaped sample receiving units (12,14) (Figs 1-8, 9-12A) ([0057-0074]) connected to one another via a bendable connection (proximally joined portions of 12,14) (Figs 1-8, 9-12A) ([0057-0074]), whose ends facing away from the bendable connection are spatially spaced apart from one another in a basic state (12 and 14 are biased open in a resting state) (Figs 1-8, 9-12A) ([0057-0074]), and
wherein the second part has a locking device (30) (Figs 1-8, 9-12A) ([0057-0074]) which is designed in such a way that, when the first part is placed with its side facing away from the sample receiving units onto the second part, the bendable connection is bent by the shape of the locking device and the ends of the at least two sample receiving devices can be guided towards one another so that the sides of the at least two sample receiving units facing in the direction of a sample are arranged directly next to one another (12 and 14 are locked closed via 30) (Figs 1-8, 9-12A) ([0057-0074]), are locked in this position by the locking device and a single sample can be received in the at least two sample receiving units or with the at least two sample receiving units (Figs 1-8, 9-12A) ([0057-0074]).
For claim 26, Kessler discloses the sample receiving device according to claim 25, wherein the bendable connection is a hinge-shaped connection (the proximally joined portions of 12,14 functions as a hinge) (Figs 1-8, 9-12A) ([0057-0074]).
For claim 27, Kessler discloses the sample receiving device according to claim 25, wherein the bendable connection is arranged centrally between the two sample receiving units (proximally joined portions of 12,14 are located in the middle of 12,14) (Figs 1-8, 9-12A) ([0057-0074]).
For claim 28, Kessler discloses the sample receiving device according to claim 25, wherein at least one of the sample receiving units is in the form of a capillary, a tube, a fiber, preferably a hollow fiber, a swab, a brush, a spatula, a spatula knife, a needle, a membrane, a scoop, a spoon, a sponge, preferably a solid sponge, or a rod, preferably a helical rod, (Figs 1-8, 9-12A) ([0057-0074]) or has a capillary, a tube, a fiber, preferably a hollow fiber, a swab, a brush, a spatula, a spatula knife, a needle, a membrane, a scoop, a spoon, a sponge, preferably a solid sponge, or a rod, preferably a helical rod (Figs 1-8, 9-12A) ([0057-0074]).
For claim 30, Kessler discloses the sample receiving device according to claim 25, wherein the first part is formed closed at a side facing away from the tips of the at least two sample receiving units arranged facing in the direction of the sample (Figs 1-8, 9-12A) ([0057-0074]).
For claim 32, Kessler discloses the sample receiving device according to claim 25, wherein the first part and the second part can be connected to one another in a form-fitting or force-fitting manner (rigidly proximally joined portions of 12,14) (Figs 1-8, 9-12A) ([0057-0074]).
For claim 33, Kessler discloses the sample receiving device according to claim 25, wherein the first part with the at least two sample receiving units is formed from a plastic material (molded plastic) (Figs 1-8, 9-12A) ([0057-0074]) which is transparent to electromagnetic radiation in the optically visible wavelength range (Figs 1-8, 9-12A) ([0057-0074]).
Conclusion
The cited prior art made of record on the accompanying PTO-892 and not relied upon is considered pertinent to applicant's disclosure, relating to means for configuring a sample receiving device.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey G. Hoekstra whose telephone number is (571)272-7232. The examiner can normally be reached Monday through Thursday from 5am-3pm EST.
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 A. Marmor II can be reached at (571)272-4730. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Jeffrey G. Hoekstra
Primary Examiner
Art Unit 3791
/JEFFREY G. HOEKSTRA/ Primary Examiner, Art Unit 3791