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 .
Notice of Reply
This communication is responsive to the amendment(s) and/or argument(s) filed 5/18/26. The previous ground(s) of objection and/or rejection is/are withdrawn. The following new and/or reiterated ground(s) of rejection is/are set forth hereinbelow.
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 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 Rao et al. (WO 2018/025046 A2, hereinafter Rao).
For claim 25, Rao discloses a sample receiving device (Figs 8-11) (Pgs 2-18, especially 17-18), comprising inter alia:
a first part (36A,36B,43) and a second part (42) (Figs 8-11) (Pgs 2-18, especially 17-18),
wherein the first part has at least two rod-shaped sample receiving units (36A,36B) connected to one another via a bendable connection (41A,41B bend via pivoting), whose ends facing away from the bendable connection are spatially spaced apart from one another in a basic state (Figs 8-11) (Pgs 2-18, especially 17-18),
wherein each of the at least two rod-shaped sample receiving units is a hollow cylindrical element and which provides an internal volume or an internal cavity designed for holding liquid samples, solid samples, and samples in gel form (Figs 8-11) (Pgs 2-18, especially 17-18), and
wherein the second part has a locking device (42) (Figs 1-8, 9-12A) ([0057-0074]) which is designed in such a way that, when the first part is placed with a side of the first part 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 units 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, 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 8-11) (Pgs 2-18, especially 17-18).
For claim 26, Rao discloses the sample receiving device according to claim 25, wherein the bendable connection is in the form of a hinge (42) (Figs 8-11) (Pgs 2-18, especially 17-18).
For claim 27, Rao discloses the sample receiving device according to claim 25, wherein the bendable connection is arranged centrally between the two sample receiving units (Figs 8-11) (Pgs 2-18, especially 17-18).
For claim 28, Rao 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 hollow fiber, a solid sponge, or has a capillary, a tube, a hollow fiber, or a solid sponge (Figs 8-11) (Pgs 2-18, especially 17-18).
For claim 30, Rao discloses the sample receiving device according to claim 25, wherein the first part is formed closed at a side (43) facing away from the tips of the at least two sample receiving units arranged facing in the direction of the sample (Figs 8-11) (Pgs 2-18, especially 17-18).
For claim 32, Rao discloses the sample receiving device according to claim 25, wherein the first part and the second part are connected to one another in a form-fitting or force-fitting manner (Figs 8-11) (Pgs 2-18, especially 17-18).
For claim 33, Rao 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 (41A,41B) which is transparent to electromagnetic radiation in the optically visible wavelength range (Figs 8-11) (Pgs 2-18, especially 17-18).
Response to Arguments
Applicant’s arguments, see page 8, filed 5/18/26, with respect to the newly amended claims overcoming the claim objections and 112 claim rejections have been fully considered and are persuasive. The objections and 112 rejections of the amended claims have been withdrawn.
Applicant’s arguments with respect to the 102 rejection of claim(s) 25-28, 30, and 32-33 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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.
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.
Jeffrey G. Hoekstra
Primary Examiner
Art Unit 3791
/JEFFREY G. HOEKSTRA/ Primary Examiner, Art Unit 3791
Prosecution Insights