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 with traverse of species A in the reply filed on 8/11/26 is acknowledged. The traversal is on the ground(s) that the species are specifically recited as being interoperable. This is not found persuasive. The instant application is a national stage of a PCT application. As such, it is subject to the PCT unity of invention standards for restriction purposes. Unity of invention exists among species where the species share a special technical feature. In the instant case, the species at issue do not share a special technical feature. As such, they do not have unity of invention, and restriction is proper. Applicant’s assertion alludes to the independent or distinct requirement of US restriction practice, wherein species must be mutually exclusive in order to be restricted from each other. Since this application is being restricted under the Unity of Invention standard, and not the under the US filing standard, applicant’s argument is not persuasive.
The requirement is still deemed proper and is therefore made FINAL.
Claims 5-7, 12, and 17 are withdrawn.
Claim Rejections - 35 USC § 112
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.
Claim 14 is 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. Claim 14 recites, “wherein the sample flows continuously through the liquid container.” Claim 14 is directed to an apparatus, and there is no recitation of structure that might move liquid. As such, it is unclear whether the above noted functional limitation is a description of additional structure to be added to the apparatus to facilitate “flow”, or a description of intended use, or simply an acknowledgement that liquid moves via Brownian motion. As such, one of ordinary skill in the art would be unable to ascertain the scope of the claimed invention, and the claim is indefinite. The claim will be interpreted as though it references a non-limiting intended use.
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.
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, 8, 11, 13, 14, 15, 16, 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2014/0283628 A1 [Hattingh].
Regarding Claim 1:
Hattingh discloses a method of sampling an ejection of a sample from a liquid container (abstract), the method comprising:
disposing the liquid container (Fig. 3c (300)) adjacent an open port interface (Fig. 3c (340)), wherein the container comprises a sampling port (Fig. 3c – top of well (307));
engaging the open port interface with the sampling port (as shown in Fig. 3c);
ejecting the sample from the liquid container, through the sampling port, and into the open port interface (para 60); and
analyzing the sample with a mass spectrometry device (claim 8).
Regarding Claim 8:
Hattingh discloses a system for obtaining a sample for analysis (abstract), the system comprising:
a liquid container containing the sample (Fig. 3c (300));
an open port interface for receiving the sample (Fig. 3c (340));
an acoustic ejection device for ejecting a droplet of the sample from the liquid container (Fig. 3c (350), para 60); and
means for isolating an interior of the liquid container from an atmosphere surrounding the liquid container, wherein the means for isolating is configurable to allow ejection of the droplet from the liquid container and into the open port interface (This “means for” limitation is understood under 35 USC 112(f) to correspond to the isolating structures disclosed in the specification, including a seal. Hattingh Fig. 3c (342) is such a seal.).
Regarding Claim 11:
Hattingh discloses the system of claim 8, wherein the means comprises a gasket. Fig. 3c (342), paras 25, 27.
Regarding Claim 13:
Hattingh discloses the system of claim 8, wherein the open port interface is positionable relative to the liquid container. Paras 38, 64, 65.
Regarding Claim 14:
Hattingh discloses the system of claim 8, wherein the liquid container comprises a conduit (Fig. 3c (300) has a number of conduits), and wherein the sample flows continuously through the liquid container (one could add sample to the open wells, thus achieving the intended use of continuous flow).
Regarding Claim 15:
Hattingh discloses the system of claim 8, wherein the open port interface is configured to contact the sample. The open port of (307) is configured for sample contact, at least because the entire well (307) clearly demonstrate the ability to contact sample.
Regarding Claim 16:
Hattingh discloses a method of aseptically sampling a droplet of a fluid sample (abstract), the method comprising:
isolating, from a surrounding atmosphere, the fluid sample in a liquid container (as shown in Fig. 3c (300));
aligning a port of the liquid container with an open port interface (as shown in Fig. 3c (340));
ejecting the droplet into the open port interface while maintaining the isolation of the fluid sample (Fig. 3c (350), para 60).
Regarding Claim 19:
Hattingh discloses the method of claim 16, further comprising sealingly engaging the port with the open port interface. Fig. 3c (342), paras 25, 27.
Claim Rejections - 35 USC § 103
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 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.
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.
Claims 2, 9, 10, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hattingh in view of US 2006/0071983 A1 [Stearns].
Regarding Claim 2:
Hattingh teaches the method of claim 1, but fails to teach that engaging the open port interface with the sampling port comprises opening at least one of a shutter.
Stearns teaches a method for acoustically ejecting samples (abstract) wherein the sampling port comprises a shutter (see annotated Fig. 2 below) and sampling from said port comprises opening said shutter (see annotated Fig. 2 below, see para 135).
It would have been obvious to one of ordinary skill in the art before the effective time of filing to add the shutter and the shutter opening step of Stearns to Hattingh, since this would keep the sample safe from the environment when said sample is not under test.
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Regarding Claim 9:
Hattingh teaches the system of claim 8, but fails to teach that the means comprises a shutter positionable in a first open position and a second closed position.
Stearns teaches a method for acoustically ejecting samples (abstract) wherein the sampling port comprises a openable shutter (see annotated Fig. 2 above) and sampling from said port comprises opening said shutter (see annotated Fig. 2 above, see para 135).
It would have been obvious to one of ordinary skill in the art before the effective time of filing to add the shutter of Stearns to Hattingh, since this would keep the sample safe from the environment when said sample is not under test.
Regarding Claim 10:
The above modified invention teaches the system of claim 9, wherein the shutter is positionable in the first open position upon engagement of the open port interface with at least a portion of the shutter. Stearns para 135 – the acoustic ejection takes place when the shutter is open.
Regarding Claim 20:
Hattingh teaches the method of claim 19, but fails to teach sealingly engaging the port comprises penetrating a positionable shutter with the open port interface.
Stearns teaches a method for acoustically ejecting samples (abstract) wherein the sampling port comprises a openable shutter (see annotated Fig. 2 above) and sampling from said port comprises opening said shutter (see annotated Fig. 2 above, see para 135).
It would have been obvious to one of ordinary skill in the art before the effective time of filing to add the shutter and the shutter opening step of Stearns to Hattingh, since this would keep the sample safe from the environment when said sample is not under test.
Claims 3, 4, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Hattingh in view of US 2007/0039866 A1 [Schroeder].
Regarding Claim 3:
Hattingh discloses the method of claim 1, but fails to teach that engaging the open port interface with the sampling port comprises receiving the open port interface in the sampling port.
Schroeder teaches another sampling technique for analytical technique (abstract), wherein samples are taken from well by engaging an open port interface with a sampling port and receiving the open port interface in the sampling port. See Fig. 4a, para 255.
It would have been obvious to one of ordinary skill in the art before the effective time of filing to add the second sampling method of Schroeder to the sampling method of Hattingh, since this would provide users with an additional technique for extracting sample for analysis.
Regarding Claim 4:
Hattingh discloses the method of claim 1, but fails to teach that engaging the open port interface with the sampling port further comprises receiving the open port interface in the liquid container.
Schroeder teaches another sampling technique for analytical technique (abstract), wherein samples are taken from well by engaging an open port interface with a sampling port and receiving the open port interface in the liquid container. See Fig. 4a, para 255.
It would have been obvious to one of ordinary skill in the art before the effective time of filing to add the second sampling method of Schroeder to the sampling method of Hattingh, since this would provide users with an additional technique for extracting sample for analysis.
Regarding Claim 18:
Hattingh discloses the method of claim 16, but fails to teach the method further comprising penetrating the port with the open port interface.
Schroeder teaches another sampling technique for analytical technique (abstract), wherein samples are taken from well by engaging an open port interface with a sampling port and the open port interface penetrating the sampling port. See Fig. 4a, para 255.
It would have been obvious to one of ordinary skill in the art before the effective time of filing to add the second sampling method of Schroeder to the sampling method of Hattingh, since this would provide users with an additional technique for extracting sample for analysis.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WYATT A STOFFA whose telephone number is (571)270-1782. The examiner can normally be reached M-F 0700-1600 EST.
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WYATT STOFFA
Primary Examiner
Art Unit 2881
/WYATT A STOFFA/Primary Examiner, Art Unit 2881
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