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 .
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 (see claims 17, 19–23, 25, 26, and 28–31; “linear acting mover means”, “valve means”, “plunger linear acting mover means”, “remover means”, “scraping remover means”, and “sponge remover means”) 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 Objections
Claims 19 and 36 are objected to because of the following informalities:
Regarding claim 19, the claimed, “test container” in line 6 is unclear, as claim 17 describes moving the response portions “out of the body” and “into the body”. Thus, claim 19 should be amended to change “test container” to “body”.
Regarding claim 36, the claimed, “the plunger” lacks antecedent basis in the claims, and it appears as though this limitation should be amended to “linear acting mover” for consistency with the claims from which it depends.
Appropriate correction is required.
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.
Claim(s) 17, 19–23, and 25–36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ealovega et al. (US Pub. # 20150157300), hereinafter referred to as Ealovega, in view of Casterlin (US Pub. # 20040099628).
Regarding claims 17 and 33, Ealovega teaches, “Apparatus for testing a liquid specimen, which apparatus comprises: a test container (Fig. 3A–3E) comprising a body (12) and a linear acting mover means (14) movable to and fro in the body; and a response portion (16) which enable the testing of a liquid specimen (10) consequent upon contact with the liquid specimen; wherein the linear acting mover means (14) is operable for moving the response portion (16) out of the body (12) for dipping the response portion into the liquid specimen (10), and for removing the response portion (16) from the liquid specimen (10) and moving the response portion (16) back into the body (12) after the contact with the liquid specimen (10) and for the testing of the liquid specimen (see transition of 12 and 14 into and out of 10 through Fig. 3B to 3E; see also para. [0085–0092]) (claim 33: such that unwanted excess soaking of the response portions by the liquid specimen is avoided.) (this limitation is also taught by Ealovega as set forth above, and notably is also a functional/intended use limitation).” Ealovega does not necessarily teach, “a plurality of response portions”. However, Casterlin teaches the deficiencies of Ealovega (see at least Fig. 1, ref. # 12; para. [0004], describing plural test response areas. It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify Ealovega’s invention to include a plurality of response portions.
The ordinary artisan would have been motivated to modify Ealovega’s invention for at least the purpose of testing plural sample components/drugs/compounds/ingredients within the liquid specimen at the same time, thus leading to increased efficiency.
Notably, “response portions” are claimed throughout the Office action and are taught by the combination of Ealovega and Casterlin, as shown in the rejection above. Further discussion regarding the response portion 16 of Ealovega being modified with Casterlin to include plural response portions will be omitted.
Regarding claim 19, Ealovega teaches, “including a collection container (1) for the liquid specimen (10), and in which the linear acting mover means (14) moves the response portions (16) into the collection container (Fig. 3D, ref. # 1) for the contact with the liquid specimen (10), and in which the linear acting mover means (14) moves the response portions (16) out of the collection container (10) for the moving of the response portions (16) back into the test container (notably, “test container” here should be “body” for consistency with claim 17, second to last line)(12).”
Regarding claim 20, Ealovega teaches, “in which the collection container comprises a body and a lid, and in which the linear acting mover means moves the response portions into and out of the collection container through the lid (1 is body and 2/3 is a lid, where 12/14 (here, 14 is interpreted as a plunger, as it moves 16 into and out of 1 through 2/3).”
Regarding claim 21, Ealovega teaches, “in which the response portions move into and out of the collection container through a valve means (16 moves into and out of 1 through valve means 3).”
Regarding claim 22, Ealovega teaches, “in which the valve means comprises a valve orifice, and in which the test container opens the valve orifice such that the response portions do not touch the valve means (see Fig. 3B–3E; 12 moving into valve means 3 opens orifice 4/5, where 16 does not touch 3).”
Regarding claim 23, Ealovega teaches, “in which the response portions are connected to the linear acting mover means (16 connected with 15 to 14).”
Regarding claim 25, Ealovega teaches, “in which the linear acting mover means is a plunger linear acting mover means (Fig. 3A–3D, ref. # 14 is interpreted as a plunger linear acting mover means, as it plunges into and out of 1 with 16 attached).”
Regarding claim 26, Ealovega teaches, “in which the plunger linear acting mover means comprises an elongate body and a plunger for moving to and fro in the elongate body, and in which the response portions are connected to the plunger (Fig. 3A–3D, ref. # 14 is interpreted as a plunger linear acting mover means with an elongate body and plunger (portion at 15 where 14 connects with 16), as it plunges into and out of 1 with 16 attached thereto).”
Regarding claim 27, Ealovega in combination with Casterlin teaches, “in which the response portions extend longitudinally (16 of Ealovega extends longitudinally and test portions of Casterlin, as shown in Fig. 1, 12, extend longitudinally).”
Regarding claims 28–31, Ealovega does not appear to teach, “remover means for removing unwanted liquid specimen from the response portions after the contact of the response portions with the liquid specimen; in which the remover means is a scraping remover means which operates to scrape the unwanted liquid specimen from the response portions after the contact of the response portions with the liquid specimen; in which the scraping remover means comprises a slot for receiving the response portions, and in which at least a part of the slot is defined by a wall which scrapes against at least a part of the response portions.” However, Casterlin teaches, “remover means for removing unwanted liquid specimen from the response portions after the contact of the response portions with the liquid specimen; in which the remover means is a scraping remover means which operates to scrape the unwanted liquid specimen from the response portions after the contact of the response portions with the liquid specimen; in which the scraping remover means comprises a slot for receiving the response portions, and in which at least a part of the slot is defined by a wall which scrapes against at least a part of the response portions; “in which the remover means is a sponge remover means (see abstract; see para. [0015, 0041, 0042, 0044, 0046, 0047, 0052]).” It would have been obvious to one skilled in the art before the effective filing date of the claimed invention to modify Ealovega’s invention to include remover means for removing unwanted liquid specimen from the response portions after the contact of the response portions with the liquid specimen; in which the remover means is a scraping remover means which operates to scrape the unwanted liquid specimen from the response portions after the contact of the response portions with the liquid specimen; in which the scraping remover means comprises a slot for receiving the response portions, and in which at least a part of the slot is defined by a wall which scrapes against at least a part of the response portions; in which the remover means is a sponge remover means.
The ordinary artisan would have been motivated to modify Ealovega’s invention for at least the purpose of ensuring the proper/desired amount of liquid is applied to the test/response portions ensuring excess remains in the collection container, ultimately avoiding residual dripping or spilling.
Regarding claim 32, Ealovega teaches, “in which at least a part of the test container is transparent in order to allow reading of the response portions in the test container after the response portions have been moved into contact with the liquid specimen and moved back into the test container [0057–0064].”
Regarding claim 34, Ealovega teaches, “in which the response portions can be seen through the body ([0057–0064]; 16 of 14 viewable through 12).”
Regarding claim 35, Ealovega teaches, “a collection container for receiving a liquid specimen (1 including 10).”
Regarding claim 36, Ealovega teaches, “in which the collection container comprises a body and a lid and the plunger moves the response portions into and out of the collection container body through the lid (1 is body and 2/3 is a lid, where 12/14 (here, 14 is interpreted as a plunger, as it moves 16 into and out of 1 through 2/3).”
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 33, and their related dependent claims 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 RYAN D WALSH whose telephone number is (571)272-2726. The examiner can normally be reached M-F, 8:30am-6:30pm.
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/RYAN D WALSH/Primary Examiner, Art Unit 2852