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 A. 2, B. 1, C. 1, D. 1 in the reply filed on 06/22/2026 is acknowledged.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “each of the liquid storage bottles comprises: a first passage opening, a second passage opening, a third passage opening, [...]; the first passage opening is configured to be connected to the sampling channel switching module through a pipe; the second passage opening is configured to be connected to the inert gas conveying module through a pipe; the third passage opening is configured to discharge gas or liquid from each of the liquid storage bottles must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to under 37 CFR 1.83(a) because they fail to show “Each liquid storage bottle 51 includes: a first passage opening, a second passage opening, a third passage opening [...] (¶ 0056); The first passage opening is configured to be connected to the sampling channel switching module 2 through a pipe. The second passage opening is configured to be connected to the inert gas conveying module 1 through a pipe. The third passage opening is configured to discharge gas or liquid from the liquid storage bottle 51. (¶ 0057)” as described in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 § 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.
Claims 1-9 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.
Claim limitation “configured to [...]” has been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the term “means” or generic placeholder is modified by a word, which is ambiguous regarding whether it conveys structure or function; and/or the claim limitation uses the word “means” or a generic placeholder coupled with functional language, but it is modified by some structure or material that is ambiguous regarding whether that structure or material is sufficient for performing the claimed function. The boundaries of this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
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.
(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) 1-9 is/are rejected under 35 U.S.C. 102a1/a2 as being anticipated by DeWitte (De Witte et al. US 2018/0372697 A1).
Regarding claim 1, DeWitte teaches:
1. An automatic sample injection system, comprising:
an inert gas conveying module (see i.e., an inert gas, such as N2 is supplied to the gas conduit ¶ 0183; pressure source ¶ 0132), a sampling channel switching module (e.g., multi-port valve 126a, 126b), a quantification module (see rejection to claim 6 below), a disposal module (see rejection to claim 7 below), a liquid storage module (see rejection to claim 3 below), and a host computer (e.g., sample preparation controller 22 is a computer, computing system, ¶ 201),
wherein the liquid storage module and the sampling channel switching module are both connected to the inert gas conveying module through pipes; the quantification module is connected to the sampling channel switching module and the disposal module separately through pipes; the liquid storage module is connected to the sampling channel switching module through a pipe; the inert gas conveying module, the sampling channel switching module and the quantification module are all electrically connected to the host computer (see Figs. 2-4 for example).
With regard to limitations in claims 1, 2, 4, 7, 8 (e.g., [...] to convey [...]; [...] to extract [...]; [...] to determine [...]; and [...] to control [...]; [...] pressure regulating [...], etc.), these claim limitations are considered process or intended use limitations, which do not further delineate the structure of the claimed apparatus from that of the prior art. The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)). "Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim." Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Furthermore, "[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims." See In re Young, 75 F.2d *>996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115).
Regarding claims 2-9, DeWitte teaches:
2. The automatic sample injection system according to claim 1, wherein the inert gas conveying module comprises: an inert gas storage container (as an inert gas, such as N2 is supplied to the gas conduit (¶ 0183), an inert gas storage container would be present), a pressure regulating filter (e.g., pressure filtration system, filter membrane ¶ 0131), and a first solenoid valve unit (e.g., 1484); the inert gas storage container is connected to the liquid storage module and the sampling channel switching module separately through pipes (see ¶ 0183-0184 for example); and the pressure regulating filter and the first solenoid valve unit are arranged on a connecting pipe between the inert gas storage container and the liquid storage module (see ¶ 0131-0132, 0183-0184, 0327 for example).
3. The automatic sample injection system according to claim 1, wherein the liquid storage module comprises N liquid storage bottles; each of the liquid storage bottles is connected to the inert gas conveying module through a pipe; and a bottle bottom of said each of the liquid storage bottles is conical-shaped (see i.e., a respective solvent or mobile phase container 122 (FIG. 3A) or a sample source or sample loop; each mobile phase container 122 (FIG. 3A) may contain a different mobile phase for conducting a different one of the assays. ¶ 0169-0170 & Figs. 3A-3D, 4B for example).
4. The automatic sample injection system according to claim 3, wherein each of the liquid storage bottles comprises: a first passage opening, a second passage opening, a third passage opening, and a bottle cap; the bottle cap is connected to a bottle mouth of each of the liquid storage bottles in a threaded manner (e.g., screw-top cap ¶ 0109 & Fig. 6 for example).
5. The automatic sample injection system according to claim 3, wherein the sampling channel switching module comprises: a first multi-channel switching valve (e.g., multi-port valve 126a or 126b) and a second multi-channel switching valve (e.g., multi-port valve 126a or 126b); and the first multi-channel switching valve is connected to M liquid storage bottles through pipes; and the second multi-channel switching valve is connected to N-M liquid storage bottles through pipes, wherein M is a number of liquid storage bottles connected to the first multi-channel switching valve; N is a total number of liquid storage bottles; and N-M is a difference between N liquid storage bottles and the M liquid storage bottles (see i.e., a respective solvent or mobile phase container 122 (FIG. 3A) or a sample source or sample loop; each mobile phase container 122 (FIG. 3A) may contain a different mobile phase for conducting a different one of the assays. ¶ 0169-0170 & Figs. 3A-3D, 4B for example).
6. The automatic sample injection system according to claim 5, wherein the quantification module comprises: a syringe pump unit (e.g., 124, 345 ¶ 0159-0160, 0206), a pressure sensor (¶ 0165), a flowmeter (¶ 0165), and a second solenoid valve unit (e.g., 1484); and an inlet of the syringe pump unit is connected to the sampling channel switching module through a pipe; an outlet of the syringe pump unit is connected to the flowmeter through a pipe; the flowmeter is connected to the disposal module through a pipe; the second solenoid valve unit is arranged on a connecting pipe between the flowmeter and the disposal module; the pressure sensor is arranged on a connecting pipe between the syringe pump unit and the flowmeter; and the second solenoid valve unit, the pressure sensor and the flowmeter are all electrically connected to the host computer (see Figs. 4B, 9A-9B & ¶ 0157-0160+ for example).
7. The automatic sample injection system according to claim 6, wherein the disposal module comprises: a reactor (e.g., 92), a solution pipe (e.g., 96), and a waste liquid bottle (e.g., 134); a sample injection port of the reactor (e.g., 58) and a liquid inlet of the waste liquid bottle are both connected to the second solenoid valve unit through pipes; the solution pipe is connected to an exhaust port (e.g., a port of 58) of the reactor through a pipe (see Figs. 2, 4A-4B, 7 for example).
8. The automatic sample injection system according to claim 7, wherein the reactor comprises: a bottle mouth, a bottle body, and a port; a given angle is formed between the sample injection port and the bottle body; the exhaust port and the sample injection port are symmetrically arranged with respect to a center line of the bottle mouth; the bottle body comprises a reaction inner container, a first layer and a second layer from inside to outside in sequence; a bottom of the reaction inner container has an arc-shaped structure; and the sampling port is in communication with the reaction inner container (see Figs. 4A-4B, 7 for example).
9. The automatic sample injection system according to claim 6, wherein the syringe pump unit comprises: a first syringe pump (i.e., one of two 124s in Fig. 4B) and a second syringe pump (i.e., one of two 124s in Fig. 4B); the first syringe pump is connected to one channel of the first multi-channel switching valve through a pipe; the second syringe pump is connected to one channel of the second multi-channel switching valve through a pipe; and a range of the first syringe pump is smaller than that of the second syringe pump (see Fig. 4B for example).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEAN KWAK whose telephone number is (571)270-7072. The examiner can normally be reached M-TH, 4:30 am - 2:30 pm 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 CAPOZZI can be reached at (571)270-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEAN KWAK/Primary Examiner, Art Unit 1798
DEAN KWAK
Primary Examiner
Art Unit 1798
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