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 Group II (Claims 11-15 and 18-20) in the reply filed on December 18th, 2025 is acknowledged. The traversal is on the ground(s) that the claims directed to the method for comminuting a biological process-material g technical features. This is not found persuasive because the shared, technical features, the electroporating device and the comminuting device are disclosed by Swoboda (US20070202601A1), hereinafter “Swoboda” (see rejections below). Therefore, the respective groups lack the same or corresponding technical features and do not relate to a single general inventive concept.
Lack of unity of invention may be directly evident “a priori,” that is, before considering the claims in relation to any prior art, or may only become apparent “a posteriori,” that is, after taking the prior art into consideration. For example, independent claims to A+X, A+Y, X+Y can be said to lack unity a priori as there is no subject matter common to all claims. In the case of independent claims to A+X and A+Y, unity of invention is present a priori as A is common to both claims. However, if it can be established that A is known, there is lack of unity a posteriori, since A (be it a single feature or a group of features) is not a technical feature that defines a contribution over the prior art.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-14 and 16-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on December 18th, 2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
The information disclosure statements (IDS) submitted on Sept 19th, 2023 and April 9th, 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “5” has been used to designate all variants of the measuring device regardless of what they are measuring. Each different type of measuring device needs a different number. 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. 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 as failing to comply with 37 CFR 1.84(p)(4) because reference character “10” has been used to designate both drive and actuator. 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. 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 as failing to comply with 37 CFR 1.84(p)(4) because reference characters “16” and “17” has been used to designate all types of control lines and control signals, respectively, regardless of what they are signaling. Each different type of control line and control signal needs a different number. 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. 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 as failing to comply with 37 CFR 1.84(p)(4) because reference character “17” has been used to designate both actuating signal and control signal. 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. 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 as failing to comply with 37 CFR 1.84(p)(4) because reference character “T” has been used to designate both the conveying direction and the transport direction. 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. 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 examiner encourage applicant to be consistent with their nomenclature.
In addition to Replacement Sheets containing the corrected drawing figure(s), applicant is required to submit a marked-up copy of each Replacement Sheet including annotations indicating the changes made to the previous version. The marked-up copy must be clearly labeled as “Annotated Sheets” and must be presented in the amendment or remarks section that explains the change(s) to the drawings. See 37 CFR 1.121(d)(1). Failure to timely submit the proposed drawing and marked-up copy will result in the abandonment of the application.
Specification
The abstract of the disclosure is objected to because the present Abstract filed on 09/19/2023 contain a title and reference numbers "()". It is suggested that the title and reference numbers "()" are removed. Correction is required. See MPEP § 608.01(b).
The abstract of the disclosure is objected to because the present Abstract filed on 09/19/2023 contains a typo in line 2: "electroporatingthe" should read "electroporating the". Correction is required. See MPEP § 608.01(b).
The title of the invention, Method and device for comminuting a biological process-material, is not descriptive. There are no claims directed to a method. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: "Device for comminuting a biological process-material".
The disclosure is objected to because of the following informalities:
The specification lacks section headings.
Page 1, Line 3: “a device for a comminuting” should read “a device for comminuting”
Page 1, Line 15: “is it the object” should read “it is the objective”
Page 2, Line 2: “too low an intensity” should read “too low of an intensity”
Page 2, Line 11: “too high a comminution” should read “too high of a comminution”
Page 4, Line 15 and 17: “variablemay” should read “variable may”
Page 5, Line 11: “comminutionprocess” should read “comminution process”
Page 7, Line 13: “controllermay” should read “controller may”
Page 10, Line 22: “comminution parameter K” should read “comminution parameter ZK”
Page 12, Line 4: “parametermay” should read “parameter may”
Page 12, Line 23: “comminution variable” should read “comminution variable ZG”
Appropriate correction is required.
Claim Objections
Claim 11-15 and 18-20 are objected to because of the following informalities:
Claim 11, Line 1: Device should read as A device
Claims 12-15 and 18-20, Line 1: Device should read as The device
Appropriate correction is required.
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 is: a measuring device (5) for acquiring a comminution parameter (ZK) in Claim 11, Lines 2-3.
Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
A review of the specification shows that, although it is not clear, the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112f limitation:
Page 2, Lines 25-28: “To detect the comminution parameter, the measuring device may include a force meter and/or a momentum/pulsemeter. To determine a force or a momentum as a comminution parameter, the measuring device may alternatively or additionally include a velocity meter and/or an acoustic measuring device, e.g. a sound meter.” Therefore, the interpretation of “a measuring device (5) for acquiring a comminution parameter (ZK)” is a force meter, a momentum/pulsemeter, a velocity meter and/or an acoustic measuring device, e.g. a sound meter and equivalents thereof.
If applicant does not intend to have this limitation 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 to avoid it 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 recites sufficient structure to perform the claimed function so as to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim(s) 11-12, 15, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Swoboda (US20070202601A1), hereinafter "Swoboda".
Regarding Claim 11, Swoboda discloses a device (Fig. 1) for comminution of a biological process-material comprising an electroporator (Fig.1, Element 20), a comminution device (Fig. 1, Element 10), a measuring device (Fig. 2, Element 84) for acquiring a comminution parameter (¶0124, Lines 1-5), and a controller (see annotated Fig. 2 of Swoboda reproduced below; ¶0093, Lines 1-3) for setting an electroporation parameter as a function of the acquired comminution parameter ((¶0125, Lines 1-3).
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Annotated Fig. 2 of Swoboda
Regarding Claim 12, Swoboda anticipates the device for comminution of a biological process-material of Claim 11 as explained above.
Swoboda further discloses wherein the comminuting device (Fig. 1, Element 10) comprises a cutting device (¶0067, Lines 1-3).
Regarding Claim 15, Swoboda anticipates the device for comminution of a biological process-material of Claim 11 as explained above.
Swoboda further discloses wherein the controller (see annotated Fig. 2 of Swoboda reproduced above; ¶0093, Lines 1-3) comprises a control unit (Fig. 2, Element 96) for comparing the acquired comminution parameter (¶0116, Lines 1-8) with a comminution variable (¶0116, Lines 1-8) stored in the control unit (Fig. 2, Element 100; ¶0116, Lines 1-8) for outputting an actuating signal (¶0125, Lines 1-3) adjusting the electroporation parameter ((¶0125, Lines 1-3).
Regarding Claim 20, Swoboda anticipates the device for comminution of a biological process-material of Claim 12 as explained above.
Swoboda further discloses wherein the controller (see annotated Fig. 2 of Swoboda reproduced above; ¶0093, Lines 1-3) comprises a control unit (Fig. 2, Element 96) for comparing the acquired comminution parameter (¶0116, Lines 1-8) with a comminution variable (¶0116, Lines 1-8) stored in the control unit (Fig. 2, Element 100; ¶0116, Lines 1-8) for outputting an actuating signal (¶0125, Lines 1-3) adjusting the electroporation parameter ((¶0125, Lines 1-3).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Swoboda, in view of Rommens et al. (WO2010132713A2), hereinafter Rommens.
Regarding Claim 13, Swoboda anticipates the device for comminution of a biological process-material of Claim 12 as explained above.
Swoboda fails to disclose wherein the cutting device comprises fixed or movable cutting edges.
Nonetheless, Rommens teaches a cutting device (Fig. 14, Element 100) with fixed or movable cutting edges (Fig. 14, Element 110).
Swoboda and Rommens are considered analogous art to the claimed invention because they are in the same field of endeavor of biological process-material processing. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Rommens of using a cutting device with cutting edges, into the device for comminution of a biological process-material disclosed by Swoboda, to define openings therebetween and produce cut strips of the biological process-material (i.e., potato tuber) (¶0105, Lines 3-4; ¶0106, Lines 1-3).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Swoboda, in view of Rommens as applied to claim 13 above, and further in view of Cousin et al. (US20030165608A1), hereinafter Cousin.
Regarding Claim 19, the prior art combination of Swoboda and Rommens renders the device for comminution of a biological process-material as claimed in Claimed 13 unpatentable.
Swoboda and Rommens fail to teach wherein the measuring device comprises a force meter, a sound meter, a speed meter, and/or a pulse meter.
Nonetheless, Cousin teaches a measuring device (¶0032, Lines 1-4) that comprises a force meter (¶0032, Lines 1-4).
Examiner Note: A texturometer, or texture analyzer, is a type force meter (see specification sheet by Shimadzu (2013) and provided by the examiner).
Swoboda, Rommens, and Cousin are considered analogous art to the claimed invention because they are in the same field of endeavor of comminution of biological process-material. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Cousin of using a forcemeter, into the device for comminution of a biological process-material disclosed by Swoboda and modified by Rommens, to quantify the biological process-material (i.e., potato tuber) resistance to slicing (¶0032, Lines 1-4).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Swoboda, in view of Cousin.
Regarding Claim 14, Swoboda anticipates the device for comminution of a biological process-material of Claim 11 as explained above.
Swoboda fails to teach wherein the measuring device comprises a force meter, a sound meter, a speed meter, and/or a pulse meter.
Nonetheless, Cousin teaches a measuring device (¶0032, Lines 1-4) that comprises a force meter (¶0032, Lines 1-4).
Examiner Note: A texturometer, or texture analyzer, is a type force meter (see specification sheet by Shimadzu (2013) and provided by the examiner).
Swoboda and Cousin are considered analogous art to the claimed invention because they are in the same field of endeavor of comminution of biological process-material. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Cousin of using a forcemeter into the device for comminution of a biological process-material disclosed by Swoboda to quantify the biological process-material (i.e., potato tuber) resistance to slicing (¶0032, Lines 1-4).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Swoboda, in view of Cousin.
Regarding Claim 18, Swoboda anticipates the device for comminution of a biological process-material of Claim 12 as explained above.
Swoboda fails to teach wherein the measuring device comprises a force meter, a sound meter, a speed meter, and/or a pulse meter.
Nonetheless, Cousin teaches a measuring device (¶0032, Lines 1-4) that comprises a force meter (¶0032, Lines 1-4).
Examiner Note: A texturometer, or texture analyzer, is a type force meter (see specification sheet by Shimadzu (2013) and provided by the examiner).
Swoboda and Cousin are considered analogous art to the claimed invention because they are in the same field of endeavor of comminution of biological process-material. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Cousin of using a forcemeter into the device for comminution of a biological process-material disclosed by Swoboda to quantify the biological process-material (i.e., potato tuber) resistance to slicing (¶0032, Lines 1-4).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALONDRA MICHELLE ORTIZ-ORTIZ whose telephone number is (571)272-9539. The examiner can normally be reached M-Th 7-5PM ET.
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, Christopher Templeton can be reached at (571) 270-1477. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.M.O./Examiner, Art Unit 3725
/Christopher L Templeton/Supervisory Patent Examiner, Art Unit 3725