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 . Claims 1-17 of the amended claim set received 10/05/2023 are pending.
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 2 recites, “means of which said infusion element is adjustable from its neutral condition to either its first or second condition,” which is interpreted under 112(f) as corresponding to a computer chip or a protrusion located at the end of one of two legs of the second connector.
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: adjusting element in claim 3.
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 3 recites, “at least one adjusting element,” where the adjusting element corresponds to a computer chip or a protrusion located at the end of one of two legs of the second connector.
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 1-17 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 1 recites “a said transport element,” “a said first connector,” and “a said infusion element” at lines 8-10 which makes it unclear if more than one transport element, connector, or infusion element is required.
Claim 1 recites “a second connector” at line 9 where it is unclear if or how this corresponds to the second connector introduced at line 7.
Claim 1 recites “said infusion element is adjustable from a neutral condition to at least a first or second condition” at line 15 where it is unclear if any of these conditions correspond to the connected condition of claim 10.
Claim 1 recites “the infusion element is adapted to a first or second type of transport element only” at lines 16-17 where it is unclear if or how the first or second type of transport element relates the transport element(s) introduced at lines 7 or 8.
Claims 2-17 are rejected at least by dependency on claim 1.
Claim 4 recites, “said adjusting element,” without antecedent basis. Base claim 3 introduces at least one adjusting element such that it is unclear if claim 4 limits the invention to only one adjusting element or not.
Claim 5 recites, “wherein the adjusting element is chosen out of at least two different adjusting elements” where “the adjusting element” lacks antecedent basis and where it is unclear if the claimed invention requires two different adjusting elements or only one.
Claim 7 recites, “the adjustable element” without antecedent basis.
Claim 11 recites, “each transport element,” such that it is unclear if more than one transport element is required.
Claim 11 recites, “said device” without antecedent basis.
Claim 12 recites, “a first or second port,” while base claim 11 recites, “a port” and “one port out of two ports.” It is unclear if or how the first and second ports correspond to the port elements of base claim 11.
Claim 13 recites “a device” while a device has already been introduced in base claim 11. It is unclear if the device of claim 13 is related to that in claim 11.
Claim 13 recites “at least two ports” while base claim 12 recites “a first or second port” and base claim 11 recites “a port” and “one port out of two ports.” It is unclear if or how all of these ports are related.
Claim 13 further recites, “a said port,” in the last clause without clear antecedent basis, i.e. as described above it is unclear how a said port corresponds to any of the preceding instances of the ports.
Claim 14 recites “the transport element” without antecedent basis. There are two transport elements in the system.
Claim 15 recites “said adjusting element,” “the infusion element,” and “said transport element” without antecedent basis. There are two infusion elements and two transport elements in the claimed device of base claim 13.
Claim 16 recites “first transport element,” “second transport element,” “the first infusion element,” and “the second infusion element” without antecedent basis.
Appropriate correction is required.
Allowable Subject Matter
Claims 1-17 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding Claim 1, the prior art of record does not disclose or form a reasonable combination teaching the following feature in combination with the other claim limitations, “wherein said infusion element is adjustable from a neutral condition to at least a first or second condition, wherein in the first or second condition the infusion element is adapted to a first or second type of transport element only.”
Claims 2-17 are allowable at least by basis on claim 1.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure can be found in the attached Notice of References Cited.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RENE D FORD whose telephone number is (571)272-8140. The examiner can normally be reached on M-F 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phutthiwat Wongwian can be reached on (571) 270-5426. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.D.F/Examiner, Art Unit 3741