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 Objections
Claims 1-9 are objected to because of the following informalities: In regard to claims 1-9, the claims contain reference numbers. It is suggested that the numbers should be deleted. Appropriate correction is required.
Claim 5-9 are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim 4. See MPEP § 608.01(n). Accordingly, the claims 5-9 not been further treated on the merits.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1-9 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). Claims that depend directly or indirectly from claim 1 is/are also rejected due to said dependency. In regard to claim 1, claim 1 recites “the handheld section (22) is used for being held by a user”. The phrase should be read as “the handheld section (22) is configured to be held by a user” to avoid improperly defining the apparatus in relation to a living being.
Claim Rejections - 35 USC § 102
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Laverack et al. (USPGPUB 2020/0114348 – applicant cited). In regard to claim 1, Laverack discloses an early pregnancy testing pen casing (Figs. 1-10 and associated descriptions), comprising a first casing body (1) (element 33, Figs. 5-6 and associated descriptions) and a second casing body (2) (elements 9/13 and 34, Figs. 1-6 and associated descriptions), wherein the second casing body (2) is divided into a functional section (21) (element 34, Figs. 5-6 and associated descriptions) and a handheld section (22) arranged in a length direction of the second casing body (2) (element 9/13, Figs. 1-10 and associated descriptions); the first casing body (1) is opposite to the functional section (21) so that an accommodating space for accommodating a test strip (3) is formed between the first casing body (1) and the functional section (21) (space associated with elements 29 and 55 for holding test strip 7 and absorbent wick 55, Figs. 2-4, 7A, 9E, and 10 and associated descriptions); the accommodating space has an opening for a water absorption piece (4) located in the accommodating space to extend out of the early pregnancy testing pen casing through the opening (absorbent wick 55 extended through the opening formed between elements 33d and 34d, Figs. 3-4 and 7-8 and associated descriptions); the handheld section (22) is used for being held by a user (elements 9-13, Figs. 1-6 and associated descriptions); and the handheld section (22) does not overlap the first casing body (1) (Figs. 2-3 and 6-10 and associated descriptions).
Claim Rejections - 35 USC § 103
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.
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Laverack. In regard to claims 2-4, Laverack discloses the second casing body (2) has a casing plate (220) (element 9, Figs. 1-10 and associated descriptions), and a plate surface of the casing plate (220) located at the handheld section (22) (surfaces 16 and/or 18, Figs. 3-8 and associated descriptions) is provided with gripping elements arranged in patterns (elements 15 and/or 19, Figs. 3-8 and associated descriptions; [0126]), wherein the ridges 15 and gripping elements 19 could be exchanged with one or more concave features such as indentations or the like ([0126]) but does not specifically disclose the plate surface of the casing plate (220) located at the handheld section (22) is provided with at least one through hole (221) running through up and down; there are a plurality of through holes (221) that are arranged in the length direction of the second casing body (2); the through hole (221) extends in a width direction of the second casing body (2). One of ordinary skill in the art would have recognized that through holes provides similar gripping functions and reduce the weight and/or material of the handle. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the gripping configurations with through holes in similar patterns to yield predictable results, since through holes are alternative equivalent gripping configurations. The rationale would have been the simple substitution of one known, equivalent element for another to obtain predictable results (obvious to substitute elements, devices, etc.), KSR, 550, U.S. at 417.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHU CHUAN LIU whose telephone number is (571)270-5507. The examiner can normally be reached M-Th (6am-6pm).
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/CHU CHUAN LIU/Primary Examiner, Art Unit 3791
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