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 .
Notes
All the objections and rejections in the previous Office Action not reiterated herein have been withdrawn.
Claim 10 was inadvertently not included in the previous Office action; therefore, the finality of the previous action is withdrawn.
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 7 and 21 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 7 recites the limitation "the cylindrical body" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 21 recites the limitation "wherein the elongated body is made from an inert material constructed to withstand pressure used within the biolistic particle delivery system." However, the claims and instant specification fail to disclose as to what constitute “pressure used within the biolistic particle delivery system.” Further clarification is requested, and appropriate correction is required.
Appropriate correction is required.
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.
Claims 1 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Arsenault et al. ("Regioselective biolistic targeting in organotypic brain slices using a modified gene gun." JoVE (Journal of Visualized Experiments) 92 (2014): e52148) (hereinafter “Arsenault”).
Regarding claims 1 and 9, it is noted that while the invention contains a biolistic particle delivery system and a barrel, the biolistic particle delivery system and the barrel are not positively recited in the instant claims.
Regarding claim 1, Arsenault discloses an attachment for a biolistic particle delivery system configured to confine a flow of particles to no more than one barrel, said barrel having an inlet at one end and an outlet at the other, comprising: an elongated body with (i) a solid, peripheral surface from the one end to the other (FIG. 1A: a barrel having a continuous/unbroken sold walls) and (ii) a central cavity that defines a major flow path for passing and accelerating pressurized gas and particles therethrough (barrel includes a central cavity coupled to an element that restricts biolistic spread, as show in FIG. 1A) ; anda ring located at a top of the elongated body, said ring having a diameter greater than a diameter of the elongated body (see FIG. 1A);wherein the ring is retrofit to a microcarrier launch assembly of the biolistic particle delivery system (see FIGS. 1B-1C).
Regarding claim 9, the flow of particles is material worked on and not an element of the claimed attachment. Further, it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2115. Furthermore, modified Arsenault discloses all of the structural features of the claimed attachment and thus considered to be fully capable of creating laminar section within the attachment.
Regarding claim 10, Arsenault discloses an attachment for a biolistic particle delivery system configured to confine a flow of particles to no more than one barrel, said barrel having an inlet at one end and an outlet at the other, comprising: an elongated body with (i) a solid, peripheral surface from the one end to the other (FIG. 1A: a barrel having a continuous/unbroken sold walls) and (ii) a central cavity that defines a major flow path for passing and accelerating pressurized gas and particles therethrough (barrel includes a central cavity coupled to an element that restricts biolistic spread, as show in FIG. 1A) ; anda ring located at a top of the elongated body, said ring having a diameter greater than a diameter of the elongated body (see FIG. 1A);wherein the ring is retrofit to a microcarrier launch assembly of the biolistic particle delivery system (see FIGS. 1B-1C); wherein the attachment is symmetrical about at least an x-axis and a y-axis and is asymmetrical about a z-axis (see FIG. 1A: barrel includes a ring having a central opening), said z-axis being defined by an axial axis traversing a longitude of the elongated body (FIG. 1A). Regarding the limitation “wherein the ring is retrofit to a microcarrier launch assembly of the biolistic particle delivery system” the ring of the attachment of modified Arsenault is structural the same as the instant attachment and thus considered to be fully capable to be “retrofit to a microcarrier launch assembly of the biolistic particle delivery system”. Furthermore, it is noted that the recitations of functional language “for a biolistic particle delivery system; to confine a flow of particles to a no more than one barrel" are drawn to intended use of the claimed invention. It is noted that a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. Apparatus claims must distinguish from the prior art in terms of structure rather than function (see MPEP 2114). The prior art discloses all of the structural features of the claimed attachment and thus since the structure is the same, the claimed functions are apparent.
Therefore, Arsenault meets and anticipates the limitations set forth in claims 1 and 9.
Claims 11 and 13-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kale (already of record, US 2009/0011510), and as evidenced by Applicant’s disclosure.
Regarding claim 11, Kale discloses a biolistic particle delivery system comprising: a gas acceleration tube (Kale discloses the use of well-known PDS-1000/He system which includes a gas acceleration tube as evidenced by Applicant’s disclosure; see Kale at [0013], [0025], [0036]-[0037], [0054], and Applicant’s disclosure at [0018], [0030], FIG. 6B); a source of pressurized gas operatively connected to a first end having an inlet of the gas acceleration tube (Kale discloses the use of well-known PDS-1000/He system which includes a gas acceleration tube as evidenced by Applicant’s disclosure, the gas acceleration tube having an inlet; see Kale at [0036], [0054]; and Applicant’s disclosure at [0018], [0029], FIG. 6B); and an attachment located at a second end having an outlet of the gas acceleration tube, the attachment (see Kale at [0036], and Applicant’s disclosure at [0018], [0021], FIG. 6B). See also [0013], [0025] and [0037]) comprising: an elongated body having (i) no inlets or outlets located at positions other than the first end and the second end (see FIG. 1A: elongated body has no other inlets/outlets other than top inlet and bottom outlet) (ii) a central cavity that defines a major flow path therethrough, wherein a pressure of the pressurized gas is, at least, maintained from the first end to the second end (see FIG. 1A of Kale, annotated and reproduced below); and
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a ring located at a top of the elongated body, said ring having a diameter greater than a diameter of the elongated body (FIG. 1A); and wherein the ring is configured to be retrofit to a microcarrier launch assembly of the biolistic particle delivery system (the ring of the attachment of Kale is structural the same as the instant attachment and thus considered to be fully capable to be “retrofit to a microcarrier launch assembly of the biolistic particle delivery system”; see also [0036] and claim 1 of Kale).
Regarding claim 13, Kale further discloses wherein the attachment can be used in place of an internal ring of a Biolistic Particle Delivery System -1000/He ([0036]). The article Delivery System -1000/He inherently includes a bombardment chamber, vacuum tubing, a helium regulator, and a solenoid valve, as evidenced by Applicant’s disclosure (Applicant’s disclosure at [0009]-[0011], FIG. 6B).
Regarding claim 14, Kale further discloses a rupture disk ([0054]).
Regarding claim 15, Kale further discloses wherein the biolistic particle delivery system is a helium driven gene gun (Kale at [0032] and [0036]-[0037]).
Therefore, Kale meets and anticipates the limitations set forth in claims 11 and 13-15.
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.
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 10 is rejected under 35 U.S.C. 103 as being unpatentable over Arsenault ("Regioselective biolistic targeting in organotypic brain slices using a modified gene gun." JoVE (Journal of Visualized Experiments) 92 (2014): e52148).
Regarding claim 10, it is noted that while the invention contains a biolistic particle delivery system and a barrel, the biolistic particle delivery system and the barrel are not positively recited in the instant claims.
Regarding claim 10, Arsenault discloses an attachment for a biolistic particle delivery system configured to confine a flow of particles to no more than one barrel, said barrel having an inlet at one end and an outlet at the other, comprising: an elongated body with (i) a solid, peripheral surface from the one end to the other (FIG. 1A: a barrel having a continuous/unbroken sold walls) and (ii) a central cavity that defines a major flow path for passing and accelerating pressurized gas and particles therethrough (barrel includes a central cavity coupled to an element that restricts biolistic spread, as show in FIG. 1A) ; anda ring located at a top of the elongated body, said ring having a diameter greater than a diameter of the elongated body (see FIG. 1A);wherein the ring is retrofit to a microcarrier launch assembly of the biolistic particle delivery system (see FIGS. 1B-1C); wherein the attachment is symmetrical about at least an x-axis and a y-axis and is asymmetrical about a z-axis (see FIG. 1A: barrel includes a ring having a central opening), said z-axis being defined by an axial axis traversing a longitude of the elongated body (FIG. 1A). Regarding the limitation “wherein the ring is retrofit to a microcarrier launch assembly of the biolistic particle delivery system” the ring of the attachment of modified Arsenault is structural the same as the instant attachment and thus considered to be fully capable to be “retrofit to a microcarrier launch assembly of the biolistic particle delivery system”. Assuming arguendo that Arsenault fails to disclose wherein the attachment is symmetrical about at least an x-axis and a y-axis and is asymmetrical about a z-axis; however, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the attachment is symmetrical about at least an x-axis and a y-axis and is asymmetrical about a z-axis in order to delivery uniform flow of materials to the target specimen. One of ordinary skill in the art would have made said modification for the purpose of optimizing the delivery of materials to the target specimen. Furthermore, it is noted that the recitations of functional language “for a biolistic particle delivery system; to confine a flow of particles to a no more than one barrel" are drawn to intended use of the claimed invention. It is noted that a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. Apparatus claims must distinguish from the prior art in terms of structure rather than function (see MPEP 2114). The prior art discloses all of the structural features of the claimed attachment and thus since the structure is the same, the claimed functions are apparent.
Claims 1, 4, and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Pui et al. (US 2002/0150669; hereinafter “Pui”).
Regarding claims 1, 4, 8 and 9, it is noted that while the invention contains a biolistic particle delivery system and a barrel, the biolistic particle delivery system and the barrel are not positively recited in the instant claims.
Regarding claim 1, Pui discloses an attachment for a biolistic particle delivery system configured to confine a flow of particles to no more than one barrel, said barrel having an inlet at one end and an outlet at the other, comprising: an elongated body with (i) a solid, peripheral surface from the one end to the other (FIG. 7: casing (322) having uninterrupted/unbroken side surfaces from one end to the other; [0100]) and (ii) a central cavity that defines a major flow path for passing and accelerating pressurized gas and particles therethrough (central flow path of casing (322) facilitating flow of gases through the casing; see [0100]). Pui further discloses wherein a top of the elongated body is surrounded surround by a body defining chamber (389), said ring having a diameter greater than a diameter of the elongated body (FIG. 7: end portion (336) of casing (322) surround by a body defining chamber (389)). Pui does not explicitly disclose wherein the body is a ring shaped. However, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the shape of the body of Pui to have the claimed shape, since it has been held that a mere change in shape of an element is generally recognized as being within the level of ordinary skill in art when the change in shape is not significant to the function of the combination (see MPEP 2144.04 IV.B.). Further, one would have been motivated to have made said modification because changing the shape of the body in the attachment of Pui to have the claimed shape would have been a matter of a design choice which a person of ordinary skill in the art would have found obvious. Regarding the limitation “wherein the ring is retrofit to a microcarrier launch assembly of the biolistic particle delivery system” the ring of the attachment of modified Pui is structural the same as the instant attachment and thus considered to be fully capable to be “retrofit to a microcarrier launch assembly of the biolistic particle delivery system”. Further, the attachment of modified Pui is coupled to a system that is configured to deliver particles through the cavity of the attachment (see FIG. 7). Furthermore, it is noted that the recitations of functional language “for a biolistic particle delivery system; to confine a flow of particles to a no more than one barrel" are drawn to intended use of the claimed invention. It is noted that a recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. Apparatus claims must distinguish from the prior art in terms of structure rather than function (see MPEP 2114). The prior art discloses all of the structural features of the claimed attachment and thus since the structure is the same, the claimed functions are apparent.
Regarding claim 4, modified Pui further discloses wherein the major flow path is divided into more than one major flow path by one or more dividers (FIG. 7: inner cavity includes an inner flow path and an outer flow path separated by a barrier (320); [0102]).
Regarding claim 8, modified Pui discloses minor flow paths located adjacent a periphery of the central cavity, said major flow path separated from the minor flow paths by one or more baffles (FIG. 7: inner cavity includes a minor flow path (aperture (350)) adjacent a major flow path by tube (320); [0102]).
Regarding claim 9, the flow of particles is material worked on and not an element of the claimed attachment. Further, it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2115. Furthermore, modified Pui discloses all of the structural features of the claimed attachment and thus considered to be fully capable of creating laminar section within the attachment.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Pui as applied to claim 1 above, and further in view of Kale (already of record, US 2009/0011510).
Regarding claim 2, modified Pui discloses the attachment according to claim 1 as set forth above. Modified Pui discloses wherein the elongated body is a hollow cylinder with a length (see [0100]) but does not explicitly disclose wherein the length is between one and a half times and two times (1.5x to 2x) greater than a diameter of the elongated body. Kale discloses Kale discloses a biolistic particle delivery system comprising an attachment having a hollow cylinder elongated body and a ring located at a top of the elongated body (see, e.g., FIG. 1). Kale further discloses the attachment has a length of 2 to 3 inches, and one inch in diameter ([0037]). Kale further discloses wherein the length and diameter of barrel of the attachment can be modified to suit the target specimen ([0041]). In view of Kale, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the dimensions of the elongated body of modified Pui to comprise any dimensions including the claimed dimensions, since Kale discloses that the length and diameter of the attachment is a result effective variable that can be optimized to suit target specimen (Kale, [0041]). Further, one of ordinary skill in the have would have made said modification since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. Further, one of ordinary skill in the art would have made said modification for purpose of optimizing the delivery of materials of interest to a target specimen. Therefore, changes in the dimensions of the attachment of Arsenault would have been a matter of an engineering design choice which a person of ordinary skill in the art would have found obvious in view of Kale ([0037], [0041]).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Arsenault as applied to claim 1 above, and further in view of Kale (already of record, US 2009/0011510).
Regarding claim 2, Arsenault discloses the attachment according to claim 1 as set forth above. Arsenault discloses wherein the elongated body is a hollow cylinder with a length (see FIG. 1A) but does not explicitly disclose wherein the length is between one and a half times and two times (1.5x to 2x) greater than a diameter of the elongated body. Kale discloses Kale discloses a biolistic particle delivery system comprising an attachment having a hollow cylinder elongated body and a ring located at a top of the elongated body (see, e.g., FIG. 1). Kale further discloses the attachment has a length of 2 to 3 inches, and one inch in diameter ([0037]). Kale further discloses wherein the length and diameter of barrel of the attachment can be modified to suit the target specimen ([0041]). In view of Kale, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the dimensions of the elongated body of Arsenault to comprise any dimensions including the claimed dimensions, since Kale discloses that the length and diameter of the attachment is a result effective variable that can be optimized to suit target specimen (Kale, [0041]). Further, one of ordinary skill in the have would have made said modification since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. Further, one of ordinary skill in the art would have made said modification for purpose of optimizing the delivery of materials of interest to a target specimen. Therefore, changes in the dimensions of the attachment of Arsenault would have been a matter of an engineering design choice which a person of ordinary skill in the art would have found obvious in view of Kale ([0037], [0041]).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Kale as applied to claim 1 above.
Regarding claim 12, Kale discloses the biolistic particle delivery of claim 11. Kale does not explicitly disclose wherein a screen that allows only the biolistic particles to impact an intended target. However, Kale further discloses wherein the biolistic particle delivery system includes a screen support ([0036]). Kale further discloses the need to prevent accidental spread of particles from one barrel’s target region into the other barrel’s target region ([0036]). It would have therefore been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arranged a screen that allows only the biolistic particles to impact an intended target on the screen support of Kale in order to prevent accidental spread of particles from one barrel’s target region into the other barrel’s target region.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Pui as applied to claim 1 above.
Regarding claim 21, modified Pui discloses the attachment according to claim 1 as set forth above. Modified Pui meets the limitation “wherein the elongated body is made from a material constructed to withstand pressure used within the biolistic particle delivery system,” since the elongated body of modified Pui is used in biolistic particle delivery system. Modified Pui does not explicitly disclose wherein the material is an inert material. However, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the elongated body of modified Pui to comprise inert material because the use of inert nontoxic material with biological material is well known in the art. One of ordinary skill in the art would have made said modification in order to prevent the material of the elongated body from interacting with the biological materials being delivered to target specimens. Further, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Arsenault as applied to claim 1 above.
Regarding claim 21, Arsenault meets the limitation “wherein the elongated body is made from a material constructed to withstand pressure used within the biolistic particle delivery system,” since the elongated body of modified Pui is used in biolistic particle delivery system. Arsenault does not explicitly disclose wherein the material is an inert material. However, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the elongated body of Arsenault to comprise inert material because the use of inert nontoxic material with biological material is well known in the art. One of ordinary skill in the art would have made said modification in order to prevent the material of the elongated body from interacting with the biological materials being delivered to target specimens. Further, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07).
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Pui as applied to claim 1 above, and further in view of Kale (already of record, US 2009/0011510).
Regarding claim 22, modified Pui discloses the attachment according to claim 1 as set forth above. Modified Pui discloses wherein the elongated body is a hollow cylinder with a length and a diameter (FIG. 7; [0100]) but does not explicitly disclose wherein the elongated body has a diameter between eighteen and twenty-two millimeters and a length between thirty and fifty-five millimeters. Kale discloses Kale discloses a biolistic particle delivery system comprising an attachment having a hollow cylinder elongated body and a ring located at a top of the elongated body (see, e.g., FIG. 1). Kale further discloses the attachment has a length of 2 to 3 inches, and one inch in diameter ([0037]). Kale further discloses wherein the length and diameter of barrel of the attachment can be modified to suit the target specimen ([0041]). In view of Kale, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the dimensions of the elongated body of modified Pui to comprise any dimensions including the claimed dimensions, since Kale discloses that the length and diameter of the attachment are result effective variables that can be optimized to suit target specimen (Kale, [0041]). Further, one of ordinary skill in the have would have made said modification since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. Further, one of ordinary skill in the art would have made said modification for purpose of optimizing the delivery of materials of interest to a target specimen. Therefore, changes in the dimensions of the attachment of Arsenault would have been a matter of an engineering design choice which a person of ordinary skill in the art would have found obvious in view of Kale ([0037], [0041]).
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Arsenault as applied to claim 1 above, and further in view of Kale (already of record, US 2009/0011510).
Regarding claim 22, Arsenault discloses the attachment according to claim 1 as set forth above. Arsenault discloses wherein the elongated body is a hollow cylinder with a length and diameter (see FIG. 1A) but does not explicitly disclose wherein the elongated body has a diameter between eighteen and twenty-two millimeters and a length between thirty and fifty-five millimeters. Kale discloses Kale discloses a biolistic particle delivery system comprising an attachment having a hollow cylinder elongated body and a ring located at a top of the elongated body (see, e.g., FIG. 1). Kale further discloses the attachment has a length of 2 to 3 inches, and one inch in diameter ([0037]). Kale further discloses wherein the length and diameter of barrel of the attachment can be modified to suit the target specimen ([0041]). In view of Kale, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the dimensions of the elongated body of Arsenault to comprise any dimensions including the claimed dimensions, since Kale discloses that the length and diameter of the attachment are result effective variables that can be optimized to suit target specimen (Kale, [0041]). Further, one of ordinary skill in the have would have made said modification since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. Further, one of ordinary skill in the art would have made said modification for purpose of optimizing the delivery of materials of interest to a target specimen. Therefore, changes in the dimensions of the attachment of Arsenault would have been a matter of an engineering design choice which a person of ordinary skill in the art would have found obvious in view of Kale ([0037], [0041]).
Allowable Subject Matter
Claims 5-7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments with respect to claims 1-2, 4-15 and 21-22 have been considered but are moot in view of the new ground of rejection.
In response to the Applicant’s argument regarding the limitation “configured to confine a flow of particles to no more than one barrel” (see Remarks at page 7), Applicant’s argument is noted but it is not persuasive. Applicant’s arguments rely on language solely recited in preamble recitations in claim(s) 1. When reading the preamble in the context of the entire claim, the recitation “configured to confine a flow of particles to no more than one barrel” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02. In this case, as discussed in the rejection, there are no structural differences between the claimed attachment and that of the applied prior art. As such, it is respectfully submitted that the prior art discloses all of the structural features of the claimed attachment, and thus since the structure is the same, the claimed functions are apparent.
In response to the Applicant’s argument that Miller’s drawings are not drawn to scale (see Remarks at pages 8 to 9), Applicant’s argument is noted but it is not persuasive. While MPEP 2125 (II) cautions against relying on drawings for precise proportions wherein the reference is silent as to scale, this limitation applies to extracting specific measurement or numerical ratios from drawing. It does not preclude relying on a drawing for what it clearly and consistently depicts (see MPEP 2125 (I); “drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art”).
In response to the Applicant’s argument regarding the limitation “laminar section” as recited in claim 9 (Remarks pages 9 to 10), Applicant’s argument is noted but it is not persuasive. The limitation of claim 9 does not add any additional structural limitation to the claimed attachment. It merely requires that a flow of material flowing through the attachment comprises a laminar section. However, the flow is not an element of the claimed attachment.
Applicant argues that Kale fails to disclose the limitation “elongated boy having (i) no inlet or outlets located at positions other than the first and second end.” Remarks on page 12.
In response, the silt (50) of Kele is not inlet or an outlet. The attachment of Kale has only two openings, one on the ring (inlet) adjacent the first end of the elongated body, and one at the bottom of the elongated body (outlet). No other openings are located on the elongated body.
In response to the Applicant’s argument regarding claims 13 and 14 (Remarks on page 13), Applicant’s argument is not persuasive. Although the Kale does not expressly disclose a bombardment chamber, vacuum tubing, a helium regulator, and a solenoid valve, MPEP 213.1 (III) states that extra reference or evidence can be used to show an inherent characteristic of the thing taught by the primary reference. Here, Kale discloses the use of Biolistic Particle Delivery System -1000/He with the attachment ([0036]). As evidenced by Applicant’s disclosure, Particle Delivery System -1000/He includes bombardment chamber, vacuum tubing, a helium regulator, and a solenoid valve. As such, the cited evidentiary reference supplies the inherent characteristics, and thus properly supports a finding that bombardment chamber, vacuum tubing, a helium regulator, and a solenoid valve are inherent in the reference of Kale.
Conclusion
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/LIBAN M HASSAN/Primary Examiner, Art Unit 1799
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