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 Interpretation
With regard to the preamble of the claims to an intelligent storage system for… not patentable weight is attributed thereto wherein the body of the claims are without any structure to an “intelligent” storage system (i.e. a particularly-configured processor/controller for affecting various condition-responsive control of the structures/mechanisms of the system).
Does Applicant intend to provide a controller, computer, processor that is particularly configured/programmed to affect operations of the elements of the system?
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(s) is/are:
1) Extraction modules capable of extracting or storing…as in cl
2) Grabbing apparatus capable of grabbing…and/or grabbing…as in cl. 3, (and likewise through cls. 12,19, and 20).
3) Transmission member for performing transmission…as in cl. 5.
4) Lifting mechanism capable of lifting the transport tank…as in cl. 5.
5) Sliding mechanism capable of sliding…as in cl. 10.
6) Coil liquid-adding mechanism as in cl. 14.
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.
1) Unclear from the disclosure, further clarification required. *See rejection below under 35 USC 112 b/2nd.
2) Unclear from the disclosure, further clarification required. *See rejection below under 35 USC 112 b/2nd.
3) Those structures and equivalents thereof as seen through par. [0060] of Applicant’s pre-grant publication US 2024/0329073.
4) Those structures and equivalents thereof as seen through par. [0063] of Applicant’s pre-grant publication US 2024/0329073.
5) Those structures and equivalents thereof as seen through par. [0078] of Applicant’s pre-grant publication US 2024/0329073.
6) Those structures and equivalents thereof as seen through par. [0074] of Applicant’s pre-grant publication US 2024/0329073.
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 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 1-20 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.
The terms “upper end surface”, “disposed above the storage modules” in claim 1, “the upper end”, “close to each other” in claim 2, “disposed above”, “disposed above” as in claim 4, “disposed below the lifting channel”, “vertically disposed” as in cl. 7, “symmetrically above two sides” as in claim 8, “vertically disposed” as in claim 9, “vertically disposed below” as in claim 10, and “symmetrically above” as in claim 18, are relative terms which renders the claim indefinite. The terms are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Herein, the spatial confines of the system are not particularly established so as to provide clear metes and bounds to the orientation(s) sought.
Claims 1-20 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.
As discussed above, 1)Extraction modules capable of extracting or storing…as in claim 1, and 2) Grabbing apparatus capable of grabbing…and/or grabbing…as in cl. 3, (and likewise through cls. 12,19, and 20, and related dependents thereof these and claim 3) provide alternative-type “means for recitations” in which the claims utilize a generic placeholder in that of “extraction module” and “grabbing apparatus” followed by functionalities that are without sufficient structure to provide for the recited functionalities.
By this, the metes and bounds of the structure(s) afforded to these elements 1&2 are indefinitely defined.
Further, the specification does not remedy and make clear the metes and bounds.
With respect to the “grabbing apparatus capable of grabbing…and/or grabbing,” in which the specification provides discussion to a parts listing of what is included (i.e. such parts are not relatively structurally/functionally related to one another) and further, one of the listed elements is drawn to a grabbing apparatus that in an of itself is drawn to a generic placeholder and without particularly structural definition thereto.
This lack of clarity likewise follows in dependent claims 12, 19, and 20, and wherein such elements of “cryopreservation tube extraction mechanism, storage rack grabbing mechanism and connecting mechanism” are drawn to further generic placeholders without particular structure(s) thereto in defining the “grabbing apparatus” for its recited functionalities.
With respect to the “extraction modules capable of extracting or storing…” the specification provides discussion to further generic placeholders in that of “a cryopreservation tube extraction mechanism 23, a storage rack grabbing mechanism 24, and a connecting mechanism 25” that are without clear discussion to their constituent structure(s) as well as generally being disclosed as what is included, which does not provide for relative structural/functional relationships among the elements for the recited functionalities.
Claims 4-7, and 16-18 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.
The various groups of storage modules and extraction modules are indefinitely provided for herein.
Independent claim 1 sets forth at least one group of storage modules and at least one group of extraction modules.
To this end, it appears that Applicant intends to initially recite “wherein the at least one group of storage modules comprises two groups of storage modules, wherein the two groups of storage modules are drawn to a Group A of storage modules and a Group B of storage modules.” Likewise recitaitons may be provided for the extraction modules.
Further, in addition to the above-discussed lack of clarity to the relative arrangement of the groups of modules by way of the “disposed above” language therein, the functionality among the groups is indefinitely understood by the vague “act on…” language utilized herein.
Does “act on” meant to provide a particular connection between the respective Group A storage and extraction modules, and likewise with Group B storage/extraction?
Does Applicant intend to recite something on the order of “…group A extraction modules…are capable of extracting or storing cryopreservation tubes and/or storage racks from the storage modules of group A via the access ports”? And similarly with the respect to Group B storage and Group B extraction.
Lastly, is this “act upon” afforded by a particularly-configured controller operating cooperative elements from both sets? As noted above, the preamble of the claims speaks to an intelligent system, however, the claims are absent any elements thereto such as in automation elements as in a controller, computer, processor configured/programmed in a particular manner.
Lastly, at the end of claim 4, the recitation “the transfer channel” appears to be drawn to “the penetrating transfer channel” and should be corrected to remove any ambiguity.
Clarification is required.
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(s) 1-3, 8-10, and 13, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Malin (USPN 9,174,790).
Malin discloses a storage cassette for laboratory objects (abstract). With regard to claim 1, Malin shows and discloses through fig. 2 a chamber containing tanks 4 that represent a group of storage modules and an extraction module 8, wherein each of the storage modules comprises at least two storage modules (see fig. 2 which shows four storage modules each by way of paired first and second storage tanks with adjacent access ports), and each of the storage tanks is provided with an access port in an upper end surface (see figs. 2 and 3). Further, Malin discloses an extraction module disposed above the group of storage modules and capable of extracting or storing cryopreservation tubes and/or storage racks in the storage tanks via the access ports (lines 49-55, col. 3, fig. 2, for example).
With regard to claim 1, Malin does not specifically disclose a group of extraction modules.
However, such modification is drawn to an obvious engineering design modification and a duplication of parts that affords an expected result of affording a shorter time frame to storage and extraction of the samples, and would have a reasonable expectation of success in the system of Malin. This is further seen for the reasons discussed above and absent a showing of a criticality or unexpected results arising otherwise.
Examiner further notes that while Malin discloses “exactly one picking and placing device is advantageously provided to service all storage tanks” (lines 54-55, col. 3), this does not preclude obvious variants thereof such as discussed above that are not as advantageous, and does not render inoperative or teach away from the system of Malin for the likewise desired purpose of storing and extracting samples.
With regard to claim 2, Malin (as modified) discloses wherein the access port in each of the storage tanks is formed in a side of the upper end surface of said storage tank, and access ports that correspond to each other are opposite and close to each other (see above discussion and fig. 2,3, for example).
With regard to claim 3, Malin (as modified) discloses the extraction module (picking and placing device 8) comprises an X-axis arm set, Y-axis arm set (see horizontal guides as in fig. 2)capable of driving the grabbing apparatus (as a part of the picking and placing device 8, and given the functionality to picking and placing implies a grabbing functionality; see also lines 28-29, col. 6 and the likewise grasping functionality), wherein Malin as modified provides for a plurality thereof that concordantly yields each of the modules with corresponding extraction arm sets and grabbing means.
With regard to claim 8, Malin (as modified) discloses one of the first two parallel arms is designated as a bearing track main shaft, and the other is designated as the bearing track sub-shaft symmetrically above two sides of one of the storage modules, and as seen through fig. 2 a Y-axis movement mechanism is provided by way of the grooves that the extraction module 8 resides movably within the inner boundary and the corresponding automated translational movement mechanism given by Malin (see lines 17-21, col.3), and the Y-axis being perpendicular to a direction along which the storage tanks are set side by side. The duplication of the extraction modules, as discussed above, would be accomplished in parallel and provides likewise constitution to each thereof.
With regard to claim 9, Malin (as modified) discloses the recited disposition as seen from the above discussion and further noting Malin discloses a likewise, to that of the Y-axis bearing track, an X-axis bearing track and an X-axis movement mechanism as given by the X-axis track with sliding grooves on the outer boundary through which the extraction module 8 is movably set and the corresponding automated translational movement mechanism given by Malin (see lines 17-21, col.3), and the X-axis being parallel to a direction along which the storage tanks are set side by side.
With regard to claim 10, the elements are provided by Malin (as modified) for likewise reasons as discussed above in claim 8, and wherein the cited “vertically disposed below” is indefinitely provided herein in which the disposition provided by Malin is said to read on such disposition in as much as understood and required herein (i.e. the X-axis sliding track being drawn to the X-axis sliding track and the sliding mechanism being drawn to the automated translational movement afforded therewith; lines 17-21, col. 3).
With regard to claim 13, Malin (as modified) discloses a module protection housing 2, and a main control interface 9a further provided on the module protection housing. Examiner notes that the recitation to “main control interface” does not necessitate any electronics and processing equipment such as in a particularly-configured controller having electrical connection with any of the elements of the system (i.e. extraction modules, storage tanks) to affect any operations thereof. This recitation is given as an interface, which such cooling apparatus connected to the housing for producing the inside temperature Ti in the chamber 3 is commensurately a main control interface as claimed.
Claim(s) 14 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Malin as applied to claims 1-3, 8-10, and 13 above, and further in view of Affleck et al. (US 2015/0204598), hereafter Affleck.
Malin (as modified above) does not specifically disclose wherein each of the storage modules further comprise a valve assembly disposed on a side surface of the module protection housing, and wherein the valve assembly comprise a coil liquid-adding mechanism, and the coil-liquid adding mechanism is disposed on a side surface of the module protection housing.
Affleck discloses a portable cryogenic workstation (abstract). Affleck discloses automated handling equipment for the sample storage system (pars.[0067-0069], and discloses the storage modules (i.e. refrigerant supply 1300) is provided with a control valve 1303a-c disposed on a side surface of the module protection housing (pars.[0084,0094-0096], figs. 12A-D, for example). Affleck further discloses that refrigeration of the one or more storage units 291 may be provided by liquid nitrogen through a closed evaporation coil (coil liquid-adding mechanism) (par.[0076]).
It would have been obvious to one of ordinary skill of the art to modify Malin to provide a valve assembly to the storage modules and disposed on a side surface of the protection housing, and wherein the valve assembly comprises a coil liquid-adding mechanism disposed on a side surface of the module protection housing such as suggested by Affleck in order to afford further control to the sample storage and extraction in allowing adjustments to the flow for dynamic and particular extraction operations, and to afford a particular on-board cooling mechanism in the form of a coil liquid-adding mechanism akin to that of the cooling apparatus 9a on the side of the module protection housing, and wherein Malin likewise desires to provide a cooling temperature in the storage tanks at around -196 C (i.e. cryogenic by definition; lines 41-43, col. 3)and such coil liquid-cooling mechanism would be suitable and effective therefor and have a reasonable expectation of success in Malin.
Allowable Subject Matter
Claims 4-7, 11, 12, and 16-20 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.
Claims 4-7, 11, 12, and 16-20 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:
The prior art of record does not teach or suggest, as best understood herein in the context of the above-discussed rejections of the claims under 35 USC 112 b/2nd, an intelligent storage system as recited in claim 4 which includes the penetrating transfer channel directly provided between the Group A extraction modules and the Group B extraction modules in which the penetrating transfer channel is capable of transferring a transport tank. Further, claims 5-7 and 16-18 are dependent therefrom.
Further, the prior art of record does not teach or suggest, as best understood herein in the context of the above-discussed rejections of the claims under 35 USC 112 b/2nd, an intelligent storage system as recited in claim 11 wherein the sliding mechanism comprises a wheel set, a connecting rotating shaft, and a sliding track bearing support. Further, claim 20 is dependent therefrom.
Further, prior art of record does not teach or fairly suggest, as best understood herein in the context of the above-discussed rejections of the claims under 35 USC 112 b/2nd, an intelligent storage system as recited in claims 12 and 19.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Howard et al. (US 2010/0028214) discloses a tube picking mechanism for an automated, ultra-low temperature storage and retrieval system that is relevant to Applicant’s field of endeavor.
Croquette et al. (US 2018/0202908) discloses an automated vault module in a cryogenic storage system providing automated storage and retrieval of samples and automated transfer of individual samples between cryogenic environments that is relevant to Applicant’s field of endeavor.
Hunt et al. (US 2012/0060541) discloses a sample storage cassette for ultra-low or cryogenic temperatures that is relevant to Applicant’s field of endeavor.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NEIL N TURK whose telephone number is (571)272-8914. The examiner can normally be reached M-F 930-630.
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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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/NEIL N TURK/Primary Examiner, Art Unit 1798
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