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 of Group I: Claims 1-17 in the reply filed on 26 MAY 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicant merely states the : ‘Applicant disagrees’.
Applicant’s election without traverse of Group I: Claims 1-17 in the reply filed on 26 MAY 2026 is acknowledged.
Claims 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected apparatus and method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 26 MAY 2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 28 DECEMBER 2023 was filed. The submission is 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 “60” has been used to designate both “fractionator unit”, [00158] and “fractioner unit”. 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.
Examiner believes that one of instances above is misspelled.
Specification
The disclosure is objected to because of the following informalities:
In [0043] and [00158], Applicant uses “fractioner unit” and “fractionator unit” , respectively. It is unclear as to which is the proper usage/spelling of unit 60.
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
See [0051, 0053].
The use of the term “Agilent 1290 Infinity II”, [0051]; “Agilent 1200 Series HPLC”, [0053], which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Appropriate correction is required.
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.
Claim 12 is 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 instant claim recites “comprising at least one of the following features”, however, the features merely listed with mention of an “and” or “or”. There is a laundry list of alternative presented and it is unclear where one “wherein” clause ends and what is included. For example, at the bottom of page 3, where it recites “wherein the optical sensor is configured to sense a property…. a precipitation; a contamination; comprising the sample container; comprising the sample container …” . It is unclear as to what is to be included in this wherein clause.
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(s) is/are:
An “optical adapter configured to be arranged at the movable stage and configured to be moved by the movable stage…” in claim 1.
An “adapter” does not connote any particular structure. The specification describes the “optical adapter” to be one or more passive and/or active optical elements or components, [0018].
A “cleaning unit configured to move relative to the optical sensor to mechanically impact the optical sensor for cleaning” in claim 12.
A “unit” does not connote any particular structure. The specification describes the “cleaning unit” to be at least one brush and/or at least one squeegee, [0041].
A “fractionator unit configured to collect a separated fluidic sample in the sample container” in claim 13.
A “unit” does not connote any particular structure. The specification describes the “fractioner unit” to be different sample vial or other sample containers, [0043].
A “control unit for controlling the injector is configured to control injection…” in claim 14; “control unit configured to identify, use and/or store information…” in claim 15.
A “unit” does not connote any particular structure. The specification describes the “control unit” to be a PC or workstation, [00108].
A “sample separation unit for separating the fluidic sample in the mobile phase…” in claim 18.
A “unit” does not connote any particular structure. The specification describes the “sample separation unit” to be a fluidic member, [0013], ac chromatographic separation column, [0042, 0053].
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 Objections
Claims 11-15 and 17 are objected to because of the following informalities:
In Claim 11, between line 5-6, there should be an “and” or “or” to properly define the alternative.
In Claim 12, between lines 22-23, there should be an “and” or “or” to properly define the alternative.
In Claim 13, between lines 4-5, there should be an “and” or “or” to properly define the alternative.
In Claim 13, where it recites ‘configured as injector’ should be ‘configured as an injector’.
In Claim 13, where it recites ‘configured as fractionator unit’ should be ‘configured as a fractionator unit’.
Similarly, in Claim 14 between lines 5-6, there should be an “and” or “or” to properly define the alternative.
In addition, in Claim 15 between lines 4-5, there should be an “and” or “or” to properly define the alternative.
In addition, in Claim 17, line 15-16, there should be an “and” or “or” to properly define alternative.
Appropriate correction is required.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 and 5-17 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by SIEMENS, WO 2013/16661 A1, submitted on the Information Disclosure Statement on 28 DECEMBER 2023; Foreign Patent Documents Cite No. 1.
Applicant’s invention is directed towards a device, a sample handler.
Regarding Claim 1, the reference SIEMENS discloses a sample handler for handling a sample container, Figure 1, 8 and 9, [0039, 00125, 00129], carrier, carrier 444, 464 the sample handler comprising:
a stationary optical sensor, Figure 8 and 9, optical device 450 and 470, [0057, 00125-000127];
a movable stage being movable with respect to the stationary optical sensor, Figure 2A, carrier can be moved on track, [0064]; and
an optical adapter configured to be arranged at the movable stage and configured to be moved by the movable stage to thereby adapt a view of the stationary optical sensor, [0114, 0125-0129], passive optical and active imaging device.
Additional Disclosures Included are: Claim 2: wherein the sample handler according to claim 1, wherein the movable stage is configured to carry and move the sample container, [0064].; Claim 3: wherein the sample handler according to claim 1, wherein the movable stage comprises a turntable configured to turn the sample container together with the optical adapter, [0115, 0123].; Claim 5: wherein the sample handler according to claim 1, wherein the optical adapter and/or the sample container is or are detachably arranged or arrangeable at the movable stage, [00139], tube may be removed and/or new tube may be inserted. ; Claim 6: wherein the sample handler according to claim 1, wherein the optical adapter comprises at least one passive optical component, [00114, 00122].; Claim 7: wherein the sample handler according to claim 1, wherein the optical adapter comprises at least one mirror, [00128, 00129].; Claim 8: wherein the sample handler according to claim 1, wherein the optical sensor is configured as a camera, abstract, [0057, 0093, 00108, 0114].; Claim 9: wherein the sample handler according to claim 1, wherein the optical sensor is configured to sense the sample container, [00114].; Claim 10: wherein the sample handler according to claim 1, wherein the optical sensor is configured to sense at least one code on the sample container, [0114].; Claim 11: wherein the sample handler according to claim 10, comprising at least one of the following features: wherein the optical sensor is configured to sense a barcode on the sample container, [00114];wherein the optical sensor is configured to sense the at least one code on the sample container via the optical adapter, [00114]; wherein the optical sensor is configured to sense the at least one code on a bottom surface and/or on a side surface of the sample container, [00114, 00115], Figure 6A-11.; Claim 12: wherein the sample handler according to claim 1, comprising at least one of the following features: wherein the optical sensor is configured to sense a property of the sample handler or a component thereof, [0088, 0089]; wherein the optical sensor is configured to sense a needle and/or a needle seat of the sample handler; wherein the optical sensor is configured to sense a property of a fluidic sample in the sample container, [0088, 00114]; wherein the optical sensor is configured to sense a property of a fluidic sample comprising at least one of: an opacity; a precipitation; a contamination; comprising the sample container; comprising the sample container, wherein the sample container comprises at least one of: a sample vial, [0082, 0085]; a well plate, [00139]; a vial tray; wherein the movable stage is configured to carry any of the sample container and the optical adapter; wherein the movable stage is configured to carry any of the sample container and the optical adapter, and the sample container and the optical adapter have the same footprints, Figure 1; wherein the optical sensor is arranged with a vertical viewing axis, Figure 11; wherein the optical sensor is arranged below the movable stage; wherein the optical sensor comprises a movable protection cover being actuatable to selectively cover the optical sensor in a passive protection mode or for exposing the optical sensor in an active sensing mode; wherein the optical sensor comprises a movable protection cover being actuatable, by a pusher mounted on the movable stage or on the optical adapter, to selectively cover the optical sensor in a passive protection mode or to expose the optical sensor in an active sensing mode; comprising a cleaning unit configured to move relative to the optical sensor to mechanically impact the optical sensor for cleaning. ; Claim 13: wherein the sample handler according to claim 1, comprising at least one of the following features: the sample handler is configured as injector configured to inject a fluidic sample from the sample container for subsequent separation, [0062]; the sample handler is configured as fractionator unit configured to collect a separated fluidic sample in the sample container. ; Claim 14: wherein the sample handler according to claim 13, comprising at least one of the following features: wherein the injector is configured to inject the fluidic sample from the sample container into a fluidic path between a fluid drive and a sample separation unit of a sample separation apparatus; wherein a control unit for controlling the injector is configured to control injection of the fluidic sample based on information sensed by the optical sensor, [0073, 00101, 00103-00105, 00112].; Claim 15: wherein the sample handler according to claim 1, comprising one of: a control unit configured to identify, use and/or store information sensed by the optical sensor for tracking, [0009, 0039, 0040, 00103-00107], at least one selected from the group consisting of: the sample container; a fluidic sample in the sample container; and a sample separation process, [0088, 00103-00107]; a control unit configured to identify, use and/or store information sensed by the optical sensor, the information being included in at least one code of the sample container, for tracking at least one selected from the group consisting of: the sample container; a fluidic sample in the sample container; and a sample separation process, [00103-00107]. ; Claim 16: wherein the sample handler according to claim 1, wherein the optical adapter comprises a sample container holder comprising an accommodation volume for accommodating at least part of the sample container and comprising an internal optical configuration enabling the optical sensor to sense a sample container when accommodated in the accommodation volume, [0059, 0062, 0066], volume is monitored. ; Claim 17: wherein the sample handler according to claim 16, comprising at least one of the following features: wherein the sample container holder has an optically reflective inner surface for reflecting electromagnetic radiation propagating between the sample container and the optical sensor; wherein the sample container holder comprises an annular body having a central opening defining the accommodation volume, Figure 4A, 6A-11, see “tube”, [0055]; wherein the internal optical configuration of the sample container holder comprises a reflective mirror cone; wherein the sample container holder is configured for receiving the sample container from above, whereas the optical sensor is arranged below the sample container holder; wherein the optical sensor is configured to sense at least one code of the sample container when accommodated in the accommodation volume, Figure 6A-11, see Figures how barcode is read; wherein the optical sensor is configured to sense simultaneously a plurality of codes on a bottom surface and/or on a side surface of the sample container when accommodated in the accommodation volume, example Figure 6A, [00121-00122]; wherein the sample container holder comprises at least one further accommodation volume for accommodating at least part of at least one further sample container and comprises an internal optical configuration enabling the optical sensor or at least one further optical sensor to sense at least one further sample container when accommodated in the at least one further accommodation volume.
Claims 1, 2, 4-7 and 9-11 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by CLAUS, US Patent 6,588,669 B1, submitted on the Information Disclosure Statement on 28 DECEMBER 2023, US Patent Cite No. 1.
Regarding Claim 1, the CLAUS reference discloses a sample handler for handling a sample container, abstract, the sample handler comprising:
a stationary optical sensor, Figure 2-4;
a movable stage being movable with respect to the stationary optical sensor, Column 2 line 7-19, conveyor belt, Figure 2; and
an optical adapter configured to be arranged at the movable stage and configured to be moved by the movable stage to thereby adapt a view of the stationary optical sensor, Figure 2-4, Column 2 line 46-65, Column 3 line 45-55.
Additional Disclosures Included are: Claim 2: wherein the sample handler according to claim 1, wherein the movable stage is configured to carry and move the sample container, Column 3 line 43-55, Figure 2, Claim 2.; Claim 4: wherein the sample handler according to claim 1, wherein the movable stage is configured to rotate the optical adapter, Figure 1, Column 4 line 11-16.; Claim 5: wherein the sample handler according to claim 1, wherein the optical adapter and/or the sample container is or are detachably arranged or arrangeable at the movable stage, Figure 2, Column 2 line 8-12, Column 4 line 40-45, tubes 14 are placed in holder, i.e. they are detachable.; Claim 6: wherein the sample handler according to claim 1, wherein the optical adapter comprises at least one passive optical component, Figure 3 and 4, Column 4 line 7-65.; Claim 7: wherein the sample handler according to claim 1, wherein the optical adapter comprises at least one mirror, Figure 3 and 4, Column 4 line 7-65.; Claim 9: wherein the sample handler according to claim 1, wherein the optical sensor is configured to sense the sample container, Figure 3 and 4.; Claim 10: wherein the sample handler according to claim 1, wherein the optical sensor is configured to sense at least one code on the sample container, Column 2 line 8-19, 37-65, Figures ALL.; Claim 11: wherein the sample handler according to claim 10, comprising at least one of the following features: wherein the optical sensor is configured to sense a barcode on the sample container; wherein the optical sensor is configured to sense the at least one code on the sample container via the optical adapter; wherein the optical sensor is configured to sense the at least one code on a bottom surface and/or on a side surface of the sample container, Column 2 line 8-19, 37-65.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE T MUI whose telephone number is (571)270-3243. The examiner can normally be reached M-Th 5:30 -15:30 EST.
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CTM
/CHRISTINE T MUI/Primary Examiner, Art Unit 1797
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