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 .
Applicant’s preliminary amendments filed on 03/04/2024 are acknowledged.
Claims 1-20 are pending for examination.
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. Claims that depend directly or indirectly from claims 1 and 16 is/are also rejected due to said dependency.
In regard to claim 1, the claim recites “a case intended to be positioned inside a toilet bowl”. The claim contains conditional/ optional languages “intended” which do not positively claim the limitations (“Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation”, see MPEP 2103 C and 2111.04). The conditional/ optional limitations are not given patentable weight. It is unclear whether the case is (configured to be) positioned inside a toilet bowl or not. It is suggested that “configured to be” or similar language should be set forth in order to more positively claim the limitation.
In addition, claim 1 recites “the position of a test support of the cartridge relative to the case”, which lacks of sufficient antecedent basis.
In regard to claim 5, the claim recites “a cartridge”. It is unclear whether the cartridge is the same or different cartridge(s) as recited in claim 1. If they are the same, it is suggested that “the cartridge” should be set forth. If they are different, it is suggest “first/ second” should be set forth. Clarification is requested by amendments.
In regard to claim 14, the claim recites “wherein the case has a diameter, measured in the direction normal to the axis of rotation, of between 50 mm and 150 mm”, wherein “the direction” and “ the axis of rotation” lack of sufficient antecedent bases. It is also unclear in what “direction” the diameter is measured. Clarification is requested by amendments.
In regard to claim 16, the claim recites “A urine analysis device comprising a station according claim 1 and a cartridge…”. It is unclear whether the cartridge is the same or different cartridge(s) as recited in claim 1. If they are the same, it is suggested that “the cartridge” should be set forth. If they are different, it is suggest “first/ second” should be set forth. Clarification is requested by amendments.
In regard to claim 20, the claim recites “the test media”, which lacks sufficient antecedent basis.
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 1-5, 11, and 14-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hall et al. (USPN 9,810,686 – applicant cited). In regard to claim 1, Hall discloses a station for a urine analysis device, the station comprising: a case intended to be positioned inside a toilet bowl (elements 212, 214, and/or 214, Figs. 1-3 and associated descriptions); a housing, within the case, (housing 324 and/or 328 and associated structures housing elements 216/218/220/222, Fig. 3B and associated descriptions; Col 5 lines 1-11) configured to at least partially receive a cartridge comprising a plurality of test supports (element 218 with a plurality of test supports 216, Figs. 2B, 3B, 4A-B, 5A-B, and 7-9 and associated descriptions), the cartridge being movably mounted within the housing (element 218 is movably mounted with in the housing 324 and/or 328 and/or associated structure(s) housing elements 216/218/220/222, Fig. 3B and associated descriptions; rotation and associated movement, Figs. 4A-9 and associated descriptions), a position sensor (a sensor, optical sensor, and/or indicator, Col 4 lines 25-39; element 434, Figs. 4A-5B and associated descriptions) configured to directly measure the position of a test support of the cartridge relative to the case (a sensor, optical sensor, and/or indicator, Col 4 lines 25-39; element 434, Figs. 4A-5B and associated descriptions; It is noted that element 434 detects/ measures the reflectivity of specific color wavelengths from the colored test support 417b, Figs. 4A-5B and associated descriptions, in other words, element 434 does not detect of specific color wavelengths when the colored test support 417b is not located/ positioned under the illumination area. The detection of the specific color wavelengths is considered as directly measure a position of a test support).
In regard to claim 2, Hall discloses the position sensor comprises a light source (optical sensor, Col 4 lines 25-39; element 434, Figs. 4A-5B and associated descriptions; referring to claim 1 above) and an optical sensor (, optical sensor, and/or indicator, Col 4 lines 25-39; element 434, Figs. 4A-5B and associated descriptions; Col 5 lines 12-57), the light source being configured to emit light towards a test support and the optical sensor being configured to receive the light (optical sensor, Col 4 lines 25-39; element 434, Figs. 4A-5B and associated descriptions; Col 5 lines 12-57; referring to claim 1 above).
In regard to claim 3, Hall discloses an analyzer (element 434, Figs. 4A-5B and associated descriptions; Col 5 lines 12-57; referring to claim 1 above), the analyzer operating in an analysis zone of the housing (element 434 and associated illumination area underneath, Figs. 4A-5B and associated descriptions; Col 5 lines 12-57; referring to claim 1 above), and the position sensor is configured to directly measure a position of a test support located in the analysis zone (element 434 and associated illumination area underneath, Figs. 4A-5B and associated descriptions; Col 5 lines 12-57; referring to claim 1 above).
In regard to claim 4, Hall discloses the analyzer is the position sensor (element 434, Figs. 4A-5B and associated descriptions; Col 5 lines 12-57; referring to claim 1 above).
In regard to claim 5, Hall discloses the housing is an annular housing (any of the housing structure(s) containing elements 220 and/or 222, Figs. 3B-9 and associated descriptions), about an axis of rotation (the axis/ axes of rotation of elements 220/222, Figs. 3B-9 and associated descriptions), in the case, the annular housing being configured to at least partially receive a cartridge mounted for rotation about the axis of rotation in the station (rejected as best understood, see the 35 USC 112(b) rejection above; element 218, Figs. 3B-9 and associated descriptions).
In regard to claim 11, Hall discloses the case comprises an injector, configured to inject urine onto the test support which is identified as being in position by the position sensor (element 330 dispenses a urine specimen 332 to elements 216, Figs. 3B-5B and 7-9 and associated descriptions; an electrical source may activate… one or more nozzles, Col 4 lines 25-39; claim 16).
In regard to claim 14, Hall discloses the case has a diameter, measured in the direction normal to the axis of rotation, of between 50 mm and 150 mm (rejected as best understood, referring to the 35 USC 112(b) rejection above; relative sizes measured from any direction(s) in respect to the size of the toilet, Figs, 1-3 and associated descriptions).
In regard to claim 15, Hall discloses the case is removably arranged in the toilet bowl (Col 2 lines 41-51; claim 14).
In regard to claim 16, Hall discloses a urine analysis device (Figs. 1-10 and associated descriptions) comprising a station according claim 1 (referring to claim 1 above) and a cartridge (rejected as best understood, see the 35 USC 112(b) rejection above; referring to claim 1 above), the cartridge being configured to be at least partially received in the housing of the case (referring to claim 1 above), each test support being integral with the cartridge and being configured to selectively scroll past the position sensor (Figs. 4A-5B and 8-9 and associated descriptions; referring to claim 1 above).
In regard to claim 17, Hall discloses the test support is a test strip (Figs. 4A-5B and 8-9 and associated descriptions; referring to claim 1 above).
In regard to claim 18, Hall discloses the cartridge comprises a rotary support configured to be rotated by station (element 218 and associated spools/ elements, Figs. 3B-5B and 8-9 and associated descriptions; referring to claim 1 above), the cartridge comprising test strips attached to and integral with the rotary support, the test strips being arranged parallel to one another (elements 216/714A/714B, Figs. 3B-5B and 8-9 and associated descriptions).
In regard to claim 19, Hall discloses a method of measuring the position of a test support using the urine analysis device according to claim 16, the method comprising measuring a position of a test support directly (referring to claims 1 and 16 above).
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.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Hall. In regard to claim 12, Hall discloses the station comprises a motor for driving the cartridge in displacement (Col 4 lines 25-39; claims 18-19) but does not specifically discloses a stepping drive actuator. One of ordinary skill in the art would have recognized that a stepping motor is an alternative equivalent motor for rotating spools. 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 motor with a stepping motor to yield predictable results. 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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-5, 11 and 14-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7-8 , 15 and 18 of U.S. Patent No. 12,303,270. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-3, 7-8 , 15 and 18 of ‘270 anticipate or recite similar limitations as claims 1, 3-5, 11 and 14-15 of present application.
Claims 1, 3 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of U.S. Patent No. 12,357,211. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 3 of ‘211 anticipate or recite similar limitations as claims 1, 3 and 11 of present application.
Allowable Subject Matter
Claims 6 and 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.
The following is a statement of reasons for the indication of allowable subject matter: In regard to claims 6 and 20, the prior art of record does not teach or suggest “the position sensor sees test supports pass by when the cartridge is set in motion, and is configured to receive a signal which varies as a function of a presence or absence of a test support opposite the position sensor, the station further comprising an electronic control unit with a processor and a memory, said memory comprising instructions which, when executed by the processor of the electronic control unit causes: scrolling the test media in one direction, analysis of signal evolution during scrolling, identifying of a local extremum, in response to said identifying, scrolling of the test supports in the opposite direction, positioning the test support which generated the local extremum” and “he position sensor of the station sees test supports pass by when the cartridge is set in motion, and is configured to receive a signal which varies as a function of a presence or absence of a test support opposite the position sensor, the station further comprising an electronic control unit with a processor and a memory, said memory comprising instructions which, when executed by the processor of the electronic control unit causes: scrolling the test media in one direction, analysis of signal evolution during scrolling, identifying of a local extremum, in response to said identifying, scrolling of the test supports in the opposite direction, positioning the test support which generated the local extremum, the method comprising: moving test support in one direction, analyzing the evolution of the signal during scrolling, identifying of a local extremum, in response to said identification, scrolling of the test supports in the opposite direction, positioning the test support which generated the first extremum”, in combination with the other claimed elements/ steps.
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).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Robertson can be reached at (571) 272-5001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHU CHUAN LIU/Primary Examiner, Art Unit 3791
Prosecution Insights