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 .
Status of Claims
There are two (2) sets of claims on 08 MARCH 2024. The claim set considered is the claim set where the claims have status identifiers.
Claims 1-25 are presented and all the claims are either ‘Original’ or ‘Currently Amended’.
Claims 1-25 are considered on the merits below.
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 08 MARCH 2024 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.
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:
A “guide assembly configured to : guide the first sample holder…” in claim 1.
An assembly does not connote any particular structure. The guide assembly is described in the specification as guiding elements and carriages.
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 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 10 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.
Regarding claim 10, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
Claims 1-24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by BECTON, EP 3 862 755 A1, submitted on the Information Disclosure Statement on 08 MARCH 2024; Foreign Patent Document, Cite No. 1.
Applicant’s invention is directed towards an apparatus.
Regarding Claim 1, the reference BECTON discloses an apparatus for moving first and second sample holders between respective first and second starting positions and respective first and second end positions, Figure 7 and 13, [0085, 0097, 0102], comprising a guide assembly configured to:
guide the first sample holder along a first path from the first starting position to the first end position and back along the first path from the first end position to the first starting position, Figure 13, [0097, 0102], track 310a-b; and
guide the second sample holder along a second path from the first starting position to the second end position and back along the second path from the second end position to the second starting position, Figure 13, [0097, 0102], track 310a-b transports assembly 300;
wherein the guide assembly is configured such that the first and second sample holders are spaced apart as they move along at least a portion of the lengths of their respective paths, Figure 12C and 13, [0085, 0097], assembly 300 moves along track 310a-b, there are walls 304 and those along assembly of shuttle 280.
Additional Disclosures Included are: Claim 2: wherein the apparatus claim 1, wherein the paths are parallel at or near: the first and second starting positions; and/or the first and second end positions, Figure 7 and 13, tracks 310a-b are parallel.; Claim 3: wherein the apparatus of claim 1, wherein: the starting positions of each of the sample holders are the same; and/or the end positions of each of the sample holders are the same, Figure 7, [0119].; Claim 4: wherein the apparatus of claim 1, wherein: the first and/or second starting position is a sample loading position; and/or the first and/or second end position is a sample analysis position or a sample unloading position, Figure 7 and 13, [0096, 0119].; Claim 5: wherein the apparatus of claim 1, wherein the guide assembly is configured such that the paths are spaced apart in a direction that is substantially perpendicular to the paths, Figure 7 and 13, [0096].; Claim 6: wherein the apparatus of claim 1, wherein the guide assembly is configured such that separation between the paths varies along the lengths of the paths, [0087, 0088].; Claim 7: wherein the apparatus of claim 1, wherein the guide assembly is configured such that the paths are spaced apart for: only a portion of their lengths; or all of their lengths, Figure 7 and 13, [0085-0088].; Claim 8: wherein the apparatus of claim 1, wherein the guide assembly is configured such that the first and second paths are spaced apart along at least a portion of their lengths, to permit the sample holders simultaneously to move in opposite directions along their respective paths, Figure 7 and 13, [0087, 0416].; Claim 9: wherein the apparatus of claim 1, wherein the guide assembly is configured such that a distance between the paths is greater at or near a centre of the paths than at: one end of the paths; or at both ends of the paths, Figure 7 or 13, see path of tracks 210a-b. ; Claim 10: wherein the apparatus of claim 1, wherein the guide assembly is configured such that at least one and preferably each of the paths comprise: a curved portion; and/or a substantially straight portion, Figure 7 and 13, track 310a-b.; Claim 11: wherein the apparatus of claim 1, wherein the guide assembly comprises one or a plurality of longitudinal guiding elements configured to guide the sample holders longitudinally along their respective paths, Figure 13, sidewalls 304, [0085, 0086].; Claim 12: wherein the apparatus of claim 1, wherein the guide assembly comprises one or a plurality of lateral guiding elements configured to: guide the sample holders laterally as they move along their respective paths; and/or vary the a separation between the paths, Figure 13, sidewalls 304, [0085, 0086].; Claim 13: wherein the apparatus of claim 11, wherein: the one or a plurality of longitudinal guiding elements comprise longitudinal guiding rods; and/or the one or a plurality of lateral guiding elements comprise lateral guiding rods, Figure 13, walls 304 and rods below can be seen at side view at end. ; Claim 14: wherein the apparatus of claim 1, wherein the guide assembly comprises at least one carriage configured to move at least one sample holder along its respective path, Figure 13, [0085].l; Claim 15: wherein the apparatus of claim 14, wherein one or a plurality of carriages each comprise one or a plurality of lateral guiding elements, Figure 12c, 13, [0077, 0078].; Claim 16: wherein the apparatus of claim 14, wherein at least one of the carriages comprises a protrusion configured to engage a complementary channel of the guide assembly, the complementary channel configured to cause the at least one carriage to move at least one of the sample holders along its respective path, preferably wherein the complementary channel acts as a lateral and/or longitudinal guiding element, Figure 12A, [0077-0080], fingers 268.; Claim 17: wherein the apparatus of claim 16, wherein the complementary channel comprises at least one of: an elongate channel through a surface of the guide assembly, and/or an elongate groove in a surface of the guide assembly, configured to engage the at least one protrusion, Figure 12A, [0077-0080], space 269.; Claim 18: wherein the apparatus of claim 16, wherein the complementary channel comprises: a curved portion; and/or a substantially straight portion, Figure 12A, fingers 268 and spaces 269 are straight.; Claim 19: wherein the apparatus of claim 14, wherein at least one carriage comprises: a fixed portion that is longitudinally-guided and moves substantially in a straight line between the starting and end points; and a laterally-guided portion for holding a sample holder that moves away from the fixed portion as the carriage moves between the starting and end points, Figure 12A.; Claim 20: wherein the apparatus of claim 1, wherein the guide assembly comprises a first guide configured to guide the first sample holder along the first path and a second guide configured to guide the second sample holder along the second path, Figure 7 and 13, tracks 310a-b, [0085-0089].; Claim 21: wherein the apparatus of claim 1, wherein the guide assembly is configured such that the first and second sample holders are held substantially flat as they move along their respective paths, Figure 7, left to right and vice versa, [0040].; Claim 22: wherein the apparatus of claim 1, wherein the guide assembly is configured to cause the sample holders to undergo curvilinear or rectilinear translational motion along their respective paths, Figure 7 and 13, shuttles go along a rectilinear motion, back and forth, to and from, left and right.; and Claim 23: wherein the apparatus of claim 1, further comprising at least one vacuum chamber, [0188], wherein any one or more of: the first starting position; the second starting position; the first end position; and the second end position are in the at least one vacuum chamber, [0188], Figure 17A.
Applicant’s invention is directed towards an analytical instrument.
Regarding Claim 24, the reference BECTON discloses an analytical instrument comprising the apparatus of claim 1, Figure 1-3 and 7, and an analyser, [0014], wherein the apparatus is configured to move the sample holders to the analyser for analysis of samples within the sample holders, [0100].
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 25 is rejected under 35 U.S.C. 103 as being unpatentable over BECTON, EP 3 862 755 A1, submitted on the Information Disclosure Statement on 08 MARCH 2024; Foreign Patent Document, Cite No. 1, and further in view of WESELAK , US Publication No. 2004/0142486 A1.
Regarding Claim 25, the BECTON reference discloses the claimed invention of claim 24, see rejection above for Claim 24, including an analyzer, [0014, 0100], but is silent in regard to wherein the analyser comprises at least one of: a spectrometer, a diffractometer, and a microscope, configured to analyze samples using photons, electrons and/or ions.
The WESELAK reference discloses an apparatus, Figure 2, for moving first and second sample holders between respective first and second starting positions and respective first and second end positions, Claim 58, Figure 2 and 4, [0026, 0151, 0152], units 151 are moved, Figure 1, step 131, [0144], wherein the apparatus is configured to move the sample holders to the analyser for analysis of samples within the sample holders, [0144]; and wherein the analyser comprises at least one of: a spectrometer, a diffractometer, and a microscope, configured to analyze samples using photons, electrons and/or ions, Claim 80, [0049, 0132, 0161].
It would be obvious to one having ordinary skill in the art before the effective filing date to modify the claimed invention to incorporate the analyser of BECTON into the analytical instrument of WESELAK such as a spectrometer so that a sample or sample component analysis can occur, WESELAK [0132].
Additional Disclosure Included is: Claim 25: wherein the analytical instrument of claim 24, wherein the analyser comprises at least one of: a spectrometer, a diffractometer, and a microscope, configured to analyse samples using photons, electrons and/or ions.
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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