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 .
Claim Objections
Claim 6 is objected to because of the following informalities: in line 2, the term “disposable chip” is recited. This claim appears to be referring to a disposable tip. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: in line 3, the term “disposable chip” is recited. This claim appears to be referring to a disposable tip. Appropriate correction is required.
Note Regarding Prior Art
Examiner cites particular sections, columns, line numbers, paragraphs and figures, in the references as applied to the claims below for the convenience of the Applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the Applicant fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
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.
Claim(s) 1 – 3, 7 and 9 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Tomoya Sakurai (JP 2011 094985 A; hereinafter “Sakurai”).
Regarding claim 1, Sakurai teaches an automatic analyzer (autoanalyzer; paragraph 1; figures 2 and 4), comprising:
a probe (sample dispensing probe 121; paragraph 23; figures 2 and 4) separately dispensing a liquid to be accommodated in a container (blood-collecting tube 101; paragraph 30);
a detection part (liquid level detector 122; paragraph 25) detecting a liquid level of the liquid; and
a judgment part (control part 141; paragraph 30) descending the probe in a direction of the liquid and suspending the downward movement of the probe (paragraph 30) (the sample dispensing probe 121 is adjusted from upper limit height HO by control of the sample dispensing mechanism 131 by the control part 141; figures 2 and 4) at a first position higher than a liquid level value assumed to be a height of the liquid level by a first predetermined value and, at the first position, determining that the liquid is in a normal state when the liquid level is not detected by the detection part and determining that the liquid is in an abnormal state when the liquid level is detected by the detection part before reaching the first position (when the confirmed descending amount is shorter than the distance from HO to H1 (in the case of H<H0-H1), a sample control part determines that the sample liquid is present in excess (the alarm which notifies that sample amount is in excess by the alarm generator 161 is generated) and the sample liquid can also be determined o be in a suitable quantity; paragraphs 29 – 34; figures 5 and 6).
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The cited prior art teaches all of the positively recited structure of the claimed apparatus. The recitation of a new intended use, for an old product, does not make a claim to that old product patentable. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). See MPEP §§ 2114 and 2173.05(g).
Regarding claim 2, Sakurai teaches the automatic analyzer according to claim 1 further comprising a control part controlling an operation of the probe, wherein the control part switches a mode for allowing the probe to be in contact with the liquid directly and a mode for suspending the probe at the first position (the sample probe device in contacting or non-contacting the liquid, therefore two modes are clearly disclosed; paragraphs 25 and 26).
Regarding claim 3, Sakurai teaches the automatic analyzer according to claim 2, wherein the control part switches a mode for allowing the probe to be in contact with the liquid directly and a mode for suspending the probe at the first position based on a type of the liquid (the sample probe device in contacting or non-contacting the liquid, therefore two modes are clearly disclosed; paragraphs 25 and 26).
Regarding claim 7, Sakurai teaches the automatic analyzer according to claim 1, wherein the probe is in contact with the liquid directly without a disposable chip (or tip) being mounted on the tip portion of the probe (paragraphs 29 – 34; figures 5 and 6).
Regarding claim 9, Sakurai teaches the automatic analyzer according to claim 1, further comprising a storage part which stores information on the first position (paragraphs 13, 14 and 37).
Claim(s) 1 – 5 and 7 – 9 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Sasaki et al. (EP 3 859 350 A1; hereinafter “Sasaki”).
Regarding claim 1, Sasaki teaches an automatic analyzer (an automatic analysis system; paragraph 1), comprising:
a probe (sample dispensing mechanism; paragraph 30; figures 2 – 9) separately dispensing a liquid to be accommodated in a container;
a detection part (a liquid surface sensor; paragraph 49) detecting a liquid level of the liquid; and
a judgment part (overall control unit 140; paragraphs 30 and 54) that is capable of descending the probe in a direction of the liquid and suspending the downward movement of the probe at a first position higher than a liquid level value assumed to be a height of the liquid level by a first predetermined value and, at the first position, determining that the liquid is in a normal state when the liquid level is not detected by the detection part and determining that the liquid is in an abnormal state when the liquid level is detected by the detection part before reaching the first position (paragraphs 67 – 74).
The cited prior art teaches all of the positively recited structure of the claimed apparatus. The recitation of a new intended use, for an old product, does not make a claim to that old product patentable. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). See MPEP §§ 2114 and 2173.05(g).
Regarding claim 2, Sasaki teaches the automatic analyzer according to claim 1 further comprising a control part controlling an operation of the probe, wherein the control part switches a mode for allowing the probe to be in contact with the liquid directly and a mode for suspending the probe at the first position (e.g., paragraphs 68 – 74).
Regarding claim 3, Sasaki teaches the automatic analyzer according to claim 2, wherein the control part switches a mode for allowing the probe to be in contact with the liquid directly and a mode for suspending the probe at the first position based on a type of the liquid. (e.g., paragraphs 68 – 74).
Regarding claim 4, Sasaki teaches the automatic analyzer according to claim 1, wherein the judgment part determines that bubbles (via a bubble detection operation; paragraphs 49 and 50) are formed in the liquid when the liquid level is detected between a second position higher than the first position by a second predetermined value and the first position, and wherein the judgment part determines that a film of the liquid (e.g., via liquid surface sensor 115a; paragraphs 54 and 55) is formed in the container when the liquid level is detected between a third position higher than the second position by a third predetermined value and the second position.
Regarding claim 5, Sasaki teaches the automatic analyzer according to claim 4, wherein the judgment part is capable of determining that a liquid level detection function is in an abnormal state when the liquid level is detected between a fourth position higher than the third position by a third predetermined value and the third position (e.g., via liquid surface sensor 115a; paragraphs 54 and 55).
Regarding claim 7, Sasaki teaches the automatic analyzer according to claim 1, wherein the probe is in contact with the liquid directly without a disposable chip (or tip) being mounted on the tip portion of the probe (paragraphs 67 – 74; figures 2 – 9).
Regarding claim 8, Sasaki teaches the automatic analyzer according to claim 3, wherein the control part switches the modes based on whether a type of the liquid is an installed reagent or not (paragraphs 68 – 74).
Regarding claim 9, Sasaki teaches the automatic analyzer according to claim 1, further comprising a storage part which stores information on the first position (paragraphs 37 – 39).
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) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tomoya Sakurai (JP 2011 094985 A; hereinafter “Sakurai”) or Sasaki et al. (EP 3 859 350 A1; hereinafter “Sasaki”) in view of Collins et al. (US 4,340,390; hereinafter “Collins”).
Regarding claim 6, neither Sakurai nor Sasaki teaches the automatic analyzer according to claim 1, wherein a disposable chip (or tip) is mounted on a tip portion of the probe.
However, the use of disposable tips with dispensers or pipettors with chemical analyzer apparatus is well known in the art as evidenced by Collins (e.g., col. 3, lines 8 – 21). The combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide wherein a disposable tip is mounted on a tip portion of the probe.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN J. SINES whose telephone number is (571)272-1263. The examiner can normally be reached 9 AM-5 PM EST M-F.
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BRIAN J. SINES
Primary Patent Examiner
Art Unit 1796
/BRIAN J. SINES/Primary Examiner, Art Unit 1796
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