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 . This is a first action on the merits of the application.
Status of the Application
This action is a first action on the merits in response to the application filed on 05/31/2024. Claims 1-7 are pending.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 08/15/2024, 07/01/2025 and 01/14/2026 has been considered by the examiner.
Claim Rejections - 35 USC § 112(b)
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 1-7 are rejected under 35 U.S.C. 112 (b) as being indefinite for failing to particularly point out and distinctly claim the subject matter regarded as the invention.
Claims 1 and 6 recites, in relevant part: “when the container is viewed from the axial direction, the introduction port and the first discharge port are both arranged at positions displaced toward one end position on the outer circumferential surface of the container.”
This limitation is indefinite for the following reasons:
The recitation “one end position on the outer circumferential surface” lacks a discernible reference point when the container is viewed from the axial direction. Viewing the container “from the axial direction” means viewing it along its longitudinal axis – i.e. from above or below – such that the outer circumferential surface is seen only as a closed circumference (see e.g. figure 5). A circumference, has no start point, endpoint, or discrete “end position”. It is therefore unclear what the applicant intends by “one end position on the outer circumferential surface” – e.g. whether this refers to a single point, an arc of a particular angle or a semicircular half– and consequently, it is unclear what arrangement of the “introduction port” and “first discharge port” fall within the scope of the claim. One of ordinary skill in the art cannot determine the metes and bounds of the limitation from the claim language alone.
Dependent claim 2 does not resolve the ambiguity and introduces further indefinite language. Claim 2 attempts to define the “first region” and “the second region” of the outer circumferential surface using a “line that passes through a center point in a shape of a cross section”. This phrase is unclear. A line is a one-dimensional concept and cannot have a shape of a cross section; only three-dimensional objects have a cross section.
The applicant likely intends a straight line that divides the container’s cross section into two halves (as shown by line Ln1 in figure 5). The introduction port and the first discharge port would then be located within one resulting half. This interpretation is supported by the last sentence of paragraph [0083]: “introduction ports 1F and 2F and discharge ports 1E and 2E are arranged in a semicircle of the circular shape of
container 50 when viewed from the negative direction of the Z axis”.
However, claim 1 and claim 2 do not recite this limitation. Neither claim mentions a straight line, a division of the cross section into halves or a semi-circular arrangement of the ports.
The claimed “outer circumferential surface” is inconsistent with the disclosed embodiments. Claim 1, line 6, requires “the container having an outer circumferential surface” which presupposes a surface having circumferential geometry. However, the specification at [0020] discloses that the bottom surface of the container may have shapes other than circular (The bottom surface of container 50 is not limited to the circular surface but may be in another shape such as a polygonal shape or an oval shape; paragraph [0020]). It is therefore unclear whether claim 1 is intended to encompass container embodiments having a noncircular surface (such as those depicted in figure 7), and if so, how “the outer circumferential surface” and the associated “one end position” limitation are to be applied to or defined with respect to such non circular geometries. This inconsistency between the claim language and the supporting disclosure further contributes to the indefiniteness of claim 1.
For purpose of compact prosecution, claims 1 and 6 will be interpreted under their broadest reasonable interpretation in light of the specification, notwithstanding the indefiniteness noted above. Although claims 1 and 6 do not themselves recite a dividing line or a semicircular region, the examiner will interpret “displaced toward one end position on the outer circumferential surface” as requiring the introduction port and first discharge port to be located within the same half of the container’s cross section as divided by a straight line such as line Ln 1 in figure 5, consistent with the last sentence of paragraph [0083]. Under this interpretation, an arrangement in which the two ports fall diametrically opposite from the center would not meet the limitation. Applicant is advised that the interpretation is adopted solely to permit examination on the merits and does not cure the indefiniteness of claim 1 and 6. The claims should be amended to recite the proper structural requirement.
Claims 3-5 and 7 are rejected by virtue of their dependency on rejected claims 1 and 6 respectively.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 (a)(1) 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, 2 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang et al. (CN110773331A with machine translation from Espacenet obtained on 7-21-2026; hereinafter Zhang).
Zhang is directed to an enrichment device for separating microplastics in environmental soil and sediment (claim 1; lines 1-3).
As for claim 1:
Zhang discloses a container (sample bottle (2)) which holds the mixed soil/sediment sample (figure 1).
Zhang teaches the sample bottle (2) as part of its overall device which purifies microplastics from the sample (the device comprises a flotation device, a centrifugal device, a re-flotation device and a micro-plastic separation and enrichment device wherein sample bottle (2) is part of the flotation devise; abstract; lines 2-3). Thus, Zhang teaches a container part of a purification apparatus.
Zhang teaches the sample bottle (2) is cylindrical (figure 1). As a result, Zhang teaches a container that extends in an axial direction and has an outer circumferential surface.
Zhang teaches an introduction port (the first liquid inlet pipe (7) and the second liquid inlet pipe (8); claim 1; lines 7-8).
Zhang teaches a decomposition solution - an H2O2 solution stored in storage tank No. 1, a No. 2 liquid storage tank and a No. 3 liquid storage tank which are both for storage of flotation solutions (heavy solutions made of saturated NaCl solution and a saturated NaI solution). The No. 4 liquid storage tank is a cleaning solution (rinse solution), composed of secondary water (Zhang; summary of the invention; page 5; paragraph 10). Therefore, Zhang teaches an introduction port for decomposition solution, heavy solution, or rinse solution.
Zhang teaches that the sample bottle (2) is provided with a liquid outlet tube (12) (claim 1; lines 7-9). Thus, Zhang teaches a first discharge port for the discharge of a waste solution from the container.
As shown in figure 1, Zhang teaches a first liquid inlet pipe (7) and a second liquid inlet pipe (8) together with the liquid outlet connected to drain pipe (12), are all arranged within the same semicircle of the container’s cross section. This placement is consistent with a division of the cross section by a straight line, as illustrated by line Ln1 of figure 5, and accordingly satisfies the “displaced towards one end position on the outer circumferential surface” limitation under the examiner’s interpretation set forth above in section 112(b).
Zhang discloses every limitation recited in claim 1.
As for claim 2, Zhang teaches a first liquid inlet pipe (7), second liquid inlet pipe (8), and the liquid outlet connected to drain pipe (12) are all arranged within the same semi-circle of sample bottle (2)’s cross-section. A line dividing that cross-section through its center point, consistent with line Ln 1 of figure 5, necessarily separates the outer circumferential surface into a first region containing the introduction ports and first discharge port, and a second region not containing them. Zhang thus discloses this arrangement and claim 2 is anticipated.
As for claim 5, Zhang discloses a sample bottle (2) as columnar (the columnar reaction body is placed on the magnetic stage; page 7; paragraph 6). Zhang thus discloses this limitation, and claim 5 is anticipated.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
Claims 3, 4, 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang.
As for claim 3, Zhang teaches a container (sample bottle 2) for the separation of a mixed sample. Sample bottle (2) is connected to an introduction port (first liquid inlet pipe (7), a second liquid inlet pipe (8)) and a discharge port (liquid outlet pipe (12)).
Zhang does not expressly disclose the relative height of the discharge port (liquid pipe 12) versus the introduction ports (inlet pipes 7 and 8).
The relative height of the introduction port and discharge port is a result effective variable, because the components of the mixed sample separate according to their specific gravity, with heavier components settling toward the bottom of the container and lighter components remaining higher in the solution. The height at which the discharge port is positioned therefore directly determines which fraction of the sample is drained from the container. Where a result-effective variable is recognized in the prior art, discovering the optimum position of that variable is a matter of routine optimization, absent a showing of unexpected results (See MPEP 2144.05, II).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to position Zhang’s discharge port lower on the outer circumferential surface than its introduction port, in order to selectively drain the heavier fraction of Zhang’s separated sample.
As for claim 4, Zhang discloses a first discharge port (drain pipe 12) in a container in which the mixed sample separates into fractions of differing specific gravity. Zhang does not disclose a second discharge port positioned such that the introduction port is positioned between the two discharge ports.
Because the mixed sample separates by specific gravity into distinct heavier and lighter fractions occupying different regions of the container, the number and relative positions of discharge ports are result effective variables governing which fraction is drained through which port. Optimizing the number and placement of discharge ports to correspond to the specific distribution of the separated sample is a matter of routine experimentation, absent a showing of criticality or unexpected results (see MPEP 2144.05, II).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a second discharge port to Zhang’s container arranged such that the introduction port lies between the first and second discharge ports, in order to separately drain the fractions of Zhang’s sample.
As for claim 6, Zhang discloses a purification apparatus comprising a container (sample bottle 2) for the separation of a mixed sample with a heavy solution based on specific gravity difference, a decomposition solution reservoir (1st liquid storage tank (9)) holding a decomposition solution (30% H2O2), a heavy solution reservoir (2nd liquid storage tank (10)) holding a heavy solution (saturated NaCl/NaI), wherein the container has a shape extending in an axial direction, has an outer circumferential surface, and includes an introduction port (inlet pipes 7 and 8) and the first discharge port (outlet pipe 12), both arranged at positions displaced toward one end position on the outer circumferential surface, as set forth in the rejection of claim 1 above.
But Zhang does not disclose a rinse solution reservoir holding a rinse solution connected to sample bottle (2).
However, Zhang does disclose a cleaning solution (secondary water) held in a fourth liquid storage tank (19), used to rinse reaction bottle (14) of the re-flotation device after each cycle, to prevent residual solution and contaminants from affecting subsequent operation (pump the secondary water into the reaction bottle 14 to wash the leakage device 17 and the outer wall of the centrifuge tube 13; page 8; paragraph 1; lines 11-12).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide sample bottle (2) with its own rinse solution reservoir and rinse capability, analogous to the rinsing already disclosed for reaction bottle (14) in Zhang. It is well understood in the art that a container used for successive sample separations must be rinsed between uses, otherwise residual sample material, digestion solution, or heavy solution remaining in the container would cause cross contamination between samples and compromise the accuracy of subsequent separations. This constitutes the predictable application of a known technique (reservoir-supplied rinsing) to a known device (sample bottle 2) to achieve a predictable result.
As for claim 7, Zhang discloses the purification apparatus of claim 6 as discussed above, including a container (sample bottle 2) with an introduction port and a first discharge port.
Zhang does not disclose a wall portion surrounding the container’s circumference having an opening or the relative positioning of the ports with respect to such an opening.
It is however, well understood in the art that laboratory containers can be enclosed with a protective wall or casing having an opening for access, and that the opening functions to permit visual inspection and servicing of the container.
Given such a wall portion and opening, the position of the introduction port and first discharge port relative to that opening is a result effective variable, because it directly determines whether an operator can visually monitor the ports and connections for leakage or clogging through the opening during operation. Positioning the ports opposite to the opening predictably maximizes the visibility and accessibility of those ports relative to a viewer looking through the opening. Because the effect of port position on visibility through the opening would be recognized by one of ordinary skill in the art, arriving at the particular arrangement of positioning the ports opposite the opening is a matter of routine optimization of a known result-effective variable, absent a showing of new or unexpected results (See MPEP 2144.05 II. Citing In re Aller, 220 F.2d 454 (CCPA 1955)). Applicant has not disclosed that positioning the ports opposite to the opening, achieves any result beyond the predictable benefit of improved visibility and access.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to surround Zhang’s container with such a walled portion for protecting the container and associated tubing from damage or contamination during operation. It is also obvious to arrange Zhang’s introduction port and first discharge port at positions opposed to the opening in the wall portion, since doing so allows an operator to visually inspect the ports and tubings for any leakage or clogging without needing to remove or to disassemble the wall portion. This constitutes a predictable arrangement dictated by the ordinary goal of maximizing visibility and access to the components most likely to require inspection and maintenance.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bachar EL Haj Hassan whose telephone number is (571)270-0121. The examiner can normally be reached on Monday-Friday 9AM-5PM.
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/BACHAR EL HAJ HASSAN/Examiner, Art Unit 1772
/YOUNGSUL JEONG/Primary Examiner, Art Unit 1772
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