DETAILED ACTION
This detailed action is in response to the application filed on May 31, 2024, and any subsequent filings.
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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference signs mentioned in the description: 210 and 215 recited in paragraph 13. 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.
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.
Claims 1-7 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.
The term “heavy” in Claim 1 is a relative term which renders the claim indefinite. The term “heavy” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Thus, the term “heavy” renders “solution” indefinite.
Claim 4 recites the limitation "after the supernatant is produced" in line 7. There is insufficient antecedent basis for this limitation in the claim.
The term “heavy” in Claim 7 is a relative term which renders the claim indefinite. The term “heavy” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Thus, the term “heavy” renders “solution” indefinite.
The dependent claims not specifically detailed above contain the limitations of the recited claims and thus are rejected for the same reasons.
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 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shibayama, U.S. Publication No. 2022/0341114 (“Shibayama”).
Applicant’s claims are directed towards a device.
Regarding Claims 1-4, Shibayama discloses a purification apparatus that purifies a sample containing a target substance by gravity separation, the purification apparatus comprising a container in which the sample is separated with a heavy solution based on a specific gravity (Fig. 1, item 4, Paragraph 44 (“Pr”)); an overflow pipe provided at an upper portion of the container, the overflow pipe being arranged to cause a supernatant containing the target substance separated by gravity separation in the container to overflow from the upper portion of the container (Fig. 1, item 43, Pr83,85,93); and a control device that controls entry and exit of the heavy solution into and from the container (Fig. 1, item 33a, Pr71 (note under the broadest reasonable interpretation the structure controls entry and exit of the solution into and from the container)), wherein the control device is further configured to cause some of the supernatant produced by gravity separation to flow over the container through the overflow pipe, thereafter cause the supernatant that remains in the overflow pipe to flow back into the container, and then cause the supernatant to flow over again through the overflow pipe (Fig. 1 (note flow into and out of control device 33a affects flow into and out of overflow pipe), Pr67).
Additional Disclosures Included: Claim 2: wherein the control device is configured to cause the supernatant that remains in the overflow pipe to flow back into the container to move a gas-liquid interface in the overflow pipe (Fig. 1, item 33a (note the intended use of a device claim does not distinguish over the prior art)). Claim 3: an introduction port for introduction of the heavy solution into the container (Fig. 1 (note entrance by second end 3b interpreted as introduction port), Pr68); a discharge port for discharge of the heavy solution from the container (Fig. 1, item 42, Pr85), wherein the control device is configured to cause the supernatant to flow over through the overflow pipe by introduction of the heavy solution from the introduction port into the container (Fig. 1 (note control device 33a allows fluid flow into the container causing flow through the overflow pipe 43)), and cause the supernatant in the overflow pipe to flow back by discharge of the heavy solution in the container from the discharge port (Fig. 1 (note control device allows fluid to leave the container causing flow from the overflow pipe back into the container)). Claim 4: wherein the control device is configured to cause a first introduction amount of heavy solution to be introduced from the introduction port into the container, cause some of the supernatant to flow over through the overflow pipe by introduction of a second introduction amount of heavy solution from the introduction port into the container after the supernatant is produced in the container, cause the supernatant in the overflow pipe to flow back and return to the container by discharge of a first discharge amount of heavy solution in the container through the discharge port, and cause the supernatant that has flowed back to the container to flow over through the overflow pipe by introduction of a third introduction amount of heavy solution from the introduction port into the container (Fig. 1; see also prior analysis regarding control device and fluid flow; also note that the intended use of a device claim does not distinguish over the prior art).
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.
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.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Shibayama, U.S. Publication No. 2022/0341114 (“Shibayama”).
Applicant’s claims are directed towards a device and a method.
Regarding Claims 5 and 6, Shibayama discloses the purification apparatus according to Claim 4 (for Claim 5) and the apparatus according to Claim 1 (for Claim 6) further comprising an introduction pump configured to introduce the heavy solution from the introduction port into the container (Fig. 1, item 23, Pr52); and a discharge pump configured to discharge the heavy solution in the container from the discharge port (Fig. 1 (note water in column inside container 4 functions as hydraulic ram pump forcing fluid out discharge port 42)).
Shibayama does not disclose a control device configured to control rotations and rotation time periods of the introduction pump or repeat functions.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use a control device on the introduction pump and repeat certain functions of the purification apparatus disclosed by Shibayama because “claiming an automated means to replace a manual function to accomplish the same result does not distinguish over the prior art,” MPEP 2144(IV).
Regarding Claim 7, Shibayama discloses a control method performed by a control device in a purification apparatus, the purification apparatus including a container in which a sample containing a target substance is separated with a heavy solution based on a specific gravity (Fig. 1, item 4, Pr44), an overflow pipe provided at an upper portion of the container, the overflow pipe being arranged to cause a supernatant containing the target substance separated by gravity separation in the container to overflow from the upper portion of the container (Fig. 1, item 43, Pr83,85,93), and a control device that controls entry and exit of the heavy solution into and from the container (Fig. 1, item 33a, Pr71 (note under the broadest reasonable interpretation the structure controls entry and exit of the solution into and from the container)), the control method comprising: causing some of the supernatant produced by gravity separation to flow over the container through the overflow pipe (Fig. 1 (note flow into and out of control device 33a affects flow into and out of overflow pipe), Pr67); and causing the supernatant that remains in the overflow pipe to flow back into the container (Fig. 1 (note flow into and out of control device 33a affects flow into and out of overflow pipe), Pr67).
Shibayama does not disclose the control method comprising causing the supernatant that has flowed back to flow over again through the overflow pipe.
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use a control device to repeat certain functions of the purification apparatus disclosed by Shibayama because “claiming an automated means to replace a manual function to accomplish the same result does not distinguish over the prior art,” MPEP 2144(IV).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK ORME whose telephone number is (408)918-7585. The examiner can normally be reached Monday - Thursday, 7:30 am - 6:00 pm Pacific Time.
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/PATRICK ORME/Primary Examiner, Art Unit 1779
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