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 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:
“Moving device” in claim 10. Here the word “device” is a generic placeholder for the term “means”, is modified by the functional language “to move/drive”, and further is not modified by sufficient structure, material, or acts for performing the claimed function.
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.
The specification does not provide examples of structure for a moving device.
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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 10 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. MPEP 2181 IV recites “A means- (or step-) plus-function limitation that is found to be indefinite under 35 U.S.C. 112(b) based on failure of the specification to disclose corresponding structure, material or act that performs the entire claimed function also lacks adequate written description and may not be sufficiently enabled to support the full scope of the claim. The principal function of claims is to provide notice of the boundaries of the right to exclude by defining the limits of the invention, and means-plus-function claims rely on the disclosure to define those limits. Accordingly, an inadequate disclosure may give rise to both an indefiniteness rejection for a means-plus-function limitation and a failure to satisfy the written description and enablement requirements of section 112(a) or pre-AIA section 112, first paragraph.”
The claim limitation “moving device” (in claim 10) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification does not provide any examples of structure for a moving device.
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.
Claim 1, which claims a method, appears to be reciting functions performed by structural elements, not positively recited method steps. Therefore, it is unclear whether claim 1 is actually a method claim when there are no positively recited methods. MPEP 2173.05 (q) recites “Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.” Claim 1 does not recite any methods, instead, claim 1 appears to be an apparatus claim.
Claims 2-20 are rejected by virtue of their dependence on claim 1.
Claim limitation “moving device” (in claim 10) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification does not provide any examples of structure for a moving device. As best understood and therefore interpreted, any structure capable of providing the function of moving or driving is equivalent to a moving device.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Allowable Subject Matter
Claim 1 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding Claim 1, Komura (JP 2012073195 A, where portions of an attached translation are cited below) teaches a scanning recognition method (described in [0073-0074] and shown in Figs. 10(a) and 10(b) where rows (including W1m and W2m, etc.) of the tray 35 are scanned) based on a fluorescence measuring device 1 (as shown in Fig. 1), wherein the fluorescence measuring device 1 is composed of a plurality of light collecting points (Fig. 1: photodetectors 17a, 17b, and 17c [0028]) arranged in a group at intervals (shown in Fig. 1), and the light collecting points include light transmitting points or reflection points ([0032]: Reflected light from samples are introduced to detectors 17a-17c);
wherein objects to be detected are spread evenly on a detection plate (Fig. 1: sample chamber 15a – 15l holds objects to be measured which is on tray 35; see also Figs. 10(a) and 10(b) which shows tray 35), and the detection plate is scanned by the relative movement between the fluorescence measuring device 1 and the detection plate (described in [0073-0074] and shown in Figs. 10(a) and 10(b) where rows (including W1m and W2m, etc.) of the tray 35 are scanned);
light emitted or reflected by the objects to be detected is collected by the light collecting points and transmitted to a recognition device (computer from [0046]) for photoelectric conversion, so as to realize scanning recognition of the detection plate ([0001-0005]: Excitation light emitted from the specimens is analyzed.; See also [0040-0047] which describes analysis of specimens/samples to determine presence/absence, amount, etc. of the samples; Figs. 10(a) and 10(b) shows scanning of the samples).
Komura does not teach using a grouped straight-line grating where the grouped straight-line grating is composed of a plurality of light collecting points arranged in groups in straight lines at intervals.
Schultz (US 20100003743 A1), related to fluorescence detection, teaches in Fig. 3 a biosensor apparatus 26 with sensor gratings 12. However, these sensor gratings are within the wells 20 and are used to bind molecules, rather than being positioned on a detector for detection/light collecting as disclosed by the instant case.
Shin et al (“Microstructured Fiber End Surface Grating for Course WDM Signal Monitoring”, April 2007, IEEE Photonics Technology Letters, Vol. 19, No. 8, pp. 550-552), related to a fiber end surface grating, does teach a grouped straight-line grating where the grouped straight-line grating is composed of a plurality of light collecting points arranged in groups in straight lines at intervals (Surface grating shown in Fig. 2(a).). However, Shin et al merely discloses a method for fabricating a fiber end-surface grating (Abstract) rather than experimental use of the fiber end-surface grating for analyzing objects, as disclosed by the instant case. Therefore, one of ordinary skill in the art would not have found it obvious to modify Komura with Shin et al because it is not obvious why one would use Shin et al’s fiber end-surface grating with the fluorescence measuring device of Komura, as Shin et al also does not mention using the fiber end-surface grating for fluorescence detection. Rather, Shin et al is uses the fiber end-surface grating for monitoring signals in course wavelength-division multiplexing (Abstract).
Peipei et al (“A plasmonic optical fiber patterned by template transfer as a high-performance flexible nanoprobe for real-time biosensing”, May 2014, Nanoscale, Vol. 6, pp. 8836-8843), related to an optical fiber biosensor, does teach a grouped straight-line grating where the grouped straight-line grating is composed of a plurality of light collecting points arranged in groups in straight lines at intervals (plasmonic optical fibers shown in Figs. 1 and 3 where the fiber endfaces are fabricated to have periodic and closely spaced nanostructures). However, Peipei et al mounts the plasmonic fiber to a flow cell for multimode sensing both in transmission and reflection (caption of Fig. 4). Therefore, one of ordinary skill in the art before the effective filing date would not have found it obvious to modify Komura with Peipei et al because Peipei et al measures flowing fluids in a flow cell rather than objects that are spread out evenly on a detection plate, as disclosed by the instant case.
Therefore, as to Claim 1, the prior art of record, taken either alone or in combination, fails to disclose or render obvious a scanning recognition method based on a grouped straight-line grating where the grouped straight-line grating is composed of a plurality of light collecting points arranged in groups in straight lines at intervals, where the light collecting points collects the light to be detected which is used to realize scanning recognition of a detection plate, in combination with the rest of the limitations in Claim 1.
Claims 2-9 and 11-20 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.
Claim 10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 1st paragraph and 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Other References Considered but not Cited
Duer (US 10590493 B2), related to a scanning light source and detection system for detecting biologically active analyte molecules, teaches in Fig. 7D a detection system. However, Duer does not teach any use of a grouped straight-line grating composed of a plurality of light collection points in the detection system.
Lee (US 10838129 B2), related to an optical fiber, teaches metasurface on an optical fiber (see Fig. 1A), however the optical fiber is used for transmission rather than detection as disclosed by the instant case.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUDY DAO TRAN whose telephone number is (571)270-0085. The examiner can normally be reached Mon-Fri. 9:30am-5:00pm EST.
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/JUDY DAO TRAN/Examiner, Art Unit 2877 /MICHELLE M IACOLETTI/Supervisory Patent Examiner, Art Unit 2877
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