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 .
Specification
The abstract of the disclosure is objected to because “(see Fig. 5)” should be deleted from the last line of the abstract. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b) (“The sheet or sheets presenting the abstract may not include other parts of the application or other material.“).
Claim Rejections - 35 USC § 112
Note that dependent claims will have the deficiencies of base and intervening claims.
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.
Claims 2-5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claim 2 requires “. . . ., wherein the computer controls the stage to suppress a spatial crosstalk between the first capillary and the second capillary. [italicizing by the Examiner]”
Addressing now the Wands undue experimentation factors (MPEP 2164.01(a)) –
(A) The breadth of the claim
Claim 2 is narrow in scope as a number of different features of the electrophoresis system are specified.
(B) The nature of the invention
Claim 2 is for an electrophoresis system having most importantly concerning this rejection, “a stage for moving the washing container to change a position of the washing container with respect to a plurality of capillaries, . . . .” and “. . . ., wherein the computer controls the stage to suppress a spatial crosstalk between the first capillary and the second capillary.”
(C) The state of the prior art
Ways of suppressing spatial crosstalk between a first capillary and a second capillary in an electrophoresis system are known. See, for example, Amirkhanian et al. US 6,870,165 B2 (hereafter “Amirkhanian”) Figure 5, col. 10:45-61, and claim 5; Kane et al. US 6,063,251 (hereafter “Kane”) col. 13:58 – col. 16:35; and Gavrilov et al.
US 2007/0194249 A1 (hereafter “Gavrilov”) the title, Abstract, and claim 1. However, the Examiner is not aware of any prior art in which a stage (movable vessel holder or gripper) by itself or substantially by itself is used or is configured to suppress a spatial crosstalk between a first capillary and a second capillary.
(D) The level of one of ordinary skill
One of ordinary skill in this art would hold an advanced degree in engineering or a science such as biology, chemistry, or clinical chemistry, and would have an understanding of separation techniques used in analytical chemistry.
(E) The level of predictability in the art
The ability of a certain technique or means to suppress spatial crosstalk between a first capillary and a second capillary is high when the technique or means is well explained.
(F) The amount of direction provided by the inventor
Applicant has not provided any direction on how to use the disclosed stage by itself or substantially by itself or to any significant extent to suppress spatial crosstalk between a first capillary and a second capillary. There is no indication of the stage being capable of playing any significant role in suppressing spatial crosstalk between a first capillary and a second capillary. Applicant’s stage is only shown as a relatively simple geometric structure in the figures, namely 130 in Figure 1 reproduced below, with no optical or electrical features,
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Applicant’s specification only describes the stage as being part of a transport device to simply hold one or more containers:
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See Applicant’s pre-grant application publication,
US 2025/0067706 A1 (hereafter “Applicant’s PG-PUB”), paragraph [0035].
Moreover, there is no direction provided as to how to configure the stage to particularly function as set forth in claims 3-5:
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There is no indication in Applicant’s specification that the stage has any sample injecting or sample measuring capability.
(G) The existence of working examples
There is no working example of a stage suppressing (or playing any significant role in suppressing) a spatial crosstalk between a first capillary and a second capillary.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure
The experimentation needed to make or use the invention based on the content of the disclosure is excessive. One of ordinary skill in the art would have to “start from scratch” in order to configure the stage to be able to suppress a spatial crosstalk between a first capillary and a second capillary.
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 1-13 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:
a) claim 1 recites the limitation "a light source for irradiating a detection position of the capillary with a light ray; . . . . [italicizing by the Examiner]" in lines 6-7. There is insufficient antecedent basis for this limitation in the claim.
b) in claim 1 how are the “a plurality of capillaries” in line 11 related to the “a plurality of capillaries” in line 4?
c) in claim 1 how are the “a plurality of capillaries” in line 13 related to the “a plurality of capillaries” in line 4 and to the “a plurality of capillaries” in line 11?
d) in claim 1 how are the “a plurality of capillaries” in line 15 related to the “a plurality of capillaries” in line 4, to the “a plurality of capillaries” in line 11, and to the “a plurality of capillaries” in line 13?
e) in claim 1 how are the “a plurality of capillaries” in the last line of the claim line related to the “a plurality of capillaries” in line 4, to the “a plurality of capillaries” in line 11, to the “a plurality of capillaries” in line 13, and to the “a plurality of capillaries” in line 15?
f) claim 1 requires “. . . ., and the computer causes the stage to reduce a . . . .” This phrase may be read as indicating a method step; however, claim 1 is a system (device) claim. Thus, the statutory class of invention is not clear. If this claim were published in a patent as is, the public would not know whether they would have to perform this method step in order to infringe the claimed device. The Examiner suggests that Applicant use “configured to” or “adapted to “ phrasing to describe this computer function.
g) claim 1 requires “. . . ., and the computer causes the stage to reduce a carry-over which influences an analysis of the sample using a second capillary out of a plurality of capillaries, the sample remaining in the washing container after introduction into a first capillary out of a plurality of capillaries.” This “computer” clause is confusing because
1) it is not clear in the claim how “the sample remaining in the washing container after introduction into a first capillary out of a plurality of capillaries…” could have any bearing on “a carry-over which influences an analysis of the sample using a second capillary out of a plurality of capillaries”. There is no apparent causal relationship between the two clauses; and
2) the clause “the sample remaining in the washing container after introduction into a first capillary out of a plurality of capillaries…” is vague. Does it mean that sample introduced into a first capillary out of a plurality of capillaries is subsequently completely purged or expelled from the first capillary into the washing container or that the washing container contains and provides the sample introduced to the first capillary, some of which remains in the washing container (that is, not all of the sample in the washing container is introduced to the first capillary)?
h) claim 2 requires “. . . ., wherein the computer controls the stage to suppress a spatial crosstalk between the first capillary and the second capillary. [italicizing by the Examiner]” This phrase may be read as indicating a method step; however, claim 2 is a system (device) claim. Thus, the statutory class of invention is not clear. If this claim were published in a patent as is, the public would not know whether they would have to perform this method step in order to infringe the claimed device. The Examiner suggests that Applicant use “configured to” or “adapted to “ phrasing to describe this computer function.
i) claim 3 requires “. . . ., wherein the computer suppresses the spatial crosstalk by controlling the stage to make a timing for injecting the sample into the capillary different between the first capillary and the second capillary. [italicizing by the Examiner]” It is not clear what such controlling may entail regarding actual stage activity or operation as one of ordinary skill in the art would understand from Applicant’s Figure 1 that all of the capillaries 102 will simultaneously be in respective wells of sample container 124 when the stage has placed the sample container underneath the load header and from Applicant’s PG-PUB paragraph [0031] that the stage has no injecting capability itself, but the load header 129 does.
j) claim 3 requires “. . . ., wherein the computer suppresses . . . . [italicizing by the Examiner]” This phrase may be read as indicating a method step; however, claim 3 is a system (device) claim. Thus, the statutory class of invention is not clear. If this claim were published in a patent as is, the public would not know whether they would have to perform this method step in order to infringe the claimed device. The Examiner suggests that Applicant use “configured to” or “adapted to “ phrasing to describe this computer function.
k) claim 4 requires “. . . ., wherein the computer suppresses the spatial crosstalk by controlling the electrophoresis apparatus to . . . . [italicizing by the Examiner]” However, claim 2, from which claim 4 depends, requires “. . . ., wherein the computer controls the stage to suppress a spatial crosstalk between the first capillary and the second capillary. [italicizing by the Examiner]” Claim 4 is indefinite because it is not clear whether the computer controls the electrophoresis apparatus together with or instead of the stage to suppress a spatial crosstalk between the first capillary and the second capillary.
l) claim 4 requires “. . . ., wherein the computer controls . . . . [italicizing by the Examiner]” This phrase may be read as indicating a method step; however, claim 4 is a system (device) claim. Thus, the statutory class of invention is not clear. If this claim were published in a patent as is, the public would not know whether they would have to perform this method step in order to infringe the claimed device. The Examiner suggests that Applicant use “configured to” or “adapted to “ phrasing to describe this computer function.
m) claim 5 requires “. . . ., wherein the computer controls . . . . [italicizing by the Examiner]” This phrase may be read as indicating a method step; however, claim 5 is a system (device) claim. Thus, the statutory class of invention is not clear. If this claim were published in a patent as is, the public would not know whether they would have to perform this method step in order to infringe the claimed device. The Examiner suggests that Applicant use “configured to” or “adapted to “ phrasing to describe this computer function.
n) claim 6 requires “. . . ., wherein the computer reduces . . . . [italicizing by the Examiner]” This phrase may be read as indicating a method step; however, claim 6 is a system (device) claim. Thus, the statutory class of invention is not clear. If this claim were published in a patent as is, the public would not know whether they would have to perform this method step in order to infringe the claimed device. The Examiner suggests that Applicant use “configured to” or “adapted to “ phrasing to describe this computer function.
o) claim 7 requires “. . . ., wherein the computer reduces . . . . [italicizing by the Examiner]” This phrase may be read as indicating a method step; however, claim 7 is a system (device) claim. Thus, the statutory class of invention is not clear. If this claim were published in a patent as is, the public would not know whether they would have to perform this method step in order to infringe the claimed device. The Examiner suggests that Applicant use “configured to” or “adapted to “ phrasing to describe this computer function.
p) claim 8 requires “. . . ., wherein the computer reduces . . . . [italicizing by the Examiner]” This phrase may be read as indicating a method step; however, claim 8 is a system (device) claim. Thus, the statutory class of invention is not clear. If this claim were published in a patent as is, the public would not know whether they would have to perform this method step in order to infringe the claimed device. The Examiner suggests that Applicant use “configured to” or “adapted to “ phrasing to describe this computer function.
q) the only difference between claim 8 and claim 6 is that claim 6 “includes a washing bath which contains the washing liquid” and claim 8 “includes a blank container which contains a blank sample, . . . .” It is not clear how a “washing liquid” is compositionally different from “a blank sample”, especially as the washing liquid apparently may just be water (see Applicant’s PG-PUB paragraph [0005]).
r) claim 9 requires
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However, claim 8, from which claim 9 depends, requires
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These two "immersions" seem inconsistent as claim 9 has the end of the first capillary being immersed in the washing liquid at least for a time while it is also immersed in the blank sample. How can the end of the first capillary be immersed in the washing liquid and the blank sample at the same time?
s) in claim 11 it is not clear how a “washing liquid” is compositionally different from “a blank sample”, especially as the washing liquid apparently may just be water (see Applicant’s PG-PUB paragraph [0005]).
t) claim 11 requires “. . . ., and a washing bath which contains the washing liquid, . . . [italicizing by the Examiner]” However, underlying claim 1 requires “. . . . a washing container for containing a washing liquid used for washing a plurality of capillaries; . . . .” These two limitations seem inconsistent.
u) claim 12 requires “. . . ., wherein the computer causes . . . . [italicizing by the Examiner]” This phrase may be read as indicating a method step; however, claim 12 is a system (device) claim. Thus, the statutory class of invention is not clear. If this claim were published in a patent as is, the public would not know whether they would have to perform this method step in order to infringe the claimed device. The Examiner suggests that Applicant use “configured to” or “adapted to “ phrasing to describe this computer function.
v) claim 13 requires “. . . ., wherein the computer causes . . . . [italicizing by the Examiner]” This phrase may be read as indicating a method step; however, claim 13 is a system (device) claim. Thus, the statutory class of invention is not clear. If this claim were published in a patent as is, the public would not know whether they would have to perform this method step in order to infringe the claimed device. The Examiner suggests that Applicant use “configured to” or “adapted to “ phrasing to describe this computer function.
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)(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 1 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Yokoyama et al. US 20150337360 A1 (hereafter “Yokoyama”).
Addressing claim 1, Yokoyama discloses an electrophoresis system (Figure 1 and paragraph [0065]) provided with an electrophoresis apparatus (105 in Figure 1; paragraph [0065]) and a computer for controlling the electrophoresis apparatus (the Examiner is construing data analyzer 112 as the claimed computer as it clearly performs computer-like functions, such as storing and processing data, and has computer-like components. See Figure 1 and paragraph [0065]), wherein
the electrophoresis apparatus includes:
a plurality of capillaries (517 in Figure 5) in which electrophoresis of a sample is executed (this feature may be inferred from paragraph [0068]);
a light source (514 in Figure 5) for irradiating a detection position of the capillary with a light ray (Figure 5 and paragraph [0071]);
a detector (515 in Figure 5) for detecting a signal light to be generated dependent on a component of the sample irradiated with the light ray from the light source (Figure 5 and paragraph [0071]);
a washing container (522 in Figure 5) for containing a washing liquid used for washing a plurality of capillaries (“Furthermore, a washing solution for washing the capillary cathode ends 527 is poured to the washing vessel 522.” See paragraph [0094].); and
a stage (carrier 525 in Figure 5) for moving the washing container to change a position of the washing container with respect to a plurality of capillaries (this function may be inferred from the last sentence of
paragraph [0101] and the last sentence of paragraph [0102]), and
the computer causes the stage to reduce a carry-over which influences an analysis of the sample using a second capillary out of a plurality of capillaries, the sample remaining in the washing container after introduction into a first capillary out of a plurality of capillaries (this computer function, as best understood by the Examiner (see the rejection under 35 U.S.C. 112(b) above), is implied by the following, “Finally, the capillary cathode ends 527 are dipped into the washing solution in the washing vessel 522 to wash the capillary cathode ends 527 polluted by the samples. [italicizing by the Examiner]” See paragraph [0103].).
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Yokoyama et al. US 20150337360 A1 (hereafter “Yokoyama“) in view of Rintaro Yamamoto
US 2002/0114740 A1 (hereafter “Yamamoto”) and Yamamoto et al.
US 2001/0040096 A1 (hereafter “Yamamoto II”).
Addressing claim 6, as a first matter Yokoyama meets all of the limitations of underlying claim 1. See the rejection of claim 1 under 35 U.S.C. 102(a)(2) above.
As for the claim 6 limitation “. . . ., wherein, the electrophoresis apparatus further includes a washing bath which contains the washing liquid, . . . .”, recall the following from the rejection of claim 1, ‘ . . . . a washing container (522 in Figure 5) for containing a washing liquid used for washing a plurality of capillaries (“Furthermore, a washing solution for washing the capillary cathode ends 527 is poured to the washing vessel 522.” See paragraph [0094].); . . . .’
Although Yokoyama does disclose placing an end of the first capillary into a washing solution wash (see the rejection of underlying claim 1 above), Yokoyama does not disclose “. . . . and the computer reduces the carry-over by controlling the stage to take an end of the first capillary in/out of the washing bath for a period of time from injection of the sample into the first capillary to execution of electrophoresis in the first capillary.”
Yamamoto discloses rinsing the inside of a capillary “through repetition of dipping the end 1a into a rinsing liquid such that the inside of the capillary 1 is filled with the rinsing liquid, and then discharging the rinsing liquid to a drainage.” See the title,
Figure 1A, and paragraph [0048].
Yamamoto II discloses, regarding a capillary electrophoresis system, “When the sample plate assembly moves between the waste liquid vessel, the sample and the buffer vessel, the top ends of capillaries are immersed once or a plurality of times in a cleaning vessel (water) for cleaning so as to prevent mixing of such as sample and buffer liquid deposited at the top ends of the capillaries into other solution. [italicizing by the Examiner]” See Yamamoto II the title, Figures 1 and 3, and paragraph [0040].
In light of Yamamoto and Yamamoto II it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the computer in the electrophoresis system of Yokoyama reduce the carry-over by controlling the stage to take an end of the first capillary in/out of the washing bath for a period of time from injection of the sample into the first capillary to execution of electrophoresis in the first capillary because it is prima facie obvious as essentially simple substitution of one known element1 for another to obtain predictable results (MPEP 2143(I)(B)), especially as already Yokoyama does immerse the capillary end of the first capillary into wash solution, although apparently only once. Note that one of ordinary skill in the art would be ready able to determine a necessary time interval during which the capillary end should be washed, such as from injection of the sample into the first capillary to execution of electrophoresis in the first capillary.
Addressing claim 7, as a first matter Yokoyama meets all of the limitations of underlying claim 1. See the rejection of claim 1 under 35 U.S.C. 102(a)(2) above.
As for the claim 6 limitation “. . . ., wherein, the electrophoresis apparatus further includes a washing bath which contains the washing liquid, . . . .”, recall the following from the rejection of claim 1, ‘ . . . . a washing container (522 in Figure 5) for containing a washing liquid used for washing a plurality of capillaries (“Furthermore, a washing solution for washing the capillary cathode ends 527 is poured to the washing vessel 522.” See paragraph [0094].); . . . .’
Although Yokoyama does disclose placing an end of the first capillary into a washing solution wash (see the rejection of underlying claim 1 above), Yokotama does not disclose “. . . . and the computer reduces the carry-over by controlling the stage to take an end of the first capillary in/out of the washing bath for a period of time from execution of electrophoresis in the first capillary to injection of the sample into the second capillary.”
Yamamoto discloses rinsing the inside of a capillary “through repetition of dipping the end 1a into a rinsing liquid such that the inside of the capillary 1 is filled with the rinsing liquid, and then discharging the rinsing liquid to a drainage.” See the title,
Figure 1A, and paragraph [0048].
Yamamoto II discloses, regarding a capillary electrophoresis system, “When the sample plate assembly moves between the waste liquid vessel, the sample and the buffer vessel, the top ends of capillaries are immersed once or a plurality of times in a cleaning vessel (water) for cleaning so as to prevent mixing of such as sample and buffer liquid deposited at the top ends of the capillaries into other solution. [italicizing by the Examiner]” See Yamamoto II the title, Figures 1 and 3, and paragraph [0040].
In light of Yamamoto and Yamamoto II it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the computer in the electrophoresis system of Yokoyama reduce the carry-over by controlling the stage to take an end of the first capillary in/out of the washing bath for a period of time from time from execution of electrophoresis in the first capillary to injection of the sample into the second capillary because it is prima facie obvious as essentially simple substitution of one known element2 for another to obtain predictable results (MPEP 2143(I)(B)), especially as already Yokoyama does immerse the capillary end of the first capillary into wash solution, although apparently only once. Note that one of ordinary skill in the art would be ready able to determine a necessary time interval during which the capillary end should be washed, such as from time from execution of electrophoresis in the first capillary to injection of the sample into the second capillary.
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Yokoyama.
Addressing claim 12, as a first matter Yokoyama meets all of the limitations of underlying claim 1. See the rejection of claim 1 under 35 U.S.C. 102(a)(2) above. Yokoyama does not disclose “. . . ., wherein the computer causes the stage to perform an operation to reduce the carry- over during a process for measuring the sample using the capillary.” However, Yokoyama does disclose washing the end of the first capillary to wash off pollution by the migration medium (see the last sentence in paragraph [0101]), washing the end of the first capillary to wash off pollution by the buffer solution (see the last sentence in paragraph [0102]), and washing the end of the first capillary to wash off pollution by the samples (see the last sentence in paragraph [0101]), that is, no less than three different washings of the capillary end, all of which will inherently reduce the carry-over. Thus, in light of Yokoyama alone it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to perform further washing of the capillary end during another stage of the electrophoresis procedure if it was determined that pollution of the capillary end could also occur then.
Addressing claim 13, as a first matter Yokoyama meets all of the limitations of underlying claim 1. See the rejection of claim 1 under 35 U.S.C. 102(a)(2) above. Yokoyama does not disclose “. . . ., wherein the computer causes the stage to perform an operation to reduce the carry- over during a calibration process before measurement of the sample using the capillary.” However, Yokoyama does disclose washing the end of the first capillary to wash off pollution by the migration medium (see the last sentence in paragraph [0101]), washing the end of the first capillary to wash off pollution by the buffer solution (see the last sentence in paragraph [0102]), and washing the end of the first capillary to wash off pollution by the samples (see the last sentence in paragraph [0101]), that is, no less than three different washings of the capillary end, all of which will inherently reduce the carry-over. Thus, in light of Yokoyama alone it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to perform further washing of the capillary end during another stage of the electrophoresis procedure if it was determined that pollution of the capillary end could also occur then.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Fujioka et al. WO 2021/210144 A13 based on the English language equivalent Fujioka et al.
US 2023/0124845 A14 (hereafter “Fujioka”5) in view of Yokoyama.
Addressing claim 1, Fujioka discloses an electrophoresis system (see the title, 10 in Figure 1, and paragraph [0014]) provided with an electrophoresis apparatus (101 in Figure 1; paragraph [0034]) and a computer (117 in Figure 1; paragraphs [0033] and [0034]) for controlling the electrophoresis apparatus (paragraph [0034]), wherein
the electrophoresis apparatus includes:
a plurality of capillaries (105 in Figure 1; paragraph [0035]) in which electrophoresis of a sample is executed (this feature may be inferred from paragraph [0034]);
a light source (127 in Figure 1; paragraph [0055]) for irradiating a detection position of the capillary with a light ray (Figure 1 and paragraph [0055]);
a detector (121 in Figure 1) for detecting a signal light to be generated dependent on a component of the sample irradiated with the light ray from the light source (Figure 1 and paragraph [0055]);
a washing container (cleaning vessel 159 in Figure 1) for containing a washing liquid used for washing a plurality of capillaries (this is an intended use that cleaning vessel 159 is capable of performing); and
a stage (165 in Figure 1; paragraph [0142]) for moving the washing container to change a position of the washing container with respect to a plurality of capillaries (this function may be inferred from Figure 1).
Fujioka, though, does not disclose that “the computer causes the stage to reduce a carry-over which influences an analysis of the sample using a second
capillary out of a plurality of capillaries, the sample remaining in the washing container after introduction into a first capillary out of a plurality of capillaries…”
Yokoyama discloses an electrophones system as set forth in claim 1. See the rejection of claim under 35 U.S.C 102(a)(2) above.
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the computer be configured to causes the stage to reduce a carry-over which influences an analysis of the sample using a second
capillary out of a plurality of capillaries, the sample remaining in the washing container after introduction into a first capillary out of a plurality of capillaries as taught by Yokoyama in the electrophoresis system of Fujioka because this will avoid contaminating the second capillary with sample residue from the first capillary.
Allowable Subject Matter
Claims 8-11 would be allowable if rewritten to overcome the rejections under
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.
The following is a statement of reasons for the indication of allowable subject matter:
a) the International Search Report for international application PCT/JP2022/001880 cites WO 2021/210144 A1 as a “Y” document against claims 1-5 and 12-13 of that application along with JP 2009-42226 A and
JP 2010-72003 A. WO 2021/210144 A1 has been used as a base refence in a rejection of claim 1 under 35 U.S.C. 103 above. JP 2009-42226, based on an English language translation obtained by the U.S. Examiner, and JP 2010-72003 A, based on an English language translation obtained by the U.S. Examiner, so far appear at best redundant with the various prior art applied in rejections under 35 U.S.C 102(a)(2) or 35 U.S.C 103 above.
b) the combination of limitations in claim 8 has the following underlined features
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In contrast, Yokoyama discloses immersing the end of the first capillary into washing solution, there is no blank sample. See in Yokoyama the last sentence in paragraph [0103].
c) claims 9 and 10 each depend from allowable claim 8.
d) the combination of limitations in claim 11 has the following underlined features
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In contrast, Yokoyama discloses immersing the end of the first capillary into washing solution, there is no blank sample. See in Yokoyama the last sentence in paragraph [0103].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER STEPHAN NOGUEROLA whose telephone number is (571)272-1343. The examiner can normally be reached on Monday - Friday 9:00AM-5:30 PM EST.
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/ALEXANDER S NOGUEROLA/Primary Examiner, Art Unit 1795
1 “(step, element, etc.)”
2 “(step, element, etc.)”
3 Note that Anazawa Takashi is listed as a joint inventor for WO 2021/210144 A1, but not for U.S. application 18/723618.
4 See MPEP 1893.01(d). US 2023/0124845 A1 is a presumed faithful English language translation of WO 2021/210144 A1.
5 So, although the rejection is based on WO 2021/210144 A1 all citations are to US 2023/0124845 A1.