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 .
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.
Specification
The abstract of the disclosure is objected to because it contains more than 150 words (Examiner’s Note: each reference numeral is counted as a word). 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).
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.
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: “a sensor mounting part … to which a blood glucose value measurement sensor is mounted,” in claim 1, which has no corresponding structure; “a measurement unit configured to measure blood deposited on the blood glucose value measurement sensor on the sensor mounting part,” in claim 1, which has no corresponding structure; “an elastic deformation part … configured to deform when pressed by the jig inserted through the opening,” in claim 1, which corresponds to a “hinge” (see para [0038] of Applicant’s specification as originally filed); “a slide part … configured to slide the battery cover so as to guide the battery cover in a removal direction when the lock portion is unlatched from the main body part,” in claim 1, which has no corresponding structure; and “a latched part … inserted into the latching hole and is configured to restrict movement in a direction intersecting the sliding direction when the battery cover is attached to the main body part,” in claim 7, which has no corresponding structure.
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.
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(s) 1-19 is/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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
For claim 1, the claim language “a sensor mounting part … to which a blood glucose value measurement sensor is mounted” was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention. Specifically, this claim language invokes 35 U.S.C. 112(f). However, the corresponding structure could not be found. As a result, there is a lack of evidence that Applicant had possession of the claimed since an applicant shows that the inventor was in possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. Amer. Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997). Possession may be shown in a variety of ways including description of an actual reduction to practice, or by showing that the invention was “ready for patenting” such as by the disclosure of drawings or structural chemical formulas that show that the invention was complete, or by describing distinguishing identifying characteristics sufficient to show that the inventor was in possession of the claimed invention. See, e.g., Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 68, 119 S.Ct. 304, 312, 48 USPQ2d 1641, 1647 (1998); Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406; Amgen, Inc. v. Chugai Pharm., 927 F.2d 1200, 1206, 18 USPQ2d 1016, 1021 (Fed. Cir. 1991). However, those evidentiary bars are not met with the current written description. The examiner respectfully requests Applicant’s assistance in determining where support may be found or have the subject matter deleted from the claim(s).
For claim 1, the claim language “a measurement unit configured to measure blood deposited on the blood glucose value measurement sensor on the sensor mounting part” was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention. Specifically, this claim language invokes 35 U.S.C. 112(f). However, the corresponding structure could not be found. As a result, there is a lack of evidence that Applicant had possession of the claimed since an applicant shows that the inventor was in possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. Amer. Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997). Possession may be shown in a variety of ways including description of an actual reduction to practice, or by showing that the invention was “ready for patenting” such as by the disclosure of drawings or structural chemical formulas that show that the invention was complete, or by describing distinguishing identifying characteristics sufficient to show that the inventor was in possession of the claimed invention. See, e.g., Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 68, 119 S.Ct. 304, 312, 48 USPQ2d 1641, 1647 (1998); Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406; Amgen, Inc. v. Chugai Pharm., 927 F.2d 1200, 1206, 18 USPQ2d 1016, 1021 (Fed. Cir. 1991). However, those evidentiary bars are not met with the current written description. The examiner respectfully requests Applicant’s assistance in determining where support may be found or have the subject matter deleted from the claim(s).
For claim 1, the claim language “a slide part … configured to slide the battery cover so as to guide the battery cover in a removal direction when the lock portion is unlatched from the main body part” was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention. Specifically, this claim language invokes 35 U.S.C. 112(f). However, the corresponding structure could not be found. As a result, there is a lack of evidence that Applicant had possession of the claimed since an applicant shows that the inventor was in possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. Amer. Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997). Possession may be shown in a variety of ways including description of an actual reduction to practice, or by showing that the invention was “ready for patenting” such as by the disclosure of drawings or structural chemical formulas that show that the invention was complete, or by describing distinguishing identifying characteristics sufficient to show that the inventor was in possession of the claimed invention. See, e.g., Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 68, 119 S.Ct. 304, 312, 48 USPQ2d 1641, 1647 (1998); Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406; Amgen, Inc. v. Chugai Pharm., 927 F.2d 1200, 1206, 18 USPQ2d 1016, 1021 (Fed. Cir. 1991). However, those evidentiary bars are not met with the current written description. The examiner respectfully requests Applicant’s assistance in determining where support may be found or have the subject matter deleted from the claim(s).
For claim 1, the claim language “a slide part … configured to slide the battery cover so as to guide the battery cover in a removal direction when the lock portion is unlatched from the main body part” was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention. Specifically, this claim language invokes 35 U.S.C. 112(f). However, the corresponding structure could not be found. As a result, there is a lack of evidence that Applicant had possession of the claimed since an applicant shows that the inventor was in possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. Amer. Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997). Possession may be shown in a variety of ways including description of an actual reduction to practice, or by showing that the invention was “ready for patenting” such as by the disclosure of drawings or structural chemical formulas that show that the invention was complete, or by describing distinguishing identifying characteristics sufficient to show that the inventor was in possession of the claimed invention. See, e.g., Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 68, 119 S.Ct. 304, 312, 48 USPQ2d 1641, 1647 (1998); Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406; Amgen, Inc. v. Chugai Pharm., 927 F.2d 1200, 1206, 18 USPQ2d 1016, 1021 (Fed. Cir. 1991). However, those evidentiary bars are not met with the current written description. The examiner respectfully requests Applicant’s assistance in determining where support may be found or have the subject matter deleted from the claim(s).
For claim 7, the claim language “a latched part … inserted into the latching hole and is configured to restrict movement in a direction intersecting the sliding direction when the battery cover is attached to the main body part” was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention. Specifically, this claim language invokes 35 U.S.C. 112(f). However, the corresponding structure could not be found. As a result, there is a lack of evidence that Applicant had possession of the claimed since an applicant shows that the inventor was in possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. Amer. Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997). Possession may be shown in a variety of ways including description of an actual reduction to practice, or by showing that the invention was “ready for patenting” such as by the disclosure of drawings or structural chemical formulas that show that the invention was complete, or by describing distinguishing identifying characteristics sufficient to show that the inventor was in possession of the claimed invention. See, e.g., Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 68, 119 S.Ct. 304, 312, 48 USPQ2d 1641, 1647 (1998); Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406; Amgen, Inc. v. Chugai Pharm., 927 F.2d 1200, 1206, 18 USPQ2d 1016, 1021 (Fed. Cir. 1991). However, those evidentiary bars are not met with the current written description. The examiner respectfully requests Applicant’s assistance in determining where support may be found or have the subject matter deleted from the claim(s).
Dependent claim(s) 2-19 fail to cure the deficiencies of independent claim 1, thus claim(s) 1-19 is/are rejected under 35 U.S.C. 112(a).
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.
Claim(s) 1-19 is/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.
For claim 1, the claim language “a sensor mounting part … to which a blood glucose value measurement sensor is mounted” is ambiguous. Specifically, this claim language invokes 35 U.S.C. 112(f). However, the corresponding structure could not be found. As a result, the metes and bounds of the claim language cannot be ascertained since it is unclear what structure(s) is/are included in the claimed subject matter and what structure(s) is/are not. The claim is examined as meaning any structure capable of performing the recited function.
For claim 1, the claim language “a measurement unit configured to measure blood deposited on the blood glucose value measurement sensor on the sensor mounting part” is ambiguous. Specifically, this claim language invokes 35 U.S.C. 112(f). However, the corresponding structure could not be found. As a result, the metes and bounds of the claim language cannot be ascertained since it is unclear what structure(s) is/are included in the claimed subject matter and what structure(s) is/are not. The claim is examined as meaning any structure capable of performing the recited function.
For claim 1, the claim term “has” (line 10) is ambiguous. “Transitional phrases such as ‘having’ must be interpreted in light of the specification to determine whether open or closed claim language is intended. See, e.g., Lampi Corp. v. American Power Products., 228 F.3d 1365, 1376, 56 USPQ2d 1445, 1453 (Fed. Cir. 2000) (quoting MPEP 2111.03(IV)). Here, it is unclear whether “has” is intended to be open or closed claim language. The claim is examined as meaning that the claim language is open.
For claim 1, the claim language “a slide part … configured to slide the battery cover so as to guide the battery cover in a removal direction when the lock portion is unlatched from the main body part” is ambiguous. Specifically, this claim language invokes 35 U.S.C. 112(f). However, the corresponding structure could not be found. As a result, the metes and bounds of the claim language cannot be ascertained since it is unclear what structure(s) is/are included in the claimed subject matter and what structure(s) is/are not. The claim is examined as meaning any structure capable of performing the recited function.
For claim 1, the claim language “a slide part that is provided to the main body part and is configured to slide the battery cover so as to guide the battery cover in a removal direction when the lock portion is unlatched from the main body part” and “wherein when the battery cover is slid along the slide part while the battery cover remains latched to the main body part by the lock portion, a force in a compression direction is exerted on the elastic deformation part” is ambiguous. How can it be both that the slide part is configured to slide the battery cover when the lock portion is unlatched, but also that the battery cover can be slid while the battery cover remains latched? So the battery covers slide whether or not the lock portion is latched? The scope is confusing and it is unclear what the metes and bounds of the claim term is. The claim is examined as meaning that, in an initial state, the battery cover is slidable from a first position to a second position while being latched to the main body via the lock portion and then, in a subsequent state where the battery cover has already been slid into the second position, it may then be unlatched from the main body part when pressed by a jig.
For claim 2, the claim term “the outside of the main body part” lacks antecedent basis. The claim is examined as this being a newly introduced claim term.
For claim 5, the claim term “an outside of the main body part” is ambiguous. Claim 2, from which claim 5 depends, already recites an “outside of the main body part.” Therefore, it is unclear whether the same outside or a different outside is being referred to. The claim is examined under the former interpretation.
For claim 2, the claim term “the sliding direction” lacks antecedent basis. The claim is examined as this being a newly introduced claim term.
For claim 7, the claim language “a latched part … inserted into the latching hole and is configured to restrict movement in a direction intersecting the sliding direction when the battery cover is attached to the main body part” is ambiguous. Specifically, this claim language invokes 35 U.S.C. 112(f). However, the corresponding structure could not be found. As a result, the metes and bounds of the claim language cannot be ascertained since it is unclear what structure(s) is/are included in the claimed subject matter and what structure(s) is/are not. The claim is examined as meaning any structure capable of performing the recited function.
For claim 7, the claim language “a latched part … is inserted into the latching hole” is ambiguous. A single claim which claims both an apparatus and method steps is indefinite because the recited limitations is not directed to a “blood glucose meter,” but instead to a method. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011). The claim is being examined as a latched part that is configured to be inserted into the latching hole.
For claim 8, the claim language “wherein the lock portion is formed such that an end that is farther from a center of deformation when the jig is inserted into the opening and the elastic deformation part is deformed is higher than an end that is closer to the center of deformation” is ambiguous. The language is grammatically unclear making it difficult to ascertain what terms limit what elements in the claim language. One example is that it is unclear what is supposed to be “higher”? Is it the lock portion, the center of deformation, or the elastic deformation part? And what is it higher than?
For claim 9, the claim language “a position close to the lock portion” is ambiguous. What is the maximum distance that the position can be to the lock portion be considered “close” to the lock portion. The claim is examined as meaning that the elastic deformation part has a reinforcing rib with a thicker wall closer to the lock portion than away from the lock portion.
For claim 10, the claim language “an inside” is ambiguous. An inside of what? The claim is examined a meaning an inside of the main body part.
For claim 10, the claim language “through the opening” is ambiguous. What is through the opening? The claim is examined as the lock portion being provided through the opening.
For claim 12, the claim language “wherein the opening has a diameter smaller than a size of a child’s finger” is ambiguous. Specifically, the size of a child’s finger is going to vary from child to child, depending on the size of the child, and therefore the diameter of the opening cannot be objectively ascertained to understand the scope of the claim language. The claim is examined as meaning that the diameter of the opening is smaller than a threshold value.
For claim 13, the claim term “the position of a screw” lacks antecedent basis. The claim is examined as this being a newly introduced claim term.
For claim 15, the claim language “a plurality of positions that are away from the lock portion” is ambiguous. What is scope of “are away”? Does that just merely mean spaced apart from? Or does it mean on the opposite side of? Or does it mean something else? The claim is examined under the first interpretation.
Dependent claim(s) 2-19 fail to cure the ambiguity of independent claim 1, thus claim(s) 1-19 is/are rejected under 35 U.S.C. 112(b).
Allowable Subject Matter
Claim(s) 1-19 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:
JP 2013-50326 to Yoichi et al. discloses a blood glucose meter (para [0001]), comprising: a main body part (1) (Fig. 1); a sensor mounting part (7) (Fig. 7) that is provided to the main body part (as can be seen in Fig. 2) and to which a blood glucose value measurement sensor (8) (Fig. 2) is mounted (as can be seen in Fig. 2); a measurement unit (5) (Fig. 2) configured to measure blood deposited on the blood glucose value measurement sensor mounted on the sensor mounting part (para [0001]); a battery cover (5c) (Fig. 2).
JP 3020323 discloses a battery compartment (5) (Fig. 8) that holds a battery (“battery,” para [0001]); a battery cover (A) (Figs. 1 and 5) that is removably attached to the main body part so as to cover the battery compartment (para [0001]), and has an opening (1) (Fig. 2)into which a jig (“ballpoint pen,” para [0018])is inserted during removal from the main body part (para [0018]) ; an elastic deformation part (4) (Fig. 8) (para [0017]) that is provided at a position opposite the battery cover in the main body part (as can be seen in Fig. 8) and is configured to deform when pressed by the jig inserted through the opening (para [0017]); a lock portion (3) (Fig. 8) (para [0017]) that is provided at a position exposed to an outside from the opening (as can be seen in Fig. 8), and is configured to unlatch the battery cover from the main body part when pressed by the jig (para [0017]).
JP 11-233090 to Shinjiro et al. discloses a lock portion (21) (Fig. 1) that is molded integrally (as can be seen in Fig. 1) with the elastic deformation part (19) (Fig. 1); and a slide part that is provided to the main body part and is configured to slide the battery cover so as to guide the battery cover in a removal direction when the lock portion is unlatched from the main body part (para [0022]-[0024], a user’s finger is placed on 39 to slide 13 between the two positions shown in Figs. 5-6).
However, the prior art of record does not disclose and would not have rendered obvious the ordered combination of elements recited in the claim(s) according to the interpretation taken in the 112 rejection(s) above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL LEE CERIONI whose telephone number is (313) 446-4818. The examiner can normally be reached M - F 8:00 AM - 5:00 PM PT.
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/DANIEL L CERIONI/Primary Examiner, Art Unit 3791
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