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 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.
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.
Claims 1-20 are not clear with respect to what applicant is claiming. The claims do not clearly set forth the metes and bounds of the patent protection desired.
Claim 1 is indefinite because the phrase “wherein the at least one sample vessel is moved on an orbit with an effective radius during operation of the laboratory mill; [...] wherein the at least one sample holder can be coupled to the at least one holding device via the coupling geometries in at least two different orientations relative to the axis of rotation and/or the axis of oscillation in order to change the effective radius of the orbit of the at least one sample vessel” is ambiguous. Specifically, it is unclear whether this limitation recites structural capabilities of the device or merely its intended use, rendering the metes and bounds of the claim vague and indefinite. In addition, the claim is indefinite because it fails to clearly define the structure of the coupling geometries. While the claim recites “complementary coupling geometries,” the subsequent “wherein” clauses introduce functional language—such as “moved” and “can be”—without positively reciting the structural configuration required to achieve the two different orientations relative to the axis of rotation. Consequently, it is unclear what specific structural configurations are being claimed. Claims 2-20, which depend on the above elements, are similarly unclear and/or are rejected based on their claim dependency.
Claim 2 is similarly unclear because it is ambiguous about which structural elements are being claimed. Specifically, the claim fails to explain how several coupling geometries on the at least one sample holder could be located on orbits with different effective radii.
Claim 3 is similarly unclear because it is ambiguous about which structural elements are being claimed. In addition, the effective radius of the orbit of the at least one sample vessel is neither a positive element of the claim nor included in the independent claim.
Claim 7 is unclear as to whether “each half part” refers to the two half parts recited in claim 5 or to a different element.
Claim 8 recites the limitation "the half parts" in L2. There is insufficient antecedent basis for this limitation in the claim.
Claims 14-15 are similarly unclear as rejected in claims 1-3 above.
Claim Rejections - 35 USC § 102
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.
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.
(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(s) 1-4, 6, 10, 16-19 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Orhan (WO 2021/043854 A1 published 03/11/2021; rejection referring to US equivalent application US 2022/0347692 A1).
Regarding claim 1, Orhan teaches:
1. A laboratory mill (e.g., laboratory vibrating mill 1, ¶ 0008, 0049-0052+) comprising:
at least one sample holder (e.g., grinding bowl holder 7, 8) for receiving at least one sample vessel (e.g., grinding bowl 2, 3); and
at least one holding device (e.g., eccentric shaft 4, oscillators/rocker/swinging arms 5, 6) and/or arranged to oscillate about an axis of oscillation, for holding and carrying along the at least one sample holder during operation of the laboratory mill (see i.e., FIG. 1 shows a top view of a vibrating mill 1 for two grinding bowls 2, 3 performing circular arc-shaped vibrations in a horizontal position. A pendulum drive of the vibrating mill 1 is constructed in several parts with an eccentric shaft 4 mounted to rotate about a vertical eccentric axis and with two swinging arms 5, 6 each mounted to swing about vertical swinging axes and connected to the eccentric shaft 4 via couplings. Grinding bowl holders 7, 8 for the grinding bowls 2, 3 are attached to the swinging arms 5, 6. Furthermore, a motor unit 10 coupled to the eccentric shaft 4 via a V-belt 9 is provided for torque transmission. The eccentric shaft 4 is rotatably mounted on a base plate 11. Furthermore, two bearing bolts 12, 13 are attached to the base plate 11, around which the swing arms 5, 6 are rotatably mounted. Finally, the motor unit 10 is arranged on the base plate 11. The eccentric shaft 4, the bearing bolts 12, 13 and the motor unit 10 thus form, together with the base plate 11, a constructional unit which can stand on a floor or ground via damping elements. ¶ 0039; The motor unit 10 transmits a torque to the eccentric shaft 4 via the V-belt 9. A rotary movement of the eccentric shaft 4 is converted via the couplings into an oscillating movement of the oscillators 5, 6. The oscillation frequency can be between 3 and 50 Hz, preferably up to 35 Hz. The oscillation path (double amplitude deflection) of the grinding bowl can be between 20 and 50 mm, preferably between 20 and 30 mm. ¶ 0040 & Figs. 1-3; The grinding bowl holder 7, 8 of the laboratory mill 1 shown has in each case a holding bracket 25 firmly connected to a rocker 5, 6, which cooperates with a horizontally adjustable further holding bracket 26. By adjusting the clamping screw 27, the outer retaining bracket 26 can be clamped against the inner retaining bracket 25 and thus a grinding bowl 2, 3 can be clamped horizontally between the retaining brackets 25, 26. ¶ 0052 & Fig. 7);
wherein the at least one sample vessel is capable of being moved on an orbit with an effective radius during operation of the laboratory mill (see ¶ 0039, 0040 & 0052 for example);
wherein complementary coupling geometries are provided on the at least one sample holder (7, 8) and the at least one holding device (4, 5, 6) for a positive coupling of the at least one sample holder to the at least one holding device (see i.e., A pendulum drive of the vibrating mill 1 is constructed in several parts with an eccentric shaft 4 mounted to rotate about a vertical eccentric axis and with two swinging arms 5, 6 each mounted to swing about vertical swinging axes and connected to the eccentric shaft 4 via couplings. Grinding bowl holders 7, 8 for the grinding bowls 2, 3 are attached to the swinging arms 5, 6. Furthermore, a motor unit 10 coupled to the eccentric shaft 4 via a V-belt 9 is provided for torque transmission. The eccentric shaft 4 is rotatably mounted on a base plate 11. Furthermore, two bearing bolts 12, 13 are attached to the base plate 11, around which the swing arms 5, 6 are rotatably mounted. Finally, the motor unit 10 is arranged on the base plate 11. The eccentric shaft 4, the bearing bolts 12, 13 and the motor unit 10 thus form, together with the base plate 11, a constructional unit which can stand on a floor or ground via damping elements. ¶ 0039); and
wherein the at least one sample holder capable of being coupled to the at least one holding device via the coupling geometries in at least two different orientations relative to the axis of rotation and/or the axis of oscillation (see i.e., The motor unit 10 transmits a torque to the eccentric shaft 4 via the V-belt 9. A rotary movement of the eccentric shaft 4 is converted via the couplings into an oscillating movement of the oscillators 5, 6. The oscillation frequency can be between 3 and 50 Hz, preferably up to 35 Hz. The oscillation path (double amplitude deflection) of the grinding bowl can be between 20 and 50 mm, preferably between 20 and 30 mm. ¶ 0040; The grinding bowl holder 7, 8 of the laboratory mill 1 shown has in each case a holding bracket 25 firmly connected to a rocker 5, 6, which cooperates with a horizontally adjustable further holding bracket 26. By adjusting the clamping screw 27, the outer retaining bracket 26 can be clamped against the inner retaining bracket 25 and thus a grinding bowl 2, 3 can be clamped horizontally between the retaining brackets 25, 26. ¶ 0052).
With regard to limitations in claims 1, 2 (e.g., wherein the at least one sample vessel is moved on an orbit with an effective radius during operation of the laboratory mill; [...] wherein the at least one sample holder can be coupled to the at least one holding device via the coupling geometries in at least two different orientations relative to the axis of rotation and/or the axis of oscillation in order to change the effective radius of the orbit of the at least one sample vessel, etc.), these claim limitations are considered process or intended use limitations, which do not further delineate the structure of the claimed apparatus from that of the prior art. The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)). "Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim." Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Furthermore, "[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims." See In re Young, 75 F.2d *>996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115).
Regarding claims 2-4, 6, 10, 16-19, Orhan teaches:
2. The laboratory mill according to claim 1, wherein several coupling geometries on the at least one sample holder (see ¶ 0039, 0040 & 0052 for example).
3. The laboratory mill according to claim 1, wherein, for a change in the effective radius of the orbit of the at least one sample vessel, a design of the coupling geometries on the at least one sample holder which is capable of rotationally symmetrical about a first center plane of the at least one sample holder is provided (a first center plane of the at least one sample holder (7, 8) would be taught as the eccentric shaft 4 mounted to rotate about a vertical eccentric axis and with two swinging arms 5, 6 each mounted to swing about vertical swinging axes and connected to the eccentric shaft 4 via couplings; and the grinding bowl holders 7, 8 for the grinding bowls 2, 3 (at least one sample vessel) attached to the swinging arms 5, 6, see ¶ 0039-0040 for example).
4. The laboratory mill according to claim 1, wherein the at least one sample holder has a plurality of coupling geometries on radially opposite outer sides (see i.e., the position of the oscillators/rocker/swinging arms 5, 6 in Figs. 1-3 & rotary unions 31 in Fig. 8).
6. The laboratory mill according to claim 1, wherein at least one coupling element detachably fastened to the at least one sample holder or the at least one holding device is provided, wherein the at least one coupling element forms a coupling geometry of the coupling geometries (see i.e., The grinding bowl holder 7, 8 of the laboratory mill 1 shown has in each case a holding bracket 25 firmly connected to a rocker 5, 6, which cooperates with a horizontally adjustable further holding bracket 26. By adjusting the clamping screw 27, the outer retaining bracket 26 can be clamped against the inner retaining bracket 25 and thus a grinding bowl 2, 3 can be clamped horizontally between the retaining brackets 25, 26. ¶ 0052 & Fig. 7).
10. A sample holder (e.g., grinding bowl holder 7, 8) for a laboratory mill with the features according to claim 1 (see ¶ 0039-0040, 0052 for example).
16. The laboratory mill according to claim 1, wherein the at least one holding device is connected to a swing arm of the laboratory mill (e.g., oscillators/rocker/swinging arms 5, 6) and moves with the swing arm during operation of the laboratory mill (see ¶ 0039-0040, 0052 for example).
17. The laboratory mill according to claim 1, wherein the laboratory mill is a laboratory vibrating mill (see Abstract, ¶ 0008, 0049-0052+ for example).
18. The laboratory mill according to claim 3, wherein the first center plane extends transversely to the radial through the axis of rotation and/or the axis of oscillation (i.e., the first center plane extending transversely to the radial direction, see ¶ 0039-0040 for example).
19. The laboratory mill according to claim 4, wherein the plurality of coupling geometries are of the same design (see Figs. 1-3 & 7 for example).
Claim Rejections - 35 USC § 103
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 5, 7-9, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Orhan (WO 2021/043854 A1 published 03/11/2021; rejection referring to US equivalent application US 2022/0347692 A1) in view of St. Cyr et al. (US 2014/0116160 A1).
Regarding claims 5, 8, Orhan does not explicitly teach: 5. The laboratory mill according to claim 1, wherein the at least one sample holder has two half parts connected to one another in a hinged manner, each of the half parts designed to accommodate a plurality of sample vessels. 8. The laboratory mill according to claim 5, wherein the half parts are designed as identical components.
St. Cyr teaches: wherein at least one sample holder ( e.g., 100) has two half parts (e.g., 110, 120) connected to one another in a hinged manner (e.g., 122, 124), each of the half parts designed to accommodate a plurality of sample vessels (see a plurality of apertures in Figs. 1-2 for example); wherein the half parts are designed as identical components (see Figs. 1-2 for example).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to provide the sample holder of Orhan as the hinged manner holder, as taught by St. Cyr to facilitate insertion, removal and retention of a plurality of samples while maintaining their predetermined position (see St. Cyr ¶ 0033-0035 for example).
Regarding claims 7, 20, modified Orhan teaches:
7. The laboratory mill according to claim 5, wherein each half part has at least one coupling element on each radial outer side and wherein coupling elements arranged on an identical radial outer side of the half parts are coupled in the coupling state of the at least one sample holder to a coupling geometry of the at least one holding device (see i.e., The grinding bowl holder 7, 8 of the laboratory mill 1 shown has in each case a holding bracket 25 firmly connected to a rocker 5, 6, which cooperates with a horizontally adjustable further holding bracket 26. By adjusting the clamping screw 27, the outer retaining bracket 26 can be clamped against the inner retaining bracket 25 and thus a grinding bowl 2, 3 can be clamped horizontally between the retaining brackets 25, 26. ¶ 0052 & Figs. 1-3, 7).
20. The laboratory mill according to claim 7, wherein the coupling geometry of the at least one holding device is a common coupling element of the holding device (see e.g., base plate 11, ¶ 0039 & Fig. 1).
Regarding claim 9, Orhan does not explicitly teach: 9. The laboratory mill according to claim 1, wherein the at least one sample holder is made of aluminum and/or has at least one base body made of aluminum for receiving the at least one sample vessel.
St. Cyr teaches: wherein the at least one sample holder is made of aluminum and/or has at least one base body made of aluminum for receiving at least one sample vessel (see ¶ 0052).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to manufacture the sample holder of Orhan from aluminum, as taught by St. Cyr, to provide a substantially inert metallic holder suitable for the laboratory environment (St. Cyr ¶ 0052).
Claim(s) 11 & 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Orhan (WO 2021/043854 A1 published 03/11/2021; rejection referring to US equivalent application US 2022/0347692 A1) in view of Eigemeier (EP 1767275 A1; rejection referring to Google Patents translated version).
Regarding claim 11, Orhan does not explicitly teach: 11. The laboratory mill according to claim 1, wherein the at least one sample holder is configured for receiving a plurality of sample vessels.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to provide the sample holder of Orhan as the hinged manner holder, as taught by St. Cyr to facilitate insertion, removal and retention of a plurality of samples while maintaining their predetermined position (see St. Cyr ¶ 0033-0035 for example).
Eigemeier teaches: wherein at least one sample holder (e.g., 11, 12) is configured for receiving a plurality of sample vessels (e.g., 13).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to configure the sample holder of Orhan to accommodate a plurality of sample vessels, as taught by Eigemeier in order to permit simultaneous processing of multiple samples (Eigemeier P3/last paragraph).
Regarding claim 13, modified Orhan does not explicitly teach: 13. The laboratory mill according to claim 11, wherein the at least one sample holder is configured for receiving reaction vessels for small sample volumes in the milliliter range.
Eigemeier teaches: A receptacle for a sample vessel may, for example, be formed as a tube adapted to the cross-section of the sample vessel. However, the receptacle can also have a variable cross section, which is suitable for different sample containers. The variable cross section is realized for example by a clamping ring. Depending on the size and cross section of the sample containers, several receptacles can be provided for different sample containers. For example, in a vessel holder three different shots for each different Sample vessels provided. Thus, a vessel holder can be used for different sizes or types of sample vessels. (P6/first paragraph). Although the claimed small sample volumes in the milliliter range are not taught, it would have been obvious to one of ordinary skill in the art at the time the invention was made to select a desired sample holder size configured to receive reaction vessels for such volumes, as selecting the appropriate dimensions of a sample holder suitable for different sample containers is a matter of routine optimization (Eigemeier P6/first paragraph).
Regarding claims 14-15, modified Orhan teaches:
14. The laboratory mill according to claim 11, wherein the plurality of sample vessels are capable of being moved on orbits with different effective radii (see i.e., The grinding bowl holder 7, 8 of the laboratory mill 1 shown has in each case a holding bracket 25 firmly connected to a rocker 5, 6, which cooperates with a horizontally adjustable further holding bracket 26. By adjusting the clamping screw 27, the outer retaining bracket 26 can be clamped against the inner retaining bracket 25 and thus a grinding bowl 2, 3 can be clamped horizontally between the retaining brackets 25, 26. ¶ 0052; see also ¶ 0039, 0040 for example).
15. The laboratory mill according to claim 14, wherein the at least one sample holder capable of being coupled to the at least one holding device via the coupling geometries in at least two different orientations relative to the axis of rotation and/or the axis of oscillation (see i.e., The motor unit 10 transmits a torque to the eccentric shaft 4 via the V-belt 9. A rotary movement of the eccentric shaft 4 is converted via the couplings into an oscillating movement of the oscillators 5, 6. The oscillation frequency can be between 3 and 50 Hz, preferably up to 35 Hz. The oscillation path (double amplitude deflection) of the grinding bowl can be between 20 and 50 mm, preferably between 20 and 30 mm. ¶ 0040; The grinding bowl holder 7, 8 of the laboratory mill 1 shown has in each case a holding bracket 25 firmly connected to a rocker 5, 6, which cooperates with a horizontally adjustable further holding bracket 26. By adjusting the clamping screw 27, the outer retaining bracket 26 can be clamped against the inner retaining bracket 25 and thus a grinding bowl 2, 3 can be clamped horizontally between the retaining brackets 25, 26. ¶ 0052).
With regard to limitations in claims 14, 15 (e.g., wherein the plurality of sample vessels are moved on orbits with different effective radii; [...] wherein the at least one sample holder can be coupled to the at least one holding device via the coupling geometries in at least two different orientations relative to the axis of rotation and/or the axis of oscillation in order to change the effective radii of the orbits of the plurality of sample vessels), these claim limitations are considered process or intended use limitations, which do not further delineate the structure of the claimed apparatus from that of the prior art. The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)). "Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim." Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Furthermore, "[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims." See In re Young, 75 F.2d *>996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Orhan (WO 2021/043854 A1 published 03/11/2021; rejection referring to US equivalent application US 2022/0347692 A1) in view of Eigemeier (EP 1767275 A1; rejection referring to Google Patents translated version), and further in view of St. Cyr et al. (US 2014/0116160 A1).
Regarding claim 12, modified Orhan does not explicitly teach: 12. The laboratory mill according to claim 11, wherein the at least one sample holder is made of aluminum and/or has at least one base body made of aluminum for receiving the plurality of sample vessels.
See St. Cyr above.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to further modify the sample holder of Orhan to be manufactured from aluminum, as taught by St. Cyr, to provide a substantially inert metallic holder suitable for the laboratory environment (St. Cyr ¶ 0052).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEAN KWAK whose telephone number is (571)270-7072. The examiner can normally be reached M-TH, 4:30 am - 2:30 pm EST.
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/DEAN KWAK/Primary Examiner, Art Unit 1795
DEAN KWAK
Primary Examiner
Art Unit 1795
