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 disclosure is objected to because of the following informalities:
[0048] refers to “holding component 120”, which has previously been referenced as “gripper” in [0032].
[0053] refers to “aligning component(s) 630”, which has previously been referenced as “specimen” in [0052].
[0075] refers to “fixed arm 920”, which has previously been referenced as “sliding arm” in [0073].
[0016] and [0084] refer to “slide adapters”, but the entirety of the disclosure refers to these same parts as “guide adapters”, as evidenced by [0084] itself and Figure 11.
Appropriate correction is required.
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: “holding components”, “securing components”, “guide components”, “component of the apparatus” in claim 1, with repeated references in claims 2-10, 15-16, and 19, “securing elements” in claim 9 and “slide guide component” in claim 19.
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 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, and others, recite the limitation “holding component” that 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 only mention of structure that provides support for this limitation is referred to as 120, also referring to the grippers, in [0048]. This is in error, as evidenced by the remainder of the disclosure. The specification is devoid of any other structure that has been referred to or related to a “holding component”. 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.
Claim 1, and others, recite the limitation “securing component” that 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 is devoid of any structure that has been referred to or related to a “securing component”. 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.
Claim 9 recites the limitation “securing element” that 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 is devoid of any structure that has been referred to or related to a “securing element”, as it relates to the coupling the guide in place to the component of the apparatus, since the “securing elements” mentioned in []. 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.
Claim 19 recites the limitation “slide guide component” that 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 is devoid of any structure that has been referred to or related to a “slide guide component”. 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.
Claim 1 furthermore recites the limitation “a component of the apparatus” in line 10. However, it is unclear and indefinite, whether the “component of the apparatus” is referring to one of the holding components, the securing components, or the grippers, since there are multiple components already referenced and part of the apparatus as a whole.
Claim 1 still further recites the limitation “guide components configured for:…engaging the specimen holder with the specimen”, which is interpreted as the guide components causing the specimen holder to be engaged with the specimen. However, the specification only mentions the guide components and slide guide engaging/moving the specimen holder and the specimen holder engaging the specimen, not the guide components causing the specimen holder to engaging the specimen. Thus this limitation is indefinite and lacks clarity.
Claim 4 recites the limitation “a gripping axis of the one or more gripper”, however the specification defines the gripping axis as “the line between two grippers” ([0080]). It is unclear and indefinite how one gripper forms an axis having a line extending from itself, based on the requirements of the specification.
Claim 7 recites the limitation “surface on the component of the apparatus” and then “the guide to a component of the apparatus”. It is unclear and indefinite whether the guide base surface is matched to the same component of the apparatus as the surface to which the guide is coupled or if there are additional components within this limitation.
Claim 18 recites the limitation "the at least one characteristic" in line 1. There is insufficient antecedent basis for this limitation in the claim. Perhaps this claim should be dependent upon claim 17?.
Claims 2-3, 5-6, 8, 10-17 and 20 are also rejected based on their dependency upon rejected claims.
Additionally, based on the numerous 112(b) rejections, specifically as they relate to the 112(f) interpretations and the lack of structural clarity, the Examiner is unable to make an interpretation at this time.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
JP 2013-160674, cited in the International Search Report submitted on 11/08/2024, appears to contain a flat sample holder with securing elements, a pair of grips and a sliding element that moves the flat specimen relative to the grip position. Further review will occur when an interpretation of the definite claim language can be made.
Smith et al. 5,297,411 discloses a flat specimen holder, placed between grippers, with sliding elements that engage a guide component with a specimen.
Yang et al. US 2016/0091402 A1, cited in the International Search Report submitted on 11/18/2024, disclose a flat specimen holder, two grippers and a physical sliding motion that inserts the flat specimen holder into the grippers.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jonathan M Dunlap whose telephone number is (571)270-1335. The examiner can normally be reached Mon-Fri 10AM - 7PM.
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/JONATHAN M DUNLAP/Primary Examiner, Art Unit 2855 July 11, 2026
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