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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-16) in the reply filed on 03/16/26 is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/30/24 & 03/25/25 has been acknowledged. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
a fluid transport module in claims 1, 7, and 12-13 (322 @ figure 2 and paragraph [0053]: e.g., The fluid transport module 322 is used to take the fluid that will participate in the detection reaction out of a storage module…The fluid transport module 322 may be composed of a pump, a valve, a pipeline, etc.).
a storge module in claim 1 and 9 (324 @ figure 2 and paragraph [0053]: e.g., a storage module (i.e., the temperature-uncontrolled storage component 324 and/or the temperature-controlled storage component 326).
a detection reaction module in claims 6 and 13 (318 @ figure 2 and paragraph [0051]: e.g., The detection reaction module 318 is used to detachably mount the flow cell 38 for detection reaction thereon, so that the flow cell 38 can be repeatedly fixed to the detection reaction module 318 through a physical connection).
an excitation signal transmission module in claim 10 (301 @ figure 2 and paragraph [0040]: e.g., the excitation signal transmission module 301 may be a light source, such as a laser source and an LED. If the excitation signal is an electrical signal, the excitation signal transmission module 301 may be a power supply).
a signal channeling module in claim 10 (303 @ figure 2 and paragraph [0041]: e.g., the signal channeling module 303 may be an optical module composed of one or more optical components such as an objective lens, a barrel lens, a lens, and a filter).
a feedback signal receiving module in claim 10 (305 @ figure 2 and paragraph [0042]: e.g., the feedback signal receiving module 305 may be an area-array camera, a line scanning camera, or another optical signal receiver such as a photodiode and a photomultiplier tube).
a waste collection module in claims 14 and 16 (330 @ figure 2 and paragraph [0058]: e.g., the waste collection module 330 is used to collect and store all waste discharged from the fluid system 33, including the waste generated after the detection reaction and other waste generated by the fluid system 33 during operation).
a waste transport module in claim 14 (332 @ figure 2 and paragraph [0059]: e.g., The waste transport module 332 is used to discharge the waste stored in the waste collection module 330 into the waste storage device 4 outside the gene sequencer 1. The waste transport module 332 may be a module composed of fluid components such as a pump, a valve, and a pipeline).
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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6 and 8-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,117,396. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-16 of U.S. Patent No. 12,117,396 are anticipated the claims 1-16 of claimed invention of the present invention.
Regarding claim 1; Claim 1 lines 1-28 and claim 11 lines 1-13 of U.S. Patent No. 12,117,396 discloses all of feature of claimed invention.
Regarding claim 2; Claim 7 lines 1-4 of U.S. Patent No. 12,117,396 discloses all of feature of claimed invention.
Regarding claim 3; Claim 3 lines 1-4 of U.S. Patent No. 12,117,396 discloses all of feature of claimed invention.
Regarding claim 4; Claim 7 lines 1-10 of U.S. Patent No. 12,117,396 discloses all of feature of claimed invention.
Regarding claim 5; Claim 10 lines 1-6 of U.S. Patent No. 12,117,396 discloses all of feature of claimed invention.
Regarding claim 6; Claim 1 lines 25-26 of U.S. Patent No. 12,117,396 discloses all of feature of claimed invention.
Regarding claim 8; Claim 12 lines 1-8 of U.S. Patent No. 12,117,396 discloses all of feature of claimed invention.
Regarding claim 9; Claim 13 lines 1-7 of U.S. Patent No. 12,117,396 discloses all of feature of claimed invention.
Regarding claim 10; Claim 8 lines 1-16 of U.S. Patent No. 12,117,396 discloses all of feature of claimed invention.
Regarding claim 11; Claim 9 lines 1-6 of U.S. Patent No. 12,117,396 discloses all of feature of claimed invention.
Regarding claim 12; Claim 14 lines 1-10 of U.S. Patent No. 12,117,396 discloses all of feature of claimed invention.
Regarding claim 13; Claim 15 lines 1-22 of U.S. Patent No. 12,117,396 discloses all of feature of claimed invention.
Regarding claim 14; Claim 4 lines 1-8 of U.S. Patent No. 12,117,396 discloses all of feature of claimed invention.
Regarding claim 15; Claim 5 lines 1-9 of U.S. Patent No. 12,117,396 discloses all of feature of claimed invention.
Regarding claim 16; Claim 6 lines 1-9 of U.S. Patent No. 12,117,396 discloses all of feature of claimed invention.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,117,396in view of Suzuki et al (JP 20131316045 A hereinafter “Suzuki”).
Regarding claim 7; Claims 1-6 of U.S. Patent No. 12,117,396 discloses all of feature of claimed invention except for the fluid transport module is also configured to charge the waste of the fluid system to the waste treatment system. However, Suzuki teaches that it is known in the art to provide the fluid transport module (16 @ figure 1-2) is also configured to charge the waste of the fluid system (13 @ figure 1) to the waste treatment system (14 @ figure 1). It would have been obvious to one having ordinary skill in the art before the effective filling date of claimed invention to combine claims 1-6 of U.S. Patent No. 12,117,396 with limitation above as taught by Suzuki for the purpose of decomposing an organic substance in a waste liquid by pressurizing and heating the waste liquid containing the organic substance.
Allowable Subject Matter
Claims 1-16 would be allowable if filed a Terminal Disclaimer and rewritten or amended to overcome the nonstatutory double patenting (NSDP) rejection, set forth in this Office action.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
1) Zhong et al (US Patent No. 11,181,478) discloses biosensor including a device base having a sensor array of light sensors and a guide array of light guides.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANG H NGUYEN whose telephone number is (571)272-2425. The examiner can normally be reached M-F.
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/SN/
March 23, 2026
/SANG H NGUYEN/ Primary Examiner, Art Unit 2877
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