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 .
Response to Arguments
a. In regards to the U.S.C 112 2nd rejection, applicant submits claims 1-16 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. This rejection is respectfully traversed due to amendments.
a. Applicant's arguments filed have been fully considered but they are not persuasive. Further explanation is shown in the action below.
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 drive mechanism configured relatively to change” “a rotation mechanism configured to rotate” “slide mechanism configured to translate” “drive mechanism is configured to guide the irradiation light” claims 1, 2, 4-9, 11, 12, 13,14, & 15.
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.
Claims 1-16 & 18 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 “a drive mechanism” 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. Examiner notes the drive mechanism is not supported by the original disclosure since the original disclosure recites an operating portion. A rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, should be made if new matter is added to the claims. Clarification is required.
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 1-16 & 18 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.
In regards to claims 1, 2, 15, & 16, the claimed subject matter “drive mechanism” is rendered indefinite. Examiner notes the specification does not provide the structure for the “drive mechanism” to perform the claimed functions. Applicant teaches an operating portion of the spectroscopic analysis device guides the irradiation light by switching between the transmission space that leads the irradiation light to the object to be measured at the observation window and the reference material (0010, lines 20-25). Based upon the specification there is no way to determine the metes and bounds of this limitation, since there are no limits imposed by structure, material or acts, and can therefore be performed by any means capable of performing the function, both known and unknown.
In regards to claims 4-7, 11, & 12, the claimed subject matter “rotation mechanism” is rendered indefinite. Examiner notes the specification does not provide the structure for the “rotation mechanism” to perform the claimed functions. Applicant teaches the rotation mechanism of the operating portion 20 may guide the irradiation light (0071, lines 6-7). Based upon the specification there is no way to determine the metes and bounds of this limitation, since there are no limits imposed by structure, material or acts, and can therefore be performed by any means capable of performing the function, both known and unknown.
In regards to claims 8, 9, 13, & 14, the claimed subject matter “slide mechanism” is rendered indefinite. Examiner notes the specification does not provide the structure for the “slide mechanism” to perform the claimed functions. Applicant teaches the change mechanism may include a second slide mechanism configured to translate the observation window (0018). Based upon the specification there is no way to determine the metes and bounds of this limitation, since there are no limits imposed by structure, material or acts, and can therefore be performed by any means capable of performing the function, both known and unknown. Clarification is required.
Allowable Subject Matter
Claim 17 is allowed. The following is a statement of reasons for the indication of allowable subject matter:
As to claim 1, the prior art of record, taken alone or in combination, fails to disclose or render obvious “switching between at least one transmission space that guides the irradiation light to the object to be measured at an observation window and at least one reference material arranged in at least one of the observation window and a tube covering the observation window”, in combination with the rest of the limitations of claim 1.
As to claim 17, the prior art of record, taken alone or in combination, fails to disclose or render obvious “switching between a transmission space that guides the irradiation light to the object to be measured at an observation window and a reference material arranged in at least one of the observation window and a tube covering the observation window”, in combination with the rest of the limitations of claim 17.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAURICE C SMITH whose telephone number is (571)272-2526. The examiner can normally be reached Monday-Friday 9am-5pm EST.
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/MAURICE C SMITH/Examiner, Art Unit 2877
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