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 .
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 9-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-12 of U.S. Patent No. 12,208,422. Although the claims at issue are not identical, they are not patentably distinct from each other as the instant claims are merely broader versions of the patented claims and Applicant has ample rationales to seek broader claim coverage.
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 1-15 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 pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation "they". There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the body" (ln. 3). There is improper antecedent basis for this limitation in the claim. This limitation should read “the rotary body” to be consistent.
Claim 11 recites the limitation "the rotating body". There is insufficient antecedent basis for this limitation in the claim.
Examiner requests clarification and recommends amending the claims with language that clearly sets forth the claimed invention. In the interim, and in the interests of compact prosecution, the claims have been interpreted as set forth below.
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 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; or
(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.
Claims 9-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cho et al. (“Cho”)(US 2009/0053108 A1).
Cho (fig. 1) teaches a method for modifying particles comprising:
(re: base claim 9) carrying particles to be sorted in a supply conduit (near 20, 25; para. 35, 36 teaching particles such as blood cells);
rotating a rotary body around an axis of the rotary body (100; para. 36 teaching rotation of disk 100 as a part of “centrifugal separation” process);
the rotary body defining at least one duct (near 31, 32, 33, 34) extending from an inner end adjacent the axis outwardly to an outer end spaced at a greater radial distance outwardly from the axis than the inner end;
forming the particles in said at least one duct from the supply conduit into a stream of the particles in a row (para. 36);
while the particles are carried in the stream, applying an action by an operating head to at least some of the particles to modify the particles so that after the action the particle is different than before (para. 37-41 teaching that reagents are applied to blood particles in operating heads of ducts near 51-54);
(re: claim 10) wherein the operating head is carried on the rotary body and operates on the particles in the stream while on the rotary body (Id. as shown in fig. 1);
(re: claim 11) wherein the operating head and said at least one duct lies in a radial plane of the rotary body (Id. as shown in fig. 1);
(re: claim 12) wherein the operating head applies an additional material to at least some of the particles (Id.).
Claim Rejections - 35 USC § 103
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 of this title, 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.
Claims 1, 2 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Baranowski (US 2004/0134758) in view of Bamber et al. (“Bamber”)(US 2013/0292307) and legal precedent.
Baranowski (fig. 1-13) teaches a method for separating particles into a plurality of paths in response to a detected condition of the particles comprising:
(re: certain elements of base claim 1) carrying particles to be sorted in a supply conduit (fig. 1, 12 near 106; para. 32, 52 teaching supply conveyor near 106);
forming the particles from the supply conduit into a stream of the particles in a row in at least one duct (fig. 3, 6 showing variety of arc-shaped channels near 102’, 303 or 601, 602 for dispensing particles; para. 46-48, 76, 82-83 teaching that “arc-shaped channel may receive a plurality of items supplied by a feeder bowl 101, sort the items into single file as the items travel along each channel” and that rotational speed of dispensing ducts may be adjusted to ensure items are properly singulated); and
said at least one duct being shaped and arranged so that the particles are accelerated as said particles pass from an inlet end of said at least one duct to a discharge end of said at least one duct so as to cause the particles separated into said at least one duct to be aligned one after another in a singulated row of the particles in said at least one duct as said particles move toward the discharge end (Id. wherein centrifugal rotation and arc-shaped duct is regarded as accelerating particles; see also para. 37, 38 teaching textured duct);
locating a first particle separating device at the stream operable to direct each particle into a selected one of first and second paths of said plurality of paths (fig. 1, 12 showing separating device 109 including sensing unit 108 for measuring an item characteristic; para. 63-70 teaching that sensing unit allows separation into paths 112, 113);
wherein the first particle separating device comprises a first separating head having a front edge lying generally along the stream so that particles in the stream move toward the front edge, at least first and second side surfaces diverging away from the front edge and an actuator for moving the front edge (fig. 11a-h; para. 63-70 teaching multiple diverters near 111, 115’, 116’ that separate particles based on sensed condition);
detecting the condition of the particles in the stream to determine a required separation of the particles by said first particle separating device between said first and second paths and operating the actuator to direct the particles (Id. teaching that sensing unit may include a variety of sensors, such as optic, infrared, scale, photoelectric, laser, to measure a characteristic, such as weight, density and/o or volume of each item, and dispense said item to said first or second path based on said sensed condition);
(re: claim 2) wherein said at least one duct is carried on a rotating body and including rotating the rotary body at an angular velocity which generates a centrifugal force on the particles which overcomes a friction force on the particles caused by contact of the particles with the duct thus causing the particles to be accelerated as the particles pass from the inner end to the outer end and causing the particles to be separated each from the next by a space by said acceleration caused by the centrifugal force in said at least one duct and causing the particles to be aligned one after another in a row in said at least one duct as the particles move toward the outer end (fig. 3, 6 showing variety of arc-shaped channels/paths near 102’, 303 or 601, 602 for dispensing particles from an inner end to an outer end; para. 33-42, 46-48, 76 teaching rotary vibratory feeder bowl may include a variety of shapes and configurations “depending upon the intended application and physical characteristic, e.g., a weight, a volume, a density, or the like, of items to be dispensed”, wherein said paths may include sloped portions as well as specific surface features to allow dispensing of items having different friction co-efficients and the length, shape and rotational speed of said paths are chosen based on the item to be dispensed singularly—wherein Examiner regards said duct as being rotated at a sufficient angular velocity to overcome a friction force as Baranowski expressly teaches configuring the centrifugal paths and choosing a rotational speed to singulate items; see also para. 80-82);
(re: claim 5) wherein each separating head includes a front edge and inclined guide surfaces on the first and second sides of the front edge and wherein the front edge of the separating device is maintained at a neutral position facing the stream in which the particles in the stream impact the front edge and in response to a detected condition of an approaching particle moving the front edge from the neutral position to either a first position on a first side of the stream arranged to direct the particle to a second side of the stream or to a second position on the second side of the stream arranged to direct the particle to the first side of the stream (cf. fig. 11a-11e and inclined surfaces on diverter gates);
(re: claim 6) wherein a surface of said at least one duct includes rifling for engaging and rotating the particles in said at least one duct (fig. 7a-c embodiment; para. 38).
Baranowski as set forth above teaches all that is claimed except for expressly teaching
(re: certain elements of base claim 1) providing in at least one of the first and second paths a second particle separating device in the path operable to direct each particle into a selected one of third and fourth paths of said plurality of paths;
wherein the second particle separating device comprises a second separating head having a front edge lying generally along the stream so that particles in the stream move toward the front edge, at least first and second side surfaces diverging away from the front edge and an actuator for moving the front edge;
detecting the condition of the particles in said one of the paths to determine a required separation of the particles by said second particle separating device between said third and fourth paths and operating the actuator to direct the particles.
Further, under an alternate interpretation, the prior art may be regarded as not expressly teaching (re: certain elements of claim 2) angular velocity which generates a centrifugal force causing the particles to be accelerated as the particles pass from the inner end to the outer end and causing the particles to be separated each from the next by a space.
Here, it is noted that Baranowski as cited above already teaches optimizing several operating variables, including rotational speed, based on item characteristics, including a friction co-efficient, to ensure proper feeding and singulation of the items and also already teaches the features of the claimed separating device/method—i.e., providing separating head, detecting condition of the particles and then separating the particles between a third and fourth path (supra).
Bamber further teaches that it is well-known in the sorting arts to configure a system with multiple sorting stages in series and to detect a condition at each stage to determine a proper sorting path (fig. 6 showing sensors near 960, 1030 1110, 1180 and diverters 980, 1050, 1130, 1195; para. 46, 60-63 wherein different sorting stages allow different sensor configurations thus allowing the sorting of different types of items).
Indeed, the claimed features relating to controlling variables related to centrifugal force, such as angular velocity and acceleration, during feeding and the mere duplication of the separating device can be regarded as common design parameters/variables controlled by the design incentives and/or economic considerations involved in this type of subject matter. This is especially applicable in the separating arts as the type of material to be separated controls variations in the specific device features and/or steps as noted above. Moreover, legal precedent teaches that variations in these type of common design parameters/variables are obvious and that said parameters can be recognized as result-effective variables whose optimization would be known to one with ordinary skill in the art. See MPEP 2144.04.V.D. and VI (teaching that the mere rearrangement or duplication of known elements, or making known elements adjustable, is not a patentable advance); 2144.05 I.II (ample motivation to optimize or modify result-effective variables based on “design need(s)” or “market demand”).
It would thus be obvious to one with ordinary skill in the art to modify the base reference with these prior art teachings—with a reasonable expectation of success—to arrive at the claimed invention. The rationale for this obviousness determination can be found in legal precedent as described above. Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the invention of Baranowski for the reasons set forth above.
Allowable Subject Matter
Claims 3, 4, 7, 8 and 13-15 would be allowable if rewritten 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 and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any references not explicitly discussed above but made of record are regarded as helpful in establishing the state of the prior art and are thus considered relevant to the prosecution of the instant application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH C RODRIGUEZ whose telephone number is 571-272-3692 (M-F, 9 am – 6 pm, PST). The Supervisory Examiner is MICHAEL MCCULLOUGH, 571-272-7805.
Alternatively, to contact the examiner, send an E-mail communication to Joseph.Rodriguez@uspto.gov. Such E-mail communication should be in accordance with provisions of the MPEP (see e.g., 502.03 & 713.04; see also Patent Internet Usage Policy Article 5). E-mail communication must begin with a statement authorizing the E-mail communication and acknowledging that such communication is not secure and may be made of record. Please note that any communications with regards to the merits of an application will be made of record. A suggested format for such authorization is as follows: "Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with me concerning any subject matter of this application by electronic mail. I understand that a copy of these communications will be made of record in the application file”.
Information regarding the status of an application may also be obtained from the Patent Center: https://patentcenter.uspto.gov/
/JOSEPH C RODRIGUEZ/Primary Examiner, Art Unit 3655
Jcr
---
May 1, 2026
Prosecution Insights