DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
1- This office action is a response to an application filed on 2/24/2025, in which claims 1-34 are currently pending. The Application is a National Stage entry of PCT/EP2023/073080 , International Filing Date: 08/23/2023 and claims foreign priority to 102022121790.6, filed 08/29/2022.
Information Disclosure Statement
2- The submitted information disclosure statement(s) (IDS) is(are) in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is(are) being considered by the examiner.
Specification
3- The Abstract is objected to because of the following:
The abstract comprises more than 150 words. Correction is required. See MPEP § 608.01(b)
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
4- The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which application may become aware in the specification.
Drawings
5- The drawings were received on 2/24/2025. These drawings are acceptable.
Claim Interpretation - 35 USC § 112
6- 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:
Irradiation unit, Evaluation unit, Identification unit classification unit and Data Processing unit claims 1, 5, 15, 18, 22,
Optical Decoupling element in claim 2
means in claims 3, 8,
Transport means in claim 7,
Fixing means in claim 17,
Measuring unit in claim 18,
Measuring arrangements in claims 33-34.
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
7- 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.
8- Claims 8, 14, 17-18, 25, 27, 31-32 and 34 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.
As to claim 8, which reads “…wherein the trolley transport device (81) has means which are designed to adjust a tilt position of at least one egg…”, the underlined clauses appear to present antecedence issues.
As to claim 14, which reads “…comprising at least one ventilation opening (106) which is designed in the measuring attachment (102), in the first measuring arm (60) and/or in the second measuring arm (70), and is configured to ensure ventilation of the egg (50) during a measurement…”, the underlined clauses appear to present antecedence issues.
As to claim 17, which reads “…which are designed to prevent a change in the orientation of the egg…”, the underlined clauses appear to present antecedence issues.
As to claim 18, which reads “…based on the data from the measuring unit (20) and/or from the externally connected memory…”, the underlined clauses appear to present antecedence issues.
As to claim 25, which reads “… the measurements with the strongest and/or the weakest useful signal…”, the underlined clauses appear to present antecedence issues.
As to claim 27, which reads “… wherein the calibration measurement is carried out while the sensor is covered and/or on a reference object…”, the underlined clauses appear to present antecedence issues.
As to claims 31-32, which read “… wherein the confidence level of the sex determination is taken into account in order to decide whether to screen eggs based on a plurality of adjustable external parameters, such as the incubation cycle-specific death rate of the embryos, the desired output quantity…” and “… an observation period is determined based on the confidence level, and/or further measurements are carried out in order to increase the confidence level… ”, the underlined clauses appear to present antecedence issues.
As to claim 34, which reads “… in such a way that the interference between different measuring arrangements…”, the underlined clauses appear to present antecedence issues.
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 (MPEP 706.02(m)).
9- 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.
In addition, the functional recitation in the claims (e.g. "configured to" or "adapted to" or the like) that does not limit a claim limitation to a particular structure does not limit the scope of the claim. It has been held that the recitation that an element is "adapted to", "configured to", "designed to", or "operable to" perform a function is not a positive limitation but only requires the ability to so perform and may not constitute a limitation in a patentable sense. In re Hutchinson, 69 USPQ 139. (See MPEP 2111.04); see also In In re Giannelli, 739 F.3d 1375, 1378, 109 USPQ2d 1333, 1336 (Fed. Cir. 2014).
Also, it should be noted that it has been held that a recitation with respect to the manner in which a claimed device is intended to be employed does not differentiate the claimed device from a prior art apparatus satisfying the claimed structural limitations Ex-parte Masham 2 USPQ2d 1647 1987).
The claimed system in the instant application is capable of performing the claimed functionality, as is the prior art used in the present office action. The Examiner notes that where the patent office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. In re Swinehart and sfiligoj, 169 USPQ 226 (C.C.P.A. 1971).
10- Claims 1-21 and 23-34 are rejected under AIA 35 U.S.C. 102(a)(1) as being anticipated by Gabbai et al. (PGPUB No. 2020/0163314, cited by Applicants)
As to claims 1, 19, Gabbai teaches a measuring system, and its method of use (Abstract, Figs. 1-17) for non-invasive, preferably automated, sex detection of embryos in an egg (Egg or 304) in early embryonic development, in particular before the seventh day of incubation, in particular during incubation, in particular in an incubator with at least one egg tray (302/310/315) for accommodating a plurality of eggs (304) and at least one egg trolley (300) for holding at least one egg tray (the Examiner submits that the previous is a preamble and is construed as not a positively claimed part of the claimed system/method), having:
- at least one irradiation unit (108a/410/620) for irradiating [[
- at least one sensor unit (108b/420/630) for detecting electromagnetic radiation transmitted through the egg (¶ 130);
- an evaluation unit (Computer, 106/440/445/760) with at least one spectrometer (¶ 37, 56, 119) which is designed to receive the radiation transmitted through the egg and to generate a spectrum of the radiation transmitted through the egg (¶ 37, 56, 115, 119, 149); and
a data processing unit (Computer, 106/440/445/760) which is designed to receive spectra generated by the spectrometer and to store them as a reference spectrum or a measured spectrum (Figs. 1, 7, 9);
- an identification unit for generating identification data, by means of which the spectra generated on [[
- a classification unit (inherent to the computer and its results such as Fig. 14; ¶ 61, 75, 157);
wherein the data processing unit is designed to store spectra generated by the spectrometer and associated identification data, and wherein the classification unit is designed to determine the sex of the embryo based on at least one reference spectrum and at least one measured spectrum (Fig. 14, ¶ 86, 114; using reference spectra, normalization is used, i.e. comparison, and/or steps 214/312, to determine the sex of the eggs).
(claim 2) the system having an optical decoupling element (610) for optical decoupling of the irradiation unit and the sensor unit, said optical decoupling element being preferably designed to contact the egg during a measurement (¶ 152).
(claims 3, 8) having means for determining an angle between a reference axis of the egg and a reference axis of the measuring system; (Claim 8) wherein the trolley transport device has means which are designed to adjust a tilt position of at least one egg (¶ 93; vacuum gripper, and the gripped egg, needs to be aligned, i.e. angle needed to be determined with respect to the measurement system).
(claim 4) wherein the irradiation unit has a plurality of radiation sources (Fig. 7; sources 410) and is preferably designed as a ring light, in which the plurality of radiation sources is arranged in a ring (only optional).
(claim 5) wherein the irradiation unit and the sensor unit are arranged and configured in such a way that, during each measurement, they have the same orientation to one another relative to a reference point of the egg (Figs. 7, 9; the irradiation and sensor units are positioned in a fixed configuration with respect to the measured egg(s)), for example, to the center of gravity of the shell of the egg (the center of gravity is claimed as a mere optional example)
(claims 6-7) having a trolley transport device for transporting an egg trolley (¶ 154) with at least one egg tray (310) to at least one irradiation unit (410), said trolley transport device being preferably arranged within the incubator; and (claim 7) having transport means for transporting the irradiation unit and the sensor unit to [[an]] the egg, preferably within the incubator, more preferably between different incubators (¶ 103), and/or a trolley positioning device which is suitable for uniquely determining a position of the trolley within the incubator.
(claims 9-12) having a measuring arm (the two arms in Figs. 7, 9) which accommodates the irradiation unit and the sensor unit in such a way that [[an]] the egg can be positioned for measurement at the irradiation unit and the sensor unit (Figs. 7, 9); (claim 10) having a first measuring arm which accommodates the irradiation unit and a second measuring arm which accommodates the sensor unit, wherein the first measuring arm and the second measuring arm are arranged and designed in such a way that [[an]] the egg can be positioned for measurement between the irradiation unit and the sensor unit; (claim 11) having a measuring column (in Fig. 7) on which the first measuring arm and the second measuring arm are mounted to be movable, wherein the first measuring arm has a first movement mechanism for adjusting a vertical position of the first measuring arm, and wherein the second measuring arm has a second movement mechanism for adjusting a vertical position of the second measuring arm; (claim 12) wherein the first movement mechanism has a first horizontal linear guide and a second horizontal linear guide for adjusting a horizontal position of the first measuring arm, and wherein the second movement mechanism has a third horizontal linear guide and a fourth horizontal linear guide for adjusting a horizontal position of the second measuring arm (see rejection of claim 9, and ¶ 130).
(claim 13) having a measuring attachment which accommodates both the irradiation unit and also the sensor unit, so that both the irradiation unit and also the sensor unit can be arranged either above or below the egg tray, wherein the measuring attachment is configured by a measuring attachment adapter to be placed on the egg tray during the measurement (see rejection of claim 9, and ¶ 93, 101, 130, 152; attachment and alignment components are disclosed to be implemented in system of Fig. 7 for ex).
(claim 14) comprising at least one ventilation opening which is designed in the measuring attachment, in the first measuring arm and/or in the second measuring arm, and is configured to ensure ventilation of the egg during a measurement (¶ 132, 145).
(claims 15, 30) wherein the evaluation unit is designed to output a sex label and an associated confidence level for each egg; (claim 30) wherein a confidence level is assigned to the determination of the sex of the egg (¶ 119, 122).
(claim 16) having an externally connected data memory, in particular a cloud storage, which is configured to store external parameters, such as mortality rate of the embryos or desired output quantity, measurement and reference spectra, and/or results of the evaluation of the measurement system, and to output to the classification unit (Fig. 7, ¶ 88, 91, 117, 119, 122).
(claim 17) comprising fixing means which are designed to prevent a change in the orientation of the egg (¶ 82-83, 97-102, 130, 136; vacuum grippers are used).
(claim 18) wherein the classification unit is designed to carry out a classification of [[an]] the egg according to sex and/or health condition, based on the data from the measuring unit and/or from the externally connected memory, wherein the classification unit is preferably spatially separated from the rest of the evaluation unit, and in particular is preferably formed by a software component on an external server, preferably on a cloud server (¶ 91, 119-122, 130, 154).
(claims 20-21) wherein the reference spectrum and/or the measured spectrum are generated from a plurality of individual measurements, preferably from 10 measurements or more, more preferably from 30 measurements or more; (claim 21) wherein an exposure time of less than 60 ps, preferably less than 40 ps, more preferably less than 20 ps is used for generating a measured or reference spectrum (¶ 155).
(claim 23) wherein generating the at least one reference spectrum and/or generating the at least one measured spectrum comprises a plurality of measurements, in which the egg is irradiated from different directions (¶ 154-155; multiple em transmitters at different positions necessarily generate measurements from different directions/positions), preferably from at least 4 different directions, more preferably from at least 6 different directions, more preferably from 8 or more different directions (all optional).
(claims 24-25, 27) wherein, during the plurality of measurements while irradiating the egg from different directions, the respective strength of a useful signal is determined in order to find the measurement with a strongest and/or highest useful signal; (claim 25) wherein the measurements with the strongest and/or the weakest useful signal are calculated together in order to obtain an optimized reference spectrum and/or measured spectrum; (claim 27) comprising a calibration measurement for calibrating the sensor unit, wherein the calibration measurement is carried out while the sensor is covered and/or on a reference object, for example a Teflon reference block, and wherein the calibration measurement is preferably carried out automatically (optional) (¶ 155 for ex; signal calibration is presented).
(claim 26) wherein a normalization of a measured spectrum is carried out based on a stored reference spectrum, wherein the reference spectrum is preferably generated before the incubation, more preferably outside of the incubator, more preferably before reaching the incubation temperature (Fig. 14, ¶ 86, 114; using reference spectra, normalization is used, i.e. comparison, and/or steps 214/312, to determine the sex of the eggs).
(claim 28) wherein, to determine the sex of the embryo, a spectral range is used for the reference and measured spectra in a wavelength range between 520 nm and 580 nm, preferably between 540 nm and 575 nm, more preferably between 520 nm and 680 nm, more preferably between 520 nm and 870 nm (¶ 103 for ex; where the disclosed infrared wavelength range overlaps with the claimed range).
(claim 29) having the inclusion of additional data, in particular from a decentralized data cloud, wherein the evaluation of the measured spectra is carried out taking the additional data into account (¶ 85, 87; training data or data about volatile compounds is used).
(claims 31-32) wherein the confidence level of the sex determination is taken into account in order to decide whether to screen eggs based on a plurality of adjustable external parameters, such as the incubation cycle-specific death rate of the embryos, the desired output quantity, or sex distribution; (claim 32) wherein an observation period is determined based on the confidence level, and/or further measurements are carried out in order to increase the confidence level (Fig. 13-19; ¶ 85, 119, 122 for ex.; using training data and repeated measurements and training with the intended use to increase confidence levels).
(claim 33) comprising the simultaneous measurement of a plurality of eggs, in particular the with simultaneous generation of a plurality of reference and/or measured spectra on a plurality of eggs, preferably by means of a plurality of measuring arrangements (Fig. 7, 13-19; ¶ 88, 91, 117, 85, 119, 122 for ex.; using training data and repeated measurements and training with the intended use to increase confidence levels).
(claim 34) wherein the simultaneous measurement of a plurality of eggs is carried out in such a way that the interference between different measuring arrangements is minimized during the generation of the plurality of reference and/or measured spectra (¶86, 10, 113 for ex.; noise between optical and digital spectral measurement is minimized).
Claim Rejections - 35 USC § 103
11- 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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
10- Claim 22 is rejected under AIA 35 U.S.C. 103 as being unpatentable over Gabbai.
As to claim 22, Gabbai teaches the method of claim 19.
Gabbai does not teach expressly wherein after a measurement is carried out, an angle of the egg to the vertical is changed and a further measurement is carried out using the changed angle of the egg after the egg has reached a state of equilibrium, wherein the irradiation unit and the sensor unit maintain their position relative to the egg.
However, Gabbai teaches, ¶ 93, wherein vacuum gripper needs to be aligned, i.e. angle needed to be determined with respect to the measurement system which would suggest to a PHOSITA to measure the angles of the egg with respect to the gripper and to the optical system in order to achieve the alignments (See MPEP 2143 Sect. I. B-D).
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the apparatus/method of Gabbai in view of basic optical geometry alignment requirements so that wherein after a measurement is carried out, an angle of the egg to the vertical is changed and a further measurement is carried out using the changed angle of the egg after the egg has reached a state of equilibrium, wherein the irradiation unit and the sensor unit maintain their position relative to the egg, with the advantage of effectively optimizing the optical measurement of the eggs.
Conclusion
The examiner has pointed out particular references contained in the prior art of record in the body of this action for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. Applicant should consider the entire prior art as applicable as to the limitations of the claims. It is respectfully requested from the applicant, in preparing the response, to consider fully the entire references as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMED K AMARA whose telephone number is (571)272-7847. The examiner can normally be reached on Monday-Friday: 9:00-17:00
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tarifur Chowdhury can be reached on (571-272-2287. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Mohamed K AMARA/
Primary Examiner, Art Unit 2877
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