DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Amendment
The amendments and remarks, filed on 11/12/2025, has been entered. The previous prior art rejection has been withdrawn and a new prior art rejection is applied to address the claim amendments.
Claim Status
Claims 1-17 are pending and being examined.
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 1-17 are 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 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.
Claim 1 recites the limitation “an orientation feature” in line 4. The claim describes “the orientation feature” to correspond with the orientation of the laboratory instrument. However, the instant specification fails to support the amended limitation. Specifically, there are neither paragraphs nor figures in the instant specification that teach or suggest the “orientation feature”. Claims 2-8, 12, 14, and 17 are rejected by virtue of dependency on claim 1.
Claim 9 recites the limitation “an orientation feature” in line 5. The claim describes “the orientation feature” to correspond with the orientation of the laboratory instrument. However, the instant specification fails to support the amended limitation. Specifically, there are neither paragraphs nor figures in the instant specification that teach or suggest the “orientation feature”. Claims 10-11, 13, are 15-16 are rejected by virtue of dependency on claim 9.
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 1-17 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 recites the limitation “the first position” in line 15, “the second position” in line 18-19, and "the first position and the second position" in line 24 and line 26. There is insufficient antecedent basis for this limitation in the claim, thus the limitation is unclear. The examiner suggests Applicant amend the claim to read “the first predetermined position” and “the second predetermined position” as supported by the rotating element functional language. Claims 2-8, 12, 14, and 17 are rejected by virtue of dependency on claim 1.
Claim 1 recites the limitations “the first position” in line 18, “the second position” in line 21, and the first position and the second position" in line 27 and 29. There is insufficient antecedent basis for this limitation in the claim, thus the limitation is unclear. The examiner suggests Applicant amend the claim to re ad “the first predetermined position” and “the second predetermined position” as supported by the rotating element functional language. Claims 10-11, 13, are 15-16 are rejected by virtue of dependency on claim 9.
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.
Claims 1-3, 5-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Carney et al (US 6846455 B1; hereinafter “Carney”; already of record).
Regarding claim 1, Carney teaches a system (Carney; Abstract; automatic sample device) comprising:
a frame (Carney; col. 9, line 42; Fig. 2; rotating table 220);
a surface on the frame, the surface for holding a laboratory instrument1 (Carney; col. 9, lines 53-54; Rotating table 220 is designed to receive a sample tray 1300 adapted to hold pans; the examiner interprets the “laboratory instrument” as the pans and the surface is interpreted as the sample tray 1300);
an orientation feature connected to the surface (Carney; Fig. 33; col 21, lines 20-21; Pan receiving portion 1360 is used to hold a pan; the examiner interprets the “orientation feature” to be the pan receiving portion); the laboratory instrument having an exterior user interface configured so as to define a predetermined singular primary facing bias that determines a predetermined singular front facing in a predetermined singular primary facing direction (Carney; col. 9, lines 19-21; user loads the samples into sample pans, which are inserted into a sample tray; the examiner notes that the loading of the samples would position pans in the “predetermined singular front facing direction”. For example, if a user were to mark the pan, the pan would be “front facing” when positioned in the sample tray), the surface being disposed as to be selectably configurable between a conformal and a non-conformal configuration wherein seating of the laboratory instrument according to the conformal and the non-conformal configuration on the surface relative to the orientation feature sets the predetermined singular front facing in the predetermined singular primary facing direction relative to the orientation feature of the surface according to the conformal and the non-conformal configuration1 (Carney; col 21, lines 4-6; sample tray 1300 can be rotated so that each well can be accessed by arm 125 along the common arc), wherein the conformal configuration sets automated system access to the laboratory instrument and the non-conformal configuration sets preclusion of automated system access to the laboratory instrument (Carney; col 15, line 15-18; Sample arm 125 may be moved in and out (and rotated or raised or lowered, as previously discussed…col 21, lines 4-6; sample tray 1300 can be rotated so that each well can be accessed by arm 125 along the common arc) to retrieve sample pans, insert sample pans, dispose of sample pans; examiner notes that the “marked pan” would be capable of being rotated by the surface where it would be accessible or inaccessible by the sample arm based on the surfaces’ configuration);
a rotating element coupled to the surface to allow the surface to rotate, on the frame (Carney; col. 9, line 49; Rotating table 220 is coupled to table motor 22), between a first predetermined position and a second predetermined position, wherein the first position determined by the conformal configuration and is arranged with respect to the orientation feature connected to the surface such that the predetermined singular primary facing direction of the laboratory instrument is oriented towards an automated system and the second position is determined by the non-conformal configuration and is arranged with respect to the orientation feature connected to the surface such that the predetermined singular primary facing direction of the instrument is oriented away from the automated system so as to bias against automated system access to the instrument (Carney; col 15, line 15-18; Sample arm 125 may be moved in and out (and rotated or raised or lowered, as previously discussed…col 21, lines 4-6; sample tray 1300 can be rotated so that each well can be accessed by arm 125 along the common arc) to retrieve sample pans, insert sample pans, dispose of sample pans; examiner notes that the “marked pan” would be capable of being rotated by the surface where it would be accessible or inaccessible by the sample arm based on the surfaces’ configuration. Thus, the “first predetermined position is interpreted as the position when the “marked pan” is accessible by the sample arm, and the “second predetermined position” is interpreted as the position when the “marked pan” is inaccessible/outside of the common arc);
a sensor configured to detect the orientation feature and effect determination of the surface being in one of the first position and the second position (Carney; col. 5, lines 5-8; electrical sensor and the optical sensor are used to calibrate the positions of one or more of: the sample platform, the reference platform, and a well);
a member for locking the surface (Carney; col. 23, lines 15-17; Fig. 43; Pins 1662 are used to provide a statically determinant and stable mount that allows rotating table 220 to support sample tray 1300); and
a device for sending a signal indicating the first position and the second position of the surface from the sensor to an automated system, wherein the signal is configured to effect preclusion of a robotic arm of the automated system from accessing the instrument with the surface in the second position3 (Carney; col. 11, lines 1-6; control of control module 235, table motor 225 rotates rotating table 220. Periodically, the home position of rotating table 220 is detected using rotating table home flag 286. Under control of control module 235, the sample arm 125 can be raised, lowered, and rotated by arm drive assembly 210; The examiner notes that the signal is capable of indicating that the “marked pan” is positioned away from the robotic arm because the device does detect the home flag, thus the “marked pan” is positioned outside of the common arc).
1 The limitations are directed to the function and/or the manner of operating the surface, all the structural limitations of the claim has been disclosed by Carney and the surface of Carney is capable of “holding an instrument…” and “being disposed as to be selectably configurable between a conformal and a non-conformal configuration wherein seating of the laboratory instrument according to the conformal and the non-conformal configuration on the surface relative to the orientation feature sets the predetermined singular front facing in the predetermined singular primary facing direction relative to the orientation feature of the surface according to the conformal and the non-conformal configuration”. As such, it is deemed that the claimed surface is not differentiated from the surface of Carney (see MPEP §2114). Specifically, the limitation is directed to “conformal and a non-conformal configuration” as the orientation in which the laboratory instrument is faces is based on the surfaces’ position during rotation. The examiner notes the sample tray 1300, interpreted as the surface, is capable of rotating the pan, interpreted as the laboratory instrument, from a front facing direction which is accessible by the sample arm to a non-conformal configuration where the pan is inaccessible.
2 The limitation “the laboratory instrument having an exterior user interface configured so as to define a predetermined singular primary facing bias that determines a predetermined singular front facing in a predetermined singular primary facing direction…” and “the laboratory instrument on the surface relative to the orientation feature sets the predetermined singular front facing in the predetermined singular primary facing direction” is with respect to an article worked upon (instrument) and not a positively recited element of the surface. Inclusion of the material or article worked upon (instrument) by a structure (surface) being claimed does not impart patentability to the claims. MPEP § 2115.
3 The examiner notes that the signal is not a positively recited and intended use of the device. Thus, the limitation regarding “the signal is configured to effect preclusion of a robotic arm of the automated system from accessing the instrument with the surface in the second position” is not required. As such, it is deemed that the claimed device is not differentiated from the device of Carney (see MPEP §2114).
Regarding claim 2, Carney teaches the system of claim 1, wherein the rotating element comprises at least one element selected from a group consisting of: a rotary turntable, a set of linear rails, a set of curved rails, a hinge, a set of eccentric rotary bearings, and a set of non-parallel linear rails (Carney; col. 9, line 49; Rotating table 220 is coupled to table motor 225).
Regarding claim 3, Carney teaches the system of claim 1, wherein the sensor comprises at least one sensor selected from a group consisting of: a proximity sensor, an infrared beam sensor, a laser beam sensor, a rotary encoder, a linear encoder, and a linear differential transformer (Carney; col. 10, lines 48-49; rotating table sensor 289 is an optical sensor that transmits a light beam).
Regarding claim 5, Carney teaches the system of claim 1, further comprising an actuator for turning the surface (Carney; col. 9, line 49; Rotating table 220 is coupled to table motor 225).
Regarding claim 6, Carney teaches the system of claim 5, wherein the actuator includes at least one actuator selected from a group consisting of: an electric actuator or a pneumatic actuator (Carney; col 10, lines 30-33; Table motor 225 can be any motor capable of rotating the rotating table 220. Preferably, table assembly drive motor 225 is a stepping motor). Examiner notes that a stepper motor is a brushless DC electric motor as evidenced by the Moons Stepper Motor article, pp 2 (attached and listed in the Evidentiary Reference section below).
Regarding claim 7, Carney teaches the system of claim 5, wherein the actuator holds the surface in the holding position (Carney; col. 11, lines 2-4; table motor 225 rotates rotating table 220. Periodically, the home position of rotating table 220 is detected using rotating table home flag 286).
Regarding claim 8, Carney teaches the system of claim 1, wherein the member for locking the surface is adapted to alternately lock the surface in a first position and a second position, wherein the instrument faces the automated system in the first position, and the instrument faces away from the automated system in the second position (Carney; col. 10, lines 46-55; rotating table home flag 288 has a light blocking member that is detected by rotating table sensor 289. Preferably, rotating table sensor 289 is an optical sensor that transmits a light beam between two shoulders. When rotating table 220 rotates to a position where rotating table home flag 288 blocks the light beam, table sensor 289 detects the break in the light beam. This break in the beam coincides with the home position. According to the preferred embodiment, this home position corresponds to a specific well in a sample tray attached to rotating table 220; examiner interprets the first position as the position in which the rotating table home flag blocks the light beam which positions the well, and the second position as the position in which the light beam is not blocked).
Regarding claim 9, Carney teaches a method comprising:
providing a system (Carney; Abstract; automatic sample device) including:
a frame (Carney; col. 9, line 42; Fig. 2; rotating table 220);
a surface on the frame, the surface for holding a laboratory instrument (Carney; col. 9, lines 53-54; Rotating table 220 is designed to receive a sample tray 1300 adapted to hold pans; the examiner interprets the “laboratory instrument” as the pans and the surface is interpreted as the sample tray 1300),
an orientation feature connected to the surface (Carney; Fig. 33; col 21, lines 20-21; Pan receiving portion 1360 is used to hold a pan; the examiner interprets the “orientation feature” to be the pan receiving portion); the laboratory instrument having an exterior user interface configured so as to define a predetermined singular primary facing bias that determines a predetermined singular front facing in a predetermined singular primary facing direction (Carney; col. 9, lines 19-21; user loads the samples into sample pans, which are inserted into a sample tray; the examiner notes that the loading of the samples would position pans in the “predetermined singular front facing direction”. For example, if a user were to mark the pan, the pan would be “front facing” when positioned in the sample tray), the surface being disposed as to be selectably configurable between a conformal and a non-conformal configuration wherein seating of the laboratory instrument according to the conformal and the non-conformal configuration on the surface relative to the orientation feature sets the predetermined singular front facing in the predetermined singular primary facing direction relative to the orientation feature of the surface according to the conformal and the non-conformal configuration (Carney; col 21, lines 4-6; sample tray 1300 can be rotated so that each well can be accessed by arm 125 along the common arc), wherein the conformal configuration sets automated system access to the laboratory instrument and the non-conformal configuration sets preclusion of automated system access to the laboratory instrument (Carney; col 15, line 15-18; Sample arm 125 may be moved in and out (and rotated or raised or lowered, as previously discussed…col 21, lines 4-6; sample tray 1300 can be rotated so that each well can be accessed by arm 125 along the common arc) to retrieve sample pans, insert sample pans, dispose of sample pans; examiner notes that the “marked pan” would be capable of being rotated by the surface where it would be accessible or inaccessible by the sample arm based on the surfaces’ configuration);
a rotating element coupled to the surface to allow the surface to rotate, on the frame (Carney; col. 9, line 49; Rotating table 220 is coupled to table motor 22), between a first predetermined position and a second predetermined position, wherein the first position determined by the conformal configuration and is arranged with respect to the orientation feature connected to the surface such that the predetermined singular primary facing direction of the laboratory instrument is oriented towards an automated system and the second position is determined by the non-conformal configuration and is arranged with respect to the orientation feature connected to the surface such that the predetermined singular primary facing direction of the instrument is oriented away from the automated system so as to bias against automated system access to the instrument (Carney; col 15, line 15-18; Sample arm 125 may be moved in and out (and rotated or raised or lowered, as previously discussed…col 21, lines 4-6; sample tray 1300 can be rotated so that each well can be accessed by arm 125 along the common arc) to retrieve sample pans, insert sample pans, dispose of sample pans; examiner notes that the “marked pan” would be capable of being rotated by the surface where it would be accessible or inaccessible by the sample arm based on the surfaces’ configuration. Thus, the “first predetermined position is interpreted as the position when the “marked pan” is accessible by the sample arm, and the “second predetermined position” is interpreted as the position when the “marked pan” is inaccessible/outside of the common arc);
a sensor configured to detect the orientation feature and effect determination of the surface being in one of the first position and the second position (Carney; col. 5, lines 5-8; electrical sensor and the optical sensor are used to calibrate the positions of one or more of: the sample platform, the reference platform, and a well),
a member for locking the surface (Carney; col. 23, lines 15-17; Fig. 43; Pins 1662 are used to provide a statically determinant and stable mount that allows rotating table 220 to support sample tray 1300),
a device for sending a signal indicating the first position and the second position of the surface from the sensor to an automated system, where the automated system includes a robotic arm for accessing the instrument (Carney; col. 11, lines 1-6; control of control module 235, table motor 225 rotates rotating table 220. Periodically, the home position of rotating table 220 is detected using rotating table home flag 286. Under control of control module 235, the sample arm 125 can be raised, lowered, and rotated by arm drive assembly 210; The examiner notes that the signal indicates that the “marked pan” is positioned away from the robotic arm because the device does detect the home flag, thus the “marked pan” is positioned outside of the common arc),
placing the system in conjunction with the automated system, the automated system including the robotic arm (Carney; col. 9, lines 8-9; Fig. 1; access area 140 is located so that arm 125 can access wells in a sample tray held by access area 140); and
sending the signal from the sensor to the automated system, where the signal effects preclusion of the robotic arm from accessing the instrument with the surface in the second position (Carney; col. 11, lines 1-6; control of control module 235, table motor 225 rotates rotating table 220. Periodically, the home position of rotating table 220 is detected using rotating table home flag 286. Under control of control module 235, the sample arm 125 can be raised, lowered, and rotated by arm drive assembly 210; examiner interprets the first position as the position in which the rotating table home flag blocks the light beam which positions the well, and the second position as the position in which the light beam is not blocked, thus when the sample tray is not in the home position the robotic arm arc would not be in position to be accessed).
Regarding claim 10, Carney teaches the method of claim 9, allowing the robotic arm access to an instrument on the system in response to the sensor detecting that the system is facing the automated system (Carney; col. 11, lines 4-9; control module 235 monitors and controls the various components, including controlling the displacement imparted by the motors. Under control of control module 235, table motor 225 rotates rotating table 220).
Regarding claim 11, Carney teaches the method of claim 9, prohibiting the robotic arm access to an instrument on the system in response to the sensor detecting that the system is not facing the automated system (Carney; col. 11, lines 6-7; Sample arm 125 can be moved to touch or be near rotating table 220…col. 11, lines 31-36; arm linear motor 405 may control the vertical position of sample arm 125 by moving the moving portion 480 up and down. Arm linear motor 405 is preferably a stepper motor that provides precise vertical displacement based on steps or pulses sent to the motor from control module 235; examiner notes the arm moves based on the position of the rotating table 220).
Regarding claim 12, Carney teaches the system of claim 1, wherein the automated system is mounted separately from the frame (Carney; Fig. 2; examiner notes arm 125 is independent from the rotating table 220).
Regarding claim 13, Carney teaches the method of claim 9, wherein the automated system is mounted separately from the frame (Carney; Fig. 2; examiner notes arm 125 is independent from the rotating table 220).
Claim Rejections - 35 USC § 103
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 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, 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
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.
Claims 4, 16, 17 are rejected under 35 U.S.C. 103 as being unpatentable over Carney in view of Ishikawa et al (US 5004207 A; hereinafter “Ishikawa”; already of record).
Regarding claim 4, Carney teaches the system of claim 1, with the member.
Carney does not teach the system further comprising a shock absorber coupled to the member that locks the surface.
However, Ishikawa teaches a device comprising a shock absorber (Ishikawa; col. 3, line 49; shock absorbing members, such as vibration- isolating mounts 14A, 14B, 14C, and 14D) coupled to a member that locks a surface (Ishikawa; col. 1, lines 21-22; frame 75 is retained by securing a cylindrical shock mount element 72). It would have been obvious to one of ordinary skill in the art by the effective filing date to have modified the system of Carney to comprise the shock absorber coupled to the member as taught by Ishikawa, because Ishikawa the shock absorbing members protect the base from external vibration and impact (Ishikawa; col. 3, lines 50-51).
Regarding claim 16, Carney teaches the method of claim 9, with the member.
Carney does not teach the system further comprising locking the surface with a shock absorber coupled to the member.
However, Ishikawa teaches a device comprising locking a surface with a shock absorber (Ishikawa; col. 3, line 49; shock absorbing members, such as vibration- isolating mounts 14A, 14B, 14C, and 14D) coupled to a member (Ishikawa; col. 1, lines 21-22; frame 75 is retained by securing a cylindrical shock mount element 72). It would have been obvious to one of ordinary skill in the art by the effective filing date to have modified the system of Carney to comprise the shock absorber coupled to the member as taught by Ishikawa, because Ishikawa the shock absorbing members protect the base from external vibration and impact (Ishikawa; col. 3, lines 50-51).
Regarding claim 17, Carney teaches the system of claim 4 (the system of Carney is modified to comprise the shock absorber as taught by Ishikawa as discussed above in claim 4), wherein the shock absorber comprises at least one shock absorber selected from a group consisting of: a rubber pad, a foam pad, a pneumatic damper, a hydraulic damper, and a spring shock (Ishikawa; col. 3, lines 56-57; the vibration-isolating mount 14A comprises a cylindrical rubber element 16A).
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Carney in view of Reed et al (US 20050220675 A1; hereinafter “Reed”; already of record).
Regarding claim 14, Carney teaches the system of claim 1, with the member for locking the surface.
Carney does not teach wherein the member for locking the surface comprises at least one member selected from a group comprising: a spring loaded ball catch, a latch, a clamp and a magnet.
However, Reed teaches an analogous art of a microplate apparatus (Reed; Abstract) comprising a member for locking a surface (Reed; para [305]; microplate 20 is disposed on table 872, spring 910 can secure microplate 20) further comprising at least one member selected from a group comprising: a spring loaded ball catch, a latch, a clamp and a magnet (para [305]; Fig. 72; , spring 910 can secure microplate 20). It would have been obvious to one of ordinary skill in the art by the effective filing date to have modified the member of Carney to be spring as taught by Reed, because Reed teaches the spring positions the microplate (Reed; para [305]).
Regarding claim 15, Carney teaches the method of claim 9, with the member for locking the surface.
Carney does not teach wherein the member for locking the surface comprises at least one member selected from a group comprising: a spring loaded ball catch, a latch, a clamp and a magnet.
However, Reed teaches an analogous art of a microplate apparatus (Reed; Abstract) comprising a member for locking a surface (Reed; para [305]; microplate 20 is disposed on table 872, spring 910 can secure microplate 20) further comprising at least one member selected from a group comprising: a spring loaded ball catch, a latch, a clamp and a magnet (para [305]; Fig. 72; , spring 910 can secure microplate 20). It would have been obvious to one of ordinary skill in the art by the effective filing date to have modified the member of Carney to be spring as taught by Reed, because Reed teaches the spring positions the microplate (Reed; para [305]).
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 12, respectively, of U.S. Patent No. 10583554 B2 (hereinafter “Nichols”). Although the claims at issue are not identical, they are not patentably distinct from each other because Nichols teaches the system of the instant claim 1 comprising: a frame (Nichols; claim 1; examiner interprets the mobile cart as the frame); a surface on the frame, the surface for holding an instrument, the instrument having an exterior user interface configured so as to define a predetermined singular primary facing bias that determines a predetermined singular front facing in a predetermined singular primary facing direction; a rotating element coupled to the surface to allow the surface to rotate, on the frame, between a first position and a second position, wherein the first position is arranged with respect to the instrument held on the surface such that the predetermined singular primary facing direction of the instrument is oriented towards an automated system and the second position is arranged with respect to the instrument held on the surface such that the predetermined singular primary facing direction of the instrument is oriented away from the automated system; a sensor to detect a position of the surface; a member for locking the surface; and a device for sending a signal indicating the first position and the second position of the surface from the sensor to an automated system including a robotic arm for accessing the instrument (Nichols; claim 1). Nichols teaches the method of the instant claim 12 comprising: providing a system including: a frame (Nichols; claim 12; examiner interprets the mobile cart as the frame), a surface on the frame, the surface for holding an instrument, the instrument having an exterior user interface configured so as to define a predetermined singular primary facing bias that determines a predetermined singular front facing in a predetermined singular primary facing direction, a rotating element coupled to the surface to allow the surface to rotate, on the frame, between a first position and a second position, wherein the first position is arranged with respect to the instrument held on the surface such that the predetermined singular primary facing direction of the instrument is oriented towards an automated system and the second position is arranged with respect to the instrument held on the surface such that the predetermined singular primary facing direction of the instrument is oriented away from the automated system, a sensor to detect a position of the surface, a member for locking the surface, and a device for sending a signal indicating the first position and the second position of the surface from the sensor to an automated system including a robotic arm for accessing the instrument; placing the system in conjunction with the automated system, the automated system including the robotic arm; and sending the signal from the sensor to the automated system (Nichols; claim 12). Thus, all of the elements of the invention recited in the instant claims are encompassed by the claims of US 10583554.
Evidentiary Reference
Moons, Stepper Motor, https://www.moonsindustries.com/c/stepper-motors-a02?srsltid=AfmBOortPL8tUiPHB9Q8PwksdgqV8fQ5WkuT-nEHKJpkUx_rGgTcwLW8
Response to Arguments
Applicant's arguments have been fully considered, and the arguments are not found to be persuasive. The non-persuasive arguments are addressed below.
In the Applicants’ arguments, on pp 7, Carney fails to disclose the amended limitations of claim 1 and claim 9. The examiner respectfully disagrees. See rejection of claim 1 and 9 above.
In the Applicants’ arguments, on pp 8, the Applicant argues the Examiner reads features which contradict the disclosure of Carney. The examiner respectfully disagrees. Applicant cites the “home position” corresponds to a specific well in the sample tray. The examiner clarified above that the sample tray is interpreted as “the surface”. The laboratory instrument is interpreted as the pans which are received by the sample tray. Further, the Applicant argues that the pan is “always” along the common arc of the arm and can be accessed by the arm along the common arc. The examiner respectfully disagrees. The sample tray of Carney rotates which positions different pans along the “common arc”. Thus, the Applicants’ arguments are unclear as to how one specific pan, for example the marked pan discussed above, would be within the common arc when the sample tray rotates.
In the Applicants’ arguments, on pp 9-11, the Applicant argues that Carney fails to teach or suggest the “second position” that is “determined by the non-conformal configuration” that “sets preclusion of automated system access to the laboratory instrument”. The Examiner respectfully disagrees. The Examiner notes that the Applicant cites the sample arm access different areas of sample tray in each rotational position. The laboratory instrument is interpreted as a single pan, and not the sample tray 1300 as a whole. The Applicant arguments are directed to the idea that the sample arm being able to access any one of the wells/pans on the sample tray is equivalent to Carney not being capable of the claimed limitations. However, if the user were to load a single/marked pan as discussed above, the pan would be positioned in the non-conformal configuration when it is inaccessible by the sample arm. The Applicant provides support for the rejection as cited on page 10 (Carney; 10, lines 53-55), which states that the home flag/home position corresponds to a specific well in a sample tray. That specific well which holds the pan is interpreted as the claimed laboratory instrument. Thus, that pan would be positioned outside of the common arc when the sample tray is rotated.
In the Applicants’ arguments, on pp 11-12, the Applicant argues Carney fails to disclose the amended limitations of claim 9. See above.
In the Applicants’ arguments, on pp 12, the Applicant arguments directed to the dependent claims merely refer back to the teachings of the references not meeting independent claims 1 and 9. However, the arguments regarding claims 1 and 9 are addressed above.
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.
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/A.Q.L./Examiner, Art Unit 1796 /DUANE SMITH/ Supervisory Patent Examiner, Art Unit 1759