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 .
This action is in response to papers filed October 20, 2025. The amendments have been thoroughly reviewed and entered. Any previous objection/ rejection not repeated herein has been withdrawn. New grounds for rejection, necessitated by the amendments, are discussed.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder (i.e., apparatuses) 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: “apparatuses configured for axial position securing and to support one of the two O-rings in a top position and another of the two O-rings in a bottom position” in claim 20. Looking to applicant’s disclosure, the “apparatuses” have been interpreted to cover one or more projections or peripheral annular grooves and structural equivalents thereof.
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 § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 17, 19, 20, 23, 25, 26-28 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Meltzer (US 5,306,510) in view of Jungheim et al., (US 2010/0196210; hereinafter “Jungheim”).
As to claim 17, Meltzer teaches a pipetting head with at least one pipette tip for a pipetting device, the pipetting head comprising:
a carrier (corresponds to carriage 14);
at least one attachment (corresponds to tip holders 36) held on the carrier and configured to receive and secure one of the at least one pipette tip 39; and
two O-rings 36E retained on the at least one attachment and configured to contact the at least one pipette tip (see Figs. 6-8),
wherein each of the two O-rings defines an outer diameter and is comprised of an elastomeric material (it is inherent that the O-rings disclosed in Melzer are comprised of an elastomeric material since elastomers are characterized by their high elasticity, meaning they can be stretched significantly and return to their original shape. Rubber, both natural and synthetic, exhibits these elastic properties, making it a prime example of an elastomer. In fact the purpose of O-rings is to be squeezed between two surfaces, such that it takes up the clearance and then prevents any fluid from being released, see attached “What is an O-ring?”- considered a “teaching reference”),
wherein a sealing seat (the “sealing seat” corresponds to any friction surface on the inner surface of the pipette tip 39) is disposed on the at least one pipette tip corresponding to each 0-ring 36E, wherein the sealing seat defines an inner diameter such that one of the at least one pipette tips is configured to contact a respective 0-ring
and the respective 0-ring is deformed while the at least one of the at least one pipette tip is slid onto the at least one attachment to securely clamp the one of the at least one pipette tip on the at least one attachment,
wherein the at least one pipette tip is dimensioned such that each of the at least one attachment does not exert a force, by direct contact with the sealing seat, that deforms the one of the at least one pipette tip (see Fig. 6 where the inner diameter of the pipette tip does not directly contact the attachment 36),
wherein the inner diameter of the sealing seat is smaller than the outer diameter of the respective O-ring where the sealing seat contacts, so that the respective O-ring is deformed when the pipette tip is slid onto the attachment (see Fig. 5, and col. 8, line 63 et seq.)
wherein the at least one pipette tip is clamped on the at least one attachment through deformation of the O-rings (already recited above).
Meltzer discloses the at least one attachment 36 for a pipette tip 39 comprises at least one conical portion (reads on tapered portion 36D) and at least one cylindrical portion (reads on non-tapered portions shown inside the shoulder 36 in Fig. 8).
However, Meltzer does not explicitly teach the at least one attachment further comprises:
a top cylindrical portion positioned at a top end of the at least one attachment;
a bottom cylindrical portion positioned at a bottom end of the at least one attachment;
a conical portion position between the top and bottom cylindrical portions;
top apparatuses (interpreted as grooves) configured for axial position securing positioned between the top cylindrical portion and the conical portion; and
bottom apparatuses (interpreted as grooves) configured for axial position securing between the conical portion 66 and the bottom cylindrical portion.
In the related art of attaching pipette tips to an attachment member, Jungheim teaches a pipetting head with at least one pipette tip for a pipetting device, the pipetting head comprising:
a carrier (reads on pipetting machine; see para [0004] et seq.);
at least one attachment 4 held on the carrier and is configured to receive and secure one of at least one pipette tips 10, wherein each of the at least one pipette tip comprises at least one sealing seat (any location along the inner surface of the pipette tip; for example annular groove 30) defining an inner diameter (see Fig. 1); and
two O-rings 27 (annular ring) and 21 (sealing element defined as beneficially a ring seal made of a resilient material…the sealing element is embodied as a solid ring rectangular in cross section. Nevertheless, it is also possible to use ring seals having a circular (O-rings) retained on the at least one attachment and configured to contact one the of the least one pipette tip; see par [0067] et seq.),
wherein the inner diameter of the first sealing seat 47 corresponding to one of the at least one pipette tip is configured to contact a respective O-ring 27 and the second seating seat 43 is configured such that the respective O-ring 21. Wherein both O-rings are deformed while one of the at least one pipette tip is slid onto the corresponding attachment to securely clamp the at least one pipette tip on the at least one attachment; (see para [0071], and [0078] et seq.), and
wherein the at least the sealing seats 47, 43 of the at least one pipette tip is dimensioned such that the sealing seat 47, 43 do not directly contact the at least one attachment (sealing seat 47 contacts only the O-ring 27 and sealing seat 43 only contacts the O-ring 21) and the sealing seat exerts a force that deforms the at least one pipette tip when the at least one pipette tip is securely clamped on the at least one attachment through deformation of each of the O-rings (see Fig. 2 and para [0071] et seq.)
a top cylindrical portion 61 positioned at a top end of the at least one attachment;
a bottom cylindrical portion 25 positioned at a bottom end of the at least one attachment;
a conical portion position 66, 67 between the top and bottom cylindrical portions;
top apparatuses (interpreted as groove 60) configured for axial position securing positioned between the top cylindrical portion and the conical portion; and
bottom apparatuses (interpreted as groove 34) configured for axial position securing between the conical portion 66 and the bottom cylindrical portion 25 (see Fig. 5-7 and para [0081] et seq.)
Accordingly, it would have been obvious to one of ordinary skill in the art at the time the instant claimed invention was effectively filed to have configured in the attachment portion of Meltzer with the particular configuration disclosed in Jungheim, since Jungheim discloses that this particular configuration facilitates the placement of the pipette tip and leads to a long service life of the annular O-rings (see para [0081] et seq.)
Note: the limitation “at least one pipette tip” as recited in the preamble of claim 17 and throughout the claims has received patentable weight by the examiner. Although limitations in the preamble are usually not considered part of the invention, in this case the claimed pipette tip is 'necessary to give life, meaning, and vitality' to the claims (see MPEP 2111.02).
Note: The instant claims contain a large amount of functional/process language (ex: the sealing seat exerts a force that deforms the at least one pipette tip when the at least one pipette tip is securely clamped on the at least one attachment through deformation of each of the two O-rings”). However, functional language does not add any further structure to an apparatus beyond a capability. Apparatus claims must distinguish over the prior art in terms of structure rather than function (see MPEP 2114). Therefore, if the prior art structure is capable of performing the function, then the prior art meets the limitation in the claims (see MPEP § 2114 & § 2173.05(g)). Although the functional/process limitations have not received patentable weight, in this case, the functional/process limitations have been mapped by the examiner against the prior art for the purpose of compact prosecution (see above).
As to claim 19, Meltzer inherently teaches the elastomeric material is rubber, silicone, or a thermoplastic elastomer (see discussion above).
As to claim 20, Meltzer teaches the at least one attachment 36 comprises apparatuses (grooves 36f) configured for axial position securing and to support one of the two O-rings in a top position and another of the two O-rings in a bottom position, and wherein the apparatuses are configured for axial position securing enable deformation of the two O-rings in a radial direction (see grooves 36f in the in Fig. 8 and col. 8, line 63 et seq.)
As to claim 23, Meltzer teaches the at least one attachment 36 for a pipette tip 39 comprises at least one conical portion (reads on tapered portion 36D) and at least one cylindrical portion (reads on non-tapered portions shown inside the shoulder 36 in Fig. 8).
As to claim 25, Jungheim teaches where the conical portion tapers from the top cylindrical portion 61 to the bottom cylindrical portion 25 (i.e., decreases in diameter along the attachment; see Figs. 5-7).
As to claim 26, Meltzer inherently teaches the upper O-rings 36E comprises a larger inner diameter than the other O-ring (i.e., the lower O-ring 36E), since the lower portion of the attachment on which the lower O-ring is disposed has a smaller diameter than the upper O-ring because 36D since the attachment is tapered along its longitudinal length (see Fig. 8).
As to claim 27, Meltzer teaches a first of the two O-rings 36E is positioned towards a top of the attachment 36 and a second of the two O-rings 36E is positioned towards a bottom of the attachment relative to the first O-ring, wherein at least one of: (1) a diameter of a cross-section of the first O-ring is larger than a depth (interpreted as width along the horizontal axis perpendicular to the longitudinal axis of the pipette ) of a top annular groove (that is, the O-rings 36E in Figs. 6-8 extend beyond the ledge of the top annular groove 36f).
As to claim 28, Meltzer teaches wherein the at least one attachment comprises at least two attachments which are arranged parallel and adjacent to each other in one or more rows (interpreted to mean multiple pipettes as shown in Fig. 1).
Claim 33 is directed to an intended affect that attempts to treat “the force exerted by the sealing seat” as a structural element. The force is a result of structural elements being in contact but the “force” is not considered structure and does not serve to limit the device claim. Nevertheless, Meltzer does teach the resilient O-rings extend in the radial direction by force exerted by the sealing seat (see col. 8, line 63 et seq.)
Response to Arguments
Applicant's arguments filed October 20, 2025 have been fully considered but they are not persuasive. In the outstanding response, claim 24 was included into independent claim 17. The examiner respectfully disagrees with applicant arguments with respect to the Jungheim reference. Applicant argues that the as seen in Figs. 6 and 7 of Jungheim, the run-on-flanks 66, 67 do not taper from the top groove to the bottom groove. The examiner points out that Figs 5 to 7 are another exemplary embodiment different from the embodiment of Figs. 2-4 relied upon in the rejection above, (see para [0081] of Jungheim). The examiner relies on downward slope of the guiding elements 26 in Jungheim as teaching the claimed taper shown between the grooves . In addition, Meltzer discloses the at least one attachment 36 for a pipette tip 39 comprises at least one conical portion (reads on tapered portion 36D) and at least one cylindrical portion (reads on non-tapered portions shown inside the shoulder 36 in Fig. 8).
The examiner notes that the use of O-rings and tapered surfaces to frictionally attach a pipette tip to a pipette coupling element is well established and includes a large amount of prior art. The examiner is of the opinion that the invention as disclosed by the instant claims are not novel and/or obvious over the prior art and would not recommend further prosecution of the claimed invention. The examiner invites applicant to request an interview for further discussion.
Citations to art
In the above citations to documents in the art, an effort has been made to specifically cite representative passages, however rejections are in reference to the entirety of each document relied upon. Other passages, not specifically cited, may apply as well.
Conclusion
No claims are allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure include:
Itoh (US 2007/0110630) discloses a nozzle body, a ball provided in the nozzle body and elastically deformable by compression, an aliquoting/dispensing tip having a barrel portion in which the nozzle body including the ball is inserted, and a ball compressing mechanism which is provided in the nozzle body, configured elastically to deform the ball by compression so that the diameter of the ball increases with the nozzle body including the ball inserted in the barrel portion of the aliquoting/dispensing tip, thereby pressing the ball airtightly against an inner peripheral surface of the barrel portion of the tip, when the tip is attached to the nozzle body.
Panzer et al., (US 2006/0233669) disclose a pipette device that has a coupling stud on which a pipette tip can be stuck in a slipping-on direction for coupling. The coupling stud has an adjustable pre-stress member that can be adjusted into a prestress state and a release state via an actuation device which is provided in the coupling stud. The pipette tip has an axial stop which interacts with a counter-stop of the coupling stud in an axial coupling position of the pipette tip. The prestress member in its pre-stress state acts upon a working surface of the stuck-on pipette tip having a surface component of the pipette tip, which extends radially inward, turned away from the stuck on direction, in such a way that it abuts sealingly on the working surface, and prestresses the pipette tip on the pipette unit into the axial coupling position. The prestress member, in its releasing state, substantially releases the working surface of the pipette tip (101)
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 P. Kathryn Wright whose telephone number is (571)272-2374. The examiner can normally be reached on Monday-Thursday 5:30am-3pm EST.
Examiner interviews are available via telephone and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
E-mail communication Authorization
Per updated USPTO Internet usage policies, Applicant and/or applicant’s representative is encouraged to authorize the USPTO examiner to discuss any subject matter concerning the above application via Internet e-mail communications. See MPEP 502.03. To approve such communications, Applicant must provide written authorization for e-mail communication by submitting the following statement via EFS Web (using PTO/SB/439) or Central Fax (571-273-8300):
Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.
Written authorizations submitted to the Examiner via e-mail are NOT proper. Written authorizations must be submitted via EFS-Web (using PTO/SB/439) or Central Fax (571-273-8300). A paper copy of e-mail correspondence will be placed in the patent application when appropriate. E-mails from the USPTO are for the sole use of the intended recipient, and may contain information subject to the confidentiality requirement set forth in 35 USC § 122. See also MPEP 502.03.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jill A Warden can be reached on 571-272-1267. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/P. Kathryn Wright/Primary Examiner, Art Unit 1798