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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/18/2025 is acknowledged. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Amendment
Applicant’s remarks and amendments filed 2/18/2026, in response to the non-final rejection mailed 11/18/2025, are acknowledged and have been fully considered. Any previous rejection or objection not explicitly mentioned herein is withdrawn.
Applicant’s amendment to the claims is acknowledged. This listing of the claims replaces all prior versions and listings of the claims.
Claims 1, 3-10, 12, and 14-15 are pending and have been examined on the merits.
Response to Arguments
Applicant’s arguments, in the remarks filed 2/18/2026, with respect to the rejections of claims 1, 5, 7-10, 12, and 15 have been rejected under 35 U.S.C. §103 as being obvious over Hatcher et al. (U.S. Patent No. 6,694,197) in view of Ito (U.S. PGPub No. 2020/0040295) and Silbert et al. (U.S. Patent No. 9,068,953); further in view of Berberich et al. (U.S. Patent No. 10,449,534) as applied to claims 3, 4, and 14; and/or further in view of Roselle et al. (Anal Bioanal Chem, 2016) as applied to claim 6, have been fully considered. The prior art does not reasonably teach or suggest all of the limitations of the amended claim 1, particularly not a device comprising a memory that stores a number of times that cells are discharged into each well coupled to a display controller that causes a display to display a plurality of indicators, respectively corresponding to the plurality of wells, that reads the number of times that the cells are discharged into each well from the memory, and differentiates display manners of the plurality of indicators in the display among an indicator corresponding to a well into which the cells have not been discharged, an indicator corresponding to a well into which the cells have been discharged once, and an indicator corresponding to a well into which the cells have been discharged multiple times, as argued by the applicant in pages 8-9 of the remarks.
Further searching of the literature does not reveal additional references teachings these features together with a device for transferring cells, as recited herein, with a reasonable motivation to combine to yield the instant invention.
Therefore, the rejections over the prior art of record have been withdrawn.
However, upon further consideration, new grounds of rejection are made in response to issues of new matter and lack of antecedent basis raised by the amendment.
Claim Rejections - 35 USC § 112(a) - Written Description (New Matter)
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, 3-10, 12, 14, and 15 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 claims 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. This is a new matter rejection.
The amended claim 1 recites, in lines 13-17, “a memory that stores a number of times that cells are discharged into each well: and a display controller that causes a display to display a plurality of indicators respectively corresponding to the plurality of wells, reads the number of times that the cells are discharged into each well from the memory”.
The amended claim 12 recites, in lines 12-15, “storing a number of times that cells are discharged into each well: and causing a display to display a plurality of indicators respectively corresponding to the plurality of wells, reading the number of times that the cells are discharged into each well from the memory”.
The disclosure, as filed, does not recite explicitly or adequately describe a memory that stores a number of times that cells are discharged into each well, nor does the disclosure recite reading the number of times that the cells are discharged into each well from the memory.
The Applicant has pointed out that the amended subject matter is supported at “page 5, lines 20-26; page 8, lines 32-35; page 9, line 26 to page 11, line 7; and Figures 7 and 8 of the present specification”. However careful review of these cited sections indicates that these sections do not support the specific, narrower, relationship of the memory and functions that are required of the memory and CPU.
See as an example, MPEP § 2163.05.II., describes that the introduction of claim changes which involve narrowing the claims by introducing elements or limitations which are not supported by the as-filed disclosure is a violation of the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph and states that “In Ex parte Ohshiro, 14 USPQ2d 1750 (Bd. Pat. App. & Inter. 1989), the Board affirmed the rejection under 35 U.S.C. 112, first paragraph, of claims to an internal combustion engine which recited "at least one of said piston and said cylinder (head) having a recessed channel." The Board held that the application which disclosed a cylinder head with a recessed channel and a piston without a recessed channel did not specifically disclose the "species" of a channeled piston.”
Page 5, lines 20-26 (cited by Applicant), of the specification describes a memory and states “The main controller 60 includes a personal computer, for example, and includes a CPU (Central Processing Unit), a memory and so on”.
On page 7 and 8, the specification describes that “A created method is stored in a storage medium such as a memory.”
At page 8, lines 16-20, the specification describes Fig. 5 and states that “The functions of the main controller 60 are implemented by execution of a cell accommodating program stored in a memory by a CPU of the main controller 60”.
At page 8, lines 32-35 (cited by applicant), the specification states that “The registrar 64 registers a method received by the work procedure receiver 61, and a selection well and seeding order received by the selection well receiver 62. In the present embodiment, a selection well and seeding order are included in a method. In the present example, a method is registered in the memory of the main controller 60”.
From page 9, line 26 to page 11, line 7, the specification describes various actions performed by the programming of the claimed device. There is no discussion of the memory in this cited section. Portions of the specification indeed describe that there is a display screen that displays well in which cells have been seeded in a color different from the color of a selection well scheduled for seeding (e.g. Figure 7 and 8 as indicated by the Applicant).
However, there is no direct written support for the recited memory having the function of storing the number of times cells have been discharged into each well, nor is there discussion of reading the number of times that the cells are discharged into each well from the memory.
The cited portions of the specification and figures describe processes and examples in which information on the experiment and the workflow status is displayed on a display on the cell picking device. Herein, the disclosure describes a memory that stores information for the selection wells and seeding orders which are included in a method stored in the memory of the controller. However, there is no explicit or implicit disclosure of a memory that stores the number of times cells have been discharged nor is there support for a step of reading the number of times that the cells are discharged into each well from the memory.
The display of Figures 7 and 8 amount to means for monitoring the status or progress of the programmed method. Such monitoring may be accomplished through means other than a memory that records the number of times cells or discharged, as means for tracking well status, measuring cell counts, or determining volume of liquid in a well or container are known in the art. For example, “Ryle” (US PGPub No. 20070072168, to Idexx Laboratories Inc.), describes a sample tracking system comprising a plate having a plurality of sample wells and an apparatus for illuminating each individual sample well, wherein the manner with which the sample well is illuminated can track the loading of the sample components to the sample wells (Claim 1, Abstract). Silbert et al. (US PGPub No. 20150037213 to Agena Bioscience, Inc.) describes a liquid handling system in which a “live video image of the transfer process may be displayed in video block 476 as well as a graphic of the transfer status of sample deposition on chips 274 of a selected chip mount block shown on a chip status block 478. Microtiter plate status blocks 480 and 482 show the transfer status of two selected microtiter plates 268 in current use including a graphic display of sample wells that have already been transferred and which wells are full and have not yet been transferred to a sample deposition site of a chip 274.” ([0175]).
Thus, the high level generic description in the original disclosure regarding the displaying of the well status by changing the appearance of a graphical display is not considered to adequately support the narrower claim features of a memory that stores the number of times cells have been discharged into each well and reading the number of times that the cells are discharged into each well from the memory. See MPEP §§ 2163.05.II. and 2163.06.
Claims 1 and 12 are thus rejected under 35 U.S.C. § 112(a), because the disclosure does not adequately describe the claimed subject matter of the amended claims.
All other claims depend directly or indirectly from the rejected claims and are, therefore, also rejected under 35 U.S.C. 112(a) for the reasons set forth above.
Claim Rejections - 35 USC § 112(b)
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 12, 14, and 15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 12 recites the limitation "the memory" in line 15. There is insufficient antecedent basis for this limitation in the claim. There is no early recitation of a memory in claim 12 (an independent method claim). Further, there is no recitation of any computer system comprising a processing device (CPU) and a memory in claim 12 (or claims 14-15). Thus, it is unclear how the method of “causing a display to display a plurality of indicators” and “reading the number of times that the cells are discharged” is to be accomplished. The claim is indefinite because the metes and bounds of the claim protection sought is unclear.
Claims 14 and 15 depend directly from the rejected claims and are, therefore, also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for the reasons set forth above.
Conclusion
No claims are allowed.
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.T.M./Examiner, Art Unit 1655
/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655
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