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 .
Response to Amendment
The amendments and remarks, filed on 8/28/2025, has been entered. The claim amendments do not overcome the prior art rejection and the applicant’s arguments are addressed below.
Claim Status
Claims 1-11 and 15-18 are pending and being examined.
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 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: “an adjustment mechanism configured to…” in claim 15.
The “adjustment mechanism” is described in the instant specification on para [25, 26, 55]. The adjustment mechanism is configured to move the frame between the raised position and the lowered position and comprising a gripping mechanism, support arms 10, and the support legs 12.
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
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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Acosta et al (US 20010012492 A1; hereinafter “Acosta”; already of record) in view of Baumann et al (US 20070110626 A1; hereinafter "Baumann").
Regarding claim 1, Acosta a holder for holding pipette tips of a molecular diagnostics assay analyser (Acosta; Fig. 4; para [57, 86]; holding assembly 300), the holder comprising:
a frame (Acosta; Fig. 4, 11; para [93]; Each cassette 340 is received by and removably secured within an associated one of the slots 310 formed in top panel 308 of rack 302; examiner interprets the frame to be defined by the cassette 340 and the top panel 308) comprising a plurality of bores which are separated from each other (Acosta; Fig. 8, 11; para [62]; A plurality of equidistantly spaced, generally parallel slots 310 extend laterally across top panel 308), each bore configured to removably hold a first end of a pipette tip (Acosta; Fig. 8, 11; para [62]; a plurality of aligned apertures 352, each for receiving an individual pipette tip); and
a drip tray spaced apart from the plurality of bores (Acosta; Fig. 3, 4; para [73]; A removable drip tray (not shown) may be provided at the base of the pipette tip rack well 140), the drip tray configured to receive a second end of a pipette tip when said pipette tip is held by one of the plurality of bores, thereby allowing the pipette tip to be placed in the holder for re-use, wherein the drip tray is detachable from the holder (Acosta; para [73]; A removable drip tray (not shown) may be provided at the base of the pipette tip rack well 140 for collecting drippings from pipette tip 362 held within the cassettes 340 disposed within pipette tip rack 302, especially if cassettes having no bottom walls are used;
wherein the frame is movable between a raised position within the holder and a lowered position within the holder1 (Acosta; para [65]; Each cassette 340 may include coupling structure which cooperates with associated coupling structure formed in the top panel 308 of the rack 302 for removably attaching the cassette 340 to the top panel 308);
wherein the drip tray is a fixed distance apart from the frame (Acosta; Fig. 7; para [73]; A removable drip tray (not shown) may be provided at the base of the pipette tip rack well 140; the examiner notes that the drip tray would be positioned at the bottom base 140 which is spaced apart from part of the frame defined by the cassette 340).
1 Examiner notes the frame is defined by the cassette and top panel of the rack as described above in claim 1, thus the cassette, interpreted as part of the frame, is moved between a raised position and lowered position. The limitation is directed to the function and/or the manner of operating the frame, all the structural limitations of the claim has been disclosed by Acosta and the frame of Acosta is capable of being “movable between a raised position within the holder and a lowered position within the holder”. As such, it is deemed that the claimed apparatus is not differentiated from the frame of Acosta (see MPEP §2114).
Acosta does not teach wherein the drip tray is structurally coupled to the frame, such that movement of the frame corresponds to movement of the drip tray.
However, Baumann teaches an analogous art of a pipetting device (Baumann; Abstract) comprising a frame wherein the frame is movable between a raised position and a lowered position (Baumann; Fig. 2; para [43]; the pipetting device (13) via a flexible and movable adjustable mounting (26)); and a drip tray wherein the drip tray is structurally coupled to the frame (Baumann; Fig. 1; para [42]; The drop catcher container (25) may consist of a tray carrier (22) which is fixed to the frame (21) via fixing means (23)). Baumann teaches a drip tray coupled to the frame. It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the drip tray of Acosta to be structurally coupled to the frame as taught by Baumann, because Baumann teaches the drop catcher is positioned to catch drops of liquid to prevent contamination of the analytical instrument (Baumann; para [40]). Thus, modified Acosta teaches that the movement of the frame corresponds to movement of the drip tray, because the drip tray of Acosta is modified to be coupled to the frame. Thus, when the frame is raised/lowered the drip tray will be raised/lowered.
Regarding claim 2, modified Acosta the holder according to claim 1, wherein each bore has a central longitudinal axis and the central longitudinal axes of the plurality of bores are substantially parallel to each other (Acosta; Fig. 4, 8, 11).
Regarding claim 3, modified Acosta the holder according to claim 1, wherein the bores are through-bores (Acosta; Fig. 8, 11).
Regarding claim 4, modified Acosta the holder according to claim 3, wherein each of the plurality of the bores extends along a portion of the pipette tip from the first end of the pipette tip towards the second end of the pipette tip (Acosta; Fig. 11; para [64]; A pipette tip 362 includes an upper portion 363 having a larger diameter than a lower portion 365, thereby defining an annular shoulder between the upper portion 363 and the lower portion 365 which engages the peripheral edge of aperture 352).
Regarding claim 5, modified Acosta the holder according to claim 4, wherein the extent of the pipette tip along which the bore extends is chosen such that each bore holds a pipette tip in a manner which prevents a longitudinal axis of the pipette tip from substantially deviating from a longitudinal axis of the bore, such that substantial lateral motion of the pipette tip in the bore is prevented (Acosta; Fig. 11; para [64]; A pipette tip 362 includes an upper portion 363 having a larger diameter than a lower portion 365, thereby defining an annular shoulder between the upper portion 363 and the lower portion 365 which engages the peripheral edge of aperture 352 to prevent the pipette tip 362 from falling through the cassette 340).
Regarding claim 6, modified Acosta the holder according to claim 1, wherein the plurality of bores are linearly arranged within the frame (Acosta; Fig. 4, 9; para [62]; top panel 308 preferably includes ten laterally extending slots 310). Examiner notes that the cassettes are equally spaced and comprise the apertures, interpreted as the bores, which are equidistant from one another as seen in Fig. 9.
Regarding claim 7, modified Acosta the holder according to claim 1, further comprising a gap between the frame and the drip tray (Acosta; Fig. 3, 4; para [73]; A removable drip tray (not shown) may be provided at the base of the pipette tip rack well 140). Examiner notes the frame is defined by the cassette and top panel of the rack as described above in claim 1, thus the drip tray provided at the bottom of the well comprises a space/gap between the frame and drip tray.
Claims 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Acosta in view of Park et al (US 20130236903 A1; hereinafter “Park”; already of record).
Regarding claim 8, Acosta the holder according to claim 1, with the drip tray.
Acosta does not teach wherein the drip tray is partitioned into a plurality of sections.
However, Park teaches an analogous art of a drip tray (Park; Fig. 14; para [15]; drip tray 1050) wherein the drip tray is partitioned into a plurality of sections (Park; Fig. 14; para [137]; The lower plate 451 for solution drip tray has a sufficient surface area in order to receive all of the solution drips from the plurality of pipettes P…a solution collecting groove 451-G2 for receiving the solution drips). It would have been obvious to one of ordinary skill in the art to have modified the drip tray of Acosta to be partitioned into sections as taught by Park, because Park teaches the drip tray receives drops from the pipette (Park; para [35]) to prevent pollution from undesirable solution drips from the other pipettes (Park; para [36]).
Regarding claim 9, modified Acosta the holder according to claim 8 (the drip tray of Acosta is modified to comprise the plurality of sections as taught by Park discussed above in claim 8), wherein the number of sections in the drip tray is equal to the number of bores in the frame (Acosta; Fig. 4, 9; Park; Fig. 14). Park teaches that the plurality of sections is designed for each respective pipette, thus modified Acosta teaches the claimed limitation because Acosta teaches that the number of bores is based on the number of pipettes.
Regarding claim 10, modified Acosta the holder according to claim 8 (the drip tray of Acosta is modified to comprise the plurality of sections as taught by Park discussed above in claim 8), wherein each section is arranged opposite a corresponding bore in the frame (Acosta; Fig. 4, 9; Park; Fig. 14).
Regarding claim 11, modified Acosta the holder according to claim 8, wherein the sections are configured to receive a bottle (Park; Fig. 14). The limitation is directed to the function and/or the manner of operating the sections, all the structural limitations of the claim has been disclosed by Acosta in view of Park and the sections on the drip tray of modified Acosta is capable of “receiving a bottle”. As such, it is deemed that the claimed sections are not differentiated from the sections of modified Acosta (see MPEP §2114).
Claim 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Acosta in view of Steinbrenner et al (WO 9533563 A1; hereinafter “Steinbrenner”; English translation previously attached; already of record).
Regarding claim 15, Acosta teaches the holder according to claim 13, with the frame.
Acosta does not teach the holder further comprising an adjustment mechanism configured to move the frame between the raised position and the lowered position.
However, Steinbrenner teaches an analogous art of a container for pipettes/dispensers (Steinbrenner; Abstract) comprising an adjustment mechanism (Steinbrenner; Fig. 15; pp 18 para [4]; vertical guide 44, horizontal guide 43 are interpreted as the support arm and the support leg; pp 18 para [1]; displaceable part 17) configured to move the frame between the raised position and the lowered position (Steinbrenner; Fig. 15; pp 18 para [2]; the objects 1 are held by means of the displacement of the holes 24 'with respect to the bores 22, the pipette tips 2 can be inclined…the receiving openings 11 of the carrier 4 are in the displaced position with the holes 22 of the dispenser 12 are aligned…Pipette tips 2 can be inserted into the receiving openings 11 of the carrier 4). It would have been obvious to one of ordinary skill in the art by the effective filing date to have modified the holder of Acosta to comprise the adjustment mechanism as taught by Steinbrenner, because Steinbrenner teaches that the mechanism allows for the pipette tips to be smoothly transferred from the container to carrier (Steinbrenner; pp 18 para [3]).
Regarding claim 16, modified Acosta teaches the holder according to claim 15 (the holder of Acosta is modified to comprise the adjustment mechanism as taught by Steinbrenner as discussed in claim 15), wherein the adjustment mechanism comprises a gripping mechanism configured to maintain the frame in the raised position (Steinbrenner; Fig. 15; pp 18 para [1]; to actuate the displaceable part 17, two handles 61 are arranged on both sides of this part 17).
Regarding claim 17, modified Acosta teaches the holder according to claim 16, wherein the gripping mechanism comprises a mechanical catch (Steinbrenner; Fig. 15; pp 17 para [4]; In the rest position, in which the displaceable part 17 through the spring 26 is pressed, the bores 22 and the holes 24 'are slightly offset from one another and the objects 1 are held).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Acosta in view of Sugiyama et al (US 7360984 B1; hereinafter “Sugiyama”; already of record).
Regarding claim 18, Acosta teaches the holder according to claim 1,
Acosta does not teach the holder further comprising a sensor configured to detect when the frame is in the lowered position.
However, Sugiyama teaches an analogous art of nozzle tips container (Sugiyama; Abstract) comprising a sensor configured to detect when the frame is in the lowered position (Sugiyama; Fig. 3; col 7, lines 57-59; The rack feeding part has a position sensor 24 arranged at the bottom thereof for detecting the lowest position (bottom dead center) of the lift 83). It would have been obvious to one of ordinary skill in the art by the effective filing date to have modified the holder of Acosta to comprise the sensor as taught by Sugiyama, because Sugiyama teaches that the sensor detects if the rack is in the lowest position (Sugiyama; Fig. 3; col 7, lines 57-59).
Response to Arguments
Applicant’s arguments filed, 8/28/2025, have been considered and the arguments are found to be persuasive. However, those arguments are directed towards the claim amendments. The examiner notes that the previous prior art rejection is withdrawn and a new prior art rejection is applied to address the claim amendments.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Austin Q Le whose telephone number is (571)272-7556. The examiner can normally be reached Monday - Friday 9am - 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth Robinson can be reached at (571)272-7129. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.Q.L./Examiner, Art Unit 1796
/MATTHEW D KRCHA/Primary Examiner, Art Unit 1796