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 Amendment filed 02/11/2026 has been entered. Claims 1-11 remain pending in the application. Claim 1 has been amended.
Status of Objections and Rejections
The rejection of claim 2 under 35 U.S.C. 112(b) as being indefinite is withdrawn in view of Applicant's amendment.
The rejection of claims 1-8 under 35 U.S.C. 103 as being unpatentable over Abe in view of Jeffs and Black is withdrawn in view of Applicant's amendment.
The rejection of claims 9-11 under 35 U.S.C. 103 as being unpatentable over Abe in view of Jeffs, Black and Tanaka is withdrawn in view of Applicant's amendment.
The nonstatutory double patent rejection for claims 1-11 as being unpatentable over claims 1-8 of U.S. Patent No. 12,449,438 B2 in view of Jeffs and in further view of Angus is maintained.
Response to Arguments
Applicant’s arguments, see pp. 6-10, filed 02/11/2026, with respect to the rejection of claims 1-11 under 35 USC 103 have been fully considered and are persuasive. The rejection of claims 1-11 has been withdrawn.
Applicant states (p. 10), “Claims 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,449,438 B2. The filing of a terminal disclaimer is being deferred pending consideration of the claim amendments”.
The examiner notes that Applicant did not provide a complete response. MPEP 804 (I)(B)(1) states:
“A complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.
As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only compliance with objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated. Replies with an omission should be treated as provided in MPEP § 714.03….”
However, in the interest of compact prosecution, the Examiner is issuing this office action and maintaining the double patenting rejection.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,449,438 B2 in view of Jeffs (US 4707337 A) and in further view of Angus (US 20080264187 A1). US12449438B2 in view of Jeffs teaches instant claims 1-2 at 1; 3 at 8; 4-5 at 3; 6-7 at 5; 8 at 6; and 9-11 at 2 in further view of Angus. See bolded amendments below.
Regarding claim 1, US 12449438B2 claims a method of cell picking using a cell picking device for sucking cells from a liquid sample in a sample container using a pipette tip (A method of cell picking for sucking cells from a liquid sample in a sample container with a cell picking device, the cell picking device comprising: a sucking member to which a pipette tip is attachable; Claim 1)(The claims of US 12449438B2 are drawn to “a method of cell picking for sucking cells from a liquid sample in a sample container with a cell picking device,” whereas the instant claims are drawn to the “cell picking device” itself. However, the difference in statutory class (method vs. machine) does not render the claimed subject matter patentably distinct. The method of using the device in US 12449438B2 claims would have been an obvious use of the same device presently claimed and is therefore still rejected under nonstatutory double patenting), comprising:
a suction arm configured to receive the pipette tip, such that the pipette tip is attached to the suction arm (a sucking member to which a pipette tip is attachable; Claim 1);
a first driver configured to drive the suction arm and cause the suction arm to perform a sucking operation (a driver that moves the sucking member and performs suction through the sucking member; Claim 1);
and a controller that controls an operation of the first driver (a controller that controls the driver; Claim 1),
wherein the controller is configured to:
cause the driver to advance the suction arm in an axial direction of the pipette tip and tilt the pipette tip such that an end of the pipette tip comes into contact with a bottom surface of the sample container and to tilt the suction arm relative to a vertical direction such that the pipette tip attached to the suction arm is bent at a first tilt angle by the bottom surface of the sample container, (performing first advancing work for bringing an end of the pipette tip into contact with a bottom surface in the sample container by causing the sucking member to advance in an axial direction of the pipette tip with the pipette tip, attached to the sucking member, being tilted with respect to a vertical direction; Claim 1),
cause the first driver to move the suction arm such that the end of the pipette tip scans the bottom surface of the sample container in a horizontal direction toward a predetermined position (scanning work for scanning the bottom surface of the sample container toward a first position using the end of the pipette tip by moving the sucking member in a horizontal direction; Claim 1),
cause the first driver to further tilt the suction arm by a predetermined angle by rotating the pipette such that the pipette tip is bent at a second tilt angle that is more horizontal than the first tilt angle (“tilting work for lifting the end of the pipette tip and lowering a base of the pipette tip in the first position by tilting the sucking member further with respect to the vertical direction,” wherein a tilt is naturally a rotation; Claim 1),
cause the suction arm to perform a sucking operation such that a sample is sucked through the end of the pipette tip (sucking work for sucking a sample in the sample container through the sucking member and the pipette tip; Claim 1), which separates cells adsorbed to the bottom surface of the sample container (the sucking member and the pipette tip from stripped cells adhering to the bottom surface in the sample container; claim 1).
US12449438B2 fails to teach:
an elastic material of the pipette tip is bent due to the pressing of the pipette against the bottom surface of the sample container.
Jeffs teaches that an elastic material (flexible extension 64; column 6, line 13; Figs. 7-8) of the pipette tip (the pipette tip 60; column 6, lines 11-12; Figs. 7-8) is bent due to the pressing of the pipette against the bottom surface of the sample container (the flexible extension 64 forcibly engages the bottom of the test tube or vial and is curvilinearly deflected so that the opening at the distal end of passageway 68 is essentially horizontally oriented; column 6, lines 9-16).
Jeffs is considered to be analogous to the claimed invention because it is in the same field of endeavor for automated liquid handling and cell aspiration. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the generic pipette tip taught by US12449438B2 with the pipette tip having a flexible distal end taught by Jeffs in order to access hard to reach places at the bottom of the container without tip breakage (Jeffs, Abstract)(column 7, lines 9-13). Substituting a generic pipette tip with a flexible pipette tip, commonly used tool in laboratories, would have yielded the predictable improvement of allowing the dispensing system of US12449438B2 to more easily strip cells adhering to the bottom surface corners without damaging the pipette tip (Jeffs, column 6, lines 16-18)(See MPEP 2143(I)(B)).
Regarding claim 2, Modified US 12449438B2 claims the cell picking device according to claim 1, wherein the controller causes the suction arm to start performing a sucking operation in a period before tilt control with respect to the suction arm is stopped, after the tilt control with respect to the suction arm by the tilter is started (The cell picking device according to claim 1, wherein the controller controls the driver such that tilt releasing work for releasing a tilt of the sucking member that has been tilted by the tilting work is performed after the sucking work ends, in the first mode; Claim 8).
Regarding claim 3, Modified US 12449438B2 claims the cell picking device according to claim 1, wherein the controller is further configured to control the suction arm to undo a tilt of the suction arm after control for a sucking operation performed by the sucker is stopped (The cell picking device according to claim 1, wherein the controller controls the driver such that tilt releasing work for releasing a tilt of the sucking member that has been tilted by the tilting work is performed after the sucking work ends, in the first mode; Claim 8).
Regarding claim 4, Modified US 12449438B2 claims the cell picking device according to claim 1, wherein the predetermined angle is larger than 0 degree (a tilt action of claim 3 by definition creates an angle that is larger than 0 degrees.
Regarding claim 5, Modified US 12449438B2 claims the cell picking device according to claim 1.
Modified US12449438B2 is silent to teaching the predetermined angle is equal to or smaller than 2 degrees.
However, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected an angle relative to the container dimensions that creates the best suction results, routine optimization of a known variable to achieve the predictable positioning precision (See MPEP 2144.05(II)(A)).
Regarding claim 6, Modified US 12449438B2 claims the cell picking device according to claim 1, wherein the controller is further configured cause the driver to retract the suction arm at a first speed in the axial direction until an end of the pipette tip reaches a predetermined height after control for a sucking operation performed by the sucker is stopped (The cell picking device according to claim 1, wherein the controller controls the driver such that first retracting work for retracting the sucking member in the axial direction at a first speed until the end of the pipette tip reaches a predetermined height after the sucking work ends; Claim 5), and
cause the driver to retract the suction arm at a second speed larger than the first speed in the axial direction after an end of the pipette tip reaches the predetermined height (and second retracting work for retracting the sucking member in the axial direction at a second speed larger than the first speed after the end of the pipette tip reaches the predetermined height, are performed, in the first mode or the second mode; Claim 5).
Regarding claim 7, Modified US 12449438B2 claims the cell picking device according to claim 6, wherein the second speed is larger than the first speed (a second speed larger than the first speed; claim 5).
Modified US12449438B2 is silent to teaching the second speed is equal to or larger than 10 times of the first speed (emphasis added). The difference in speeds of the first and second retractors is routine optimization based on the result-effective variable of the how narrow and tapered the sample container is which determines the descent/ascent speed since fluid levels will decrease more rapidly in a tapered design (MPEP § 2144.05).
Regarding claim 8, Modified US 12449438B2 claims the cell picking device according to claim 6, wherein the predetermined height is a height of a liquid surface of a sample in the sample container (The cell picking device according to claim 5, wherein the predetermined height is a height from the bottom surface in the sample container to a liquid).
Claims 9-11 are rejected as being obvious over Modified US12449438B2 in view of Angus (US 20080264187 A1).
Regarding claim 9, Modified US 12449438B2 claims the cell picking device according to claim 1, wherein the controller is further configured to cause the suction arm to perform a discharging operation such that a sample is discharged through an end of the pipette tip (a discharging instruction receiver that receives an instruction for performing first discharging work for discharging a sample that has been sucked into the pipette tip into the sample container; claim 2) and cause the suction arm to alternatively perform the sucking and the discharging operation (The controller of ‘850 is functionally capable of alternatively perform the sucking and the discharging operation since the controller can already for both operations (discharging in claim 2 and sucking in claim 1).
Modified US12449438B2 fails to teach:
a platform configured to receive a culture plate including a plurality of wells, and a second driver that drives the platform, wherein the controller is further configured to: control the first or second driver such that a position of a well accessible by the suction arm changes sequentially in the culture plate.
Angus teaches a platform configured to receive a culture plate including a plurality of wells, (“The carousel 14 has a plurality of apertures 16 of varying size and shape for receiving sample or reagent containers 17, or one or more carriers 18,” wherein “carriers 18 include, for example, test tubes, vials and the like”; [0030]; Fig. 1)
a second driver that drives the platform (drive motor or actuator (not shown); [0065]), wherein the controller (controller (not shown); [0065]) is further configured to control the first or second driver (vertical member 202 which is connected to a drive motor or actuator (not shown)) such that a position of a well accessible by the suction arm (the machine 10 may move arm 12 and/or carousel 14 in any way known in the art to provide access by the arm 12 to fluid held in the containers 17 on the carousel 14; [0031]) changes sequentially in the culture plate (see circular order of containers 17 of Fig. 1).
Angus is considered to be analogous to the claimed invention because it is in the same field of endeavor for a sample suction and dispensing device. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the robotic pipette system taught by US12449438B2 in view of Jeffs to incorporate the teachings of Angus by adding a support plate and the associated drivers and functionality of the controller to position the suction arm to be accessible to the well in a sequential order. US12449438B2 already teaches performing these actions within a sample container (claim 1). Addition of the elements taught by Angus are a predictable variation that enables increased throughput, batch processing and is a well-known practice in sample analysis systems. Sample racks with multiple wells (e.g. 96 well plates) are common in the art and would naturally be used to improve efficiency (MPEP 2143(I)(A))).
Regarding claim 10, Modified US 12449438B2 claims the cell picking device according to claim 9 and a pipette tip rack placed on the platform and configured to hold a plurality of replacement pipette tips (See Fig. 1, items 14,16, and 17 in paragraph [0030] of Angus).
Modified US12449438B2 fails to teach
wherein the first driver is configured to detach the pipette tip from the suction arm, and the controller is further configured to:
control the first driver to detach the pipette tip from the suction arm,
control the first or second driver such that a position of a replacement pipette tip accessible by the suction arm changes sequentially in the pipette tip rack,
control the first or second driver such that any replacement pipette tip in the pipette tip rack is attached to the suction arm as the pipette tip, and
control alternatively a sucking operation, a discharging operation, detachment of the pipette tip, and attachment of the pipette tip.
Angus teaches a first driver is configured to detach the pipette tip from the suction arm (“The ejector arm 204 is rotated to swing the horizontal member 224 toward the nozzle until the slot (205 or 207) surrounds the nozzle,” and “pipette tip 25 or 27 falls into the tip compartment”; [0069]; Figs. 12a-d), and
the controller is further configured to:
control the first driver to detach the pipette tip from the suction arm (“The ejector system 200 may be configured to provide motion, e.g. rotary motion, of the ejector arm 204 in a horizontal plane,” or “along a path that is not along a horizontal plane; [0065]; Fig. 11),
control the first or second driver such that a position of a replacement pipette tip accessible by the suction arm changes sequentially in the pipette tip rack (The ejector arm 204 is connected to a drive mechanism (not shown) and controller which control and drive its movement between first and second positions; [0065]; Fig. 11),
control the first or second driver such that any replacement pipette tip in the pipette tip rack is attached to the suction arm as the pipette tip (To acquire a pipette tip 23 for use in a fluid transfer operation, the nozzle 22 and the selected pipette tip 23 are brought into alignment such that the longitudinal axis A of the nozzle 22 is aligned centrally with the open end of the pipette tip 23. The nozzle 22 is moved toward, and inserted into the pipette tip 23 until the tip 23 is firmly seated on the appropriate seating portion 30 or 32 to form a leak resistant seal between the nozzle 22 and the pipette tip 23; [0039]; Figs. 5,6), and
control alternatively a sucking operation, a discharging operation, detachment of the pipette tip and attachment of the pipette tip (Using “the controller (not shown) that operates on programmed instructions,” allows “Precise movement and control of the ejector arm 204,” and hence the order of steps of each operation can be performed in any order and the associated drivers are inherent to the operation of a controller; [0066])(MPEP § 2112).
Angus is considered to be analogous to the claimed invention because it is in the same field of endeavor for a sample suction and dispensing device. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the robotic pipette system taught by US12449438B2 in view of Jeffs and Angus to further incorporate the teachings of Angus with the addition of a pipette tip rack that holds a plurality of replacement pipette tips is further placed on the platform that allows the arm to perform detaching the pipette tip from the suction arm via a controller and associated drivers. Changing pipette tips by way of a pipette tip rack atop the platform allows a pipette detaching to occur “to avoid contamination” (Angus, [0002]) of the subsequent sample for more quality and precise results. Furthermore, allowing the controller to be programmed to perform this action is an automation of an action that would otherwise increase the turnaround time for sample analysis.
Regarding claim 11 Modified US 12449438B2 claims the cell picking device according to claim 10, wherein the second driver includes a rotator that rotates the platform in a horizontal plane (the machine 10 may move arm 12 and/or carousel 14 in any way known in the art to provide access by the arm 12 to fluid held in the containers 17 on the carousel 14; Angus [0031],
the controller is configured to cause the rotator to rotate such that the culture plate is located closer to the suction arm than the pipette tip rack when the discharging operation is performed (“disposable pipette tips 23 may also be provided on the carousel 14 and may be held in one or more carriers 19,; Angus [0030]), and
the controller is configured to cause the rotator to rotate such that the pipette tip rack is located closer to the suction arm than the culture plate when attaching of the pipette tip (With “rotational (.theta.) motion of the carousel 14 to provide access by the arm 12 to containers 17 on the carousel 14 and to…carrier 19,” the position of pipette tip rack 19 and culture plate 16 that holds containers 17 will be in different positions in relation to the arm, one closer than the other; [0031]; Angus, Fig. 1).
Prior Art
Claims 1-11 are free of the prior art and would be allowable should Applicant overcome the nonstatutory double patenting rejection.
Regarding claims 1, the closest prior art of Abe et al. (US 20160334429 A1), Jeffs et al. (US 4707337 A; 1987), Black (US 20190145995 A1, published 2019-05-16), and Tanaka et al. (US 20190381495 A1, EFD 2018-02-05) fail to teach or suggest all of the limitations of the claims as discussed by the applicant (Remarks, pages 16-17), specifically the claimed limitation “cause the first driver to further tilt the suction arm by a predetermined angle by rotating the pipette such that the pipette tip is bent at a second tilt angle that is more horizontal than the first tilt angle”.
Another reference Hecht (US 20100096405 A1) teaches a modular detachable pipette system that enables rapid filling through a large connector and precise liquid deposition through a narrow elastic tip, especially for inoculating nutrient media in serial testing (Abstract; [0018][0032]; Figs. 1-2). Hetch however, does not satisfy the amended claims because it only teaches a flexible pipette tip for dispersing fluid in a container and not for suction. There is no active tilting action, let along bending of the pipette tip at the bottom surface of the container.
Therefore, claim 1 is free of the prior art. Claims 2-11 are free of the prior art based on their dependency of all of the limitations of claim 1.
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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/V.S./Examiner, Art Unit 1758
/MARIS R KESSEL/Supervisory Patent Examiner, Art Unit 1758