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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/20/2026 has been entered.
Status of Claims
Claim 1 and 3-4 are pending and under examination.
Claim 2 has been canceled.
Response to Amendment
Based on the remarks, received 03/20/2026, the previous art rejection over Denninger has been modified to address the amended claims (see below).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 and 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Denninger et al. (US 2014/0231217; already of record – hereinafter “Denninger”), and further in view of Sinz et al. (US 2019/0154717; already of record – hereinafter “Sinz”).
Regarding claim 1, Denninger discloses a specimen transport apparatus (Denninger; fig. 1, #100, [0063]) comprising:
a specimen holder (Denninger; fig. 5, #1’, [0091]) that holds a specimen container (Denninger; figs. 1, 4, 5, #3, [0063, 0091]) to which a specimen identifier is attached (Denninger; fig. 5, #9, [0092]) and that is provided with a transport magnetic body (Denninger; fig. 5, #7, [0091]); and
a plurality of electromagnets that are arranged under a transport surface to transport the specimen holder by attracting or repelling the transport magnetic body (Denninger; fig. 9, #5_1, #5_2, #5_3, [0103-0107]),
wherein the specimen holder whose horizontal section is circular (Denninger; figs. 1, 4, 5, #8, [0088,0091]) further has a disk-shaped positioning magnetic body (Denninger; fig. 5, #6, [0091]),
wherein an axial center of the disk-shaped positioning magnetic body is located at a position of the central axis of the specimen container (Denninger; fig. 5, #6, [0091]), and
wherein the transport magnetic body has a larger shape than a shape of the disk-shaped positioning magnetic body (Denninger disclose transport magnetic body 7 having a ring shape comprising a larger outer radius than the disk-shaped positioning magnetic body 6; fig. 5), and
wherein a direction of the specimen holder at a time of finishing the transporting is set to a fixed direction (Denninger disclose the specimen holder can be controlled on a given transport section to have the same transport direction r, wherein the container carriers can be moved unidirectionally; fig. 1, “r”, [0072]).
Denninger does not teach the transport magnetic body is disk-shaped having an axial center eccentric with respect to a central axis of the specimen container, so that a magnetic force of the disk-shaped transport magnetic body is higher than a magnetic force of the disk-shaped positioning magnetic body.
However, Sinz teach the analogous art of a specimen transport apparatus (Sinz; fig. 3, #100, [0057-0058]) comprising a holder (Sinz; fig. 9, #210, [0075]) that is provided with a disk-shaped transport magnetic body (Sinz; fig. 9, #243, [0075]), and a disk-shaped positioning magnetic body (Sinz; fig. 9, #211, [0054, 0065]), wherein an axial center of the disk-shaped transport magnetic body is eccentric with respect to a central axis of the holder (Sinz; fig. 9, #243). Further, if it is deemed Denninger does not teach wherein a direction of the specimen holder at a time of finishing the transporting is set to a fixed direction, Sinz teach the eccentric second magnetically active device 243 is controlled by the electro-magnetic actuators 120 to rotate the holder about a vertical axis to establish a desired field of view for camera/scanner 160; [0075].
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the transport magnetic body of Denninger to be disk-shaped wherein an axial center is eccentric with respect to a central axis of the holder, as taught by Sinz, because the disk-shaped transport magnetic body with an axial center that is eccentric with respect to the central axis of the holder creates a magnetic anisotropy allowing rotation of the holder on the transport plane around a vertical axis in order to establish a desired field of view (Sinz; [0075]), and would further allow adjacent electromagnets arranged under the transport surface to attract or repel the eccentric transport magnetic body while minimizing interference or influence from the magnetic field of the centrally positioned positioning magnetic body. Further, the modification of the larger transport magnetic body of Denninger to be disk-shaped and eccentric to a central axis of the holder would result the claimed structure. Accordingly, modified Denninger in view of Sinz teach a disk-shaped transport magnetic body having a larger shape than the disk-shaped positioning magnetic body so that a magnetic force of the disk-shaped transport magnetic body is higher than a magnetic force of the disk-shaped positioning magnetic body. NOTE: When the claimed invention and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01. As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. See MPEP 2112. A review of applicant’s as-filed specification states “As a method of increasing a magnetic force of the transport magnetic body 201, larger-sizing of the shape of the transport magnetic body 201, or the use of a magnetic body having high flux density as the transport magnetic body 201 is considered.”, see paragraph [0023]. In this case, Denninger disclose the outer diameter of the transport magnetic body 7 is larger than the diameter of the positioning magnetic body 6, therefore having “larger-sizing of the shape” and Sinz teach the transport magnetic body 243 and the positioning magnetic body 211 causes a magnetic anisotropy to rotate the holder around a vertical axis by a magnetic force resulting from an interaction between the magnetic field of the electro-magnetic actuators and the anisotropic magnetic field of the base portion (Sinz; [0075]) which would have a higher magnetic force. One of ordinary skill in the art would have expected this modification could have been performed with a reasonable expectation of success since Denninger and Sinz both teach a specimen transport apparatus that transport holders using a plurality of electromagnets and a positioning magnet.
Regarding claim 3, modified Denninger teach the specimen transport apparatus according to claim 1 above, wherein the specimen holder is rotated, while attracting the disk-shaped positioning magnetic body with a first electromagnet located directly under the disk-shaped positioning magnetic body, of the plurality of the electromagnets, by sequentially attracting or repelling the disk-shaped transport magnetic body with second electromagnets located around the first electromagnet (The modification of the transport magnetic body of Denninger to be disk-shaped wherein an axial center is eccentric with respect to a central axis of the holder, as taught by Sinz, has previously been discussed in claim 1 above. Sinz further disclose rotating the specimen holder using a first electromagnet from a plurality of electromagnets to attract the disk-shaped positioning magnetic body and attracting or repelling the disk-shaped transport magnetic body with a second electromagnet located around the first electromagnet; fig. 9, [0075]).
Regarding claim 4, modified Denninger teach the specimen transport apparatus according to claim 3 above, wherein the disk-shaped transport magnetic body has a higher magnetic flux density than the disk-shaped positioning magnetic body (The modification of the transport magnetic body of Denninger to be disk-shaped wherein an axial center is eccentric with respect to a central axis of the holder, as taught by Sinz, has previously been discussed in claim 1 above. Sinz additionally teach the transport magnetic body 243 and the positioning magnetic body 211 causes a magnetic anisotropy to rotate the holder around a vertical axis by a magnetic force resulting from an interaction between the magnetic field of the electro-magnetic actuators and the anisotropic magnetic field of the base portion; [0075]. Thus, the transport magnetic body generating a higher magnetic flux density than the positioning magnetic body in order to achieve the function of rotating the holding about a vertical axis.
Response to Arguments
Applicant’s arguments, filed 03/20/2026, have been fully considered but were not found persuasive.
Applicant argues on pages 4-6 of their remarks towards the claim amendments “wherein a direction of the specimen holder at a time of finishing the transporting is set to a fixed direction”, that Applicant has determined a particular arrangement of magnetic bodies for positioning a specimen holder to read the bar code on a specimen container without additionally providing a rotating apparatus to rotate the specimen holder. The examiner respectfully disagrees. First, Denninger disclose the specimen holder can be controlled on a given transport section to have the same transport direction r, wherein the container carriers can be moved unidirectionally; fig. 1, “r”, [0072]. Secondly, Sinz specifically disclose a disk-shaped holder comprising a disk-shaped transport magnetic body and a disk-shaped positioning magnetic body arrangement, and rotation of the specimen holder about a vertical axis by creating a magnetic anisotropy in order to establish a desired field of view for a camera 160 to detect barcodes or other identification tags (Sinz; figs. 1 & 9, [0066, 0075]).
Applicants argues, see pages 6-8 of their remarks, that Denninger does not teach or suggest Applicant’s disk-shaped transport magnetic body and a disk-shaped positioning magnetic body arrangement which includes: a specimen holder that holds a specimen container to which a specimen identifier is attached and that is provided with a disk-shaped transport magnetic body; and a plurality of electromagnets that are arranged under a transport surface to transport the specimen holder by attracting or repelling the disk-shaped transport magnetic body, wherein an axial center of the disk-shaped transport magnetic body is eccentric with respect to a central axis of the specimen container, wherein the specimen holder whose horizontal section is circular further has a disk-shaped positioning magnetic body, wherein an axial center of the disk-shaped positioning magnetic body is located at a position of the central axis of the specimen container, wherein the disk-shaped transport magnetic body has a larger shape than a shape of the disk-shaped positioning magnetic body so that a magnetic force of the disk-shaped transport magnetic body is higher than a magnetic force of the disk-shaped positioning magnetic body, and wherein a direction of the specimen holder at a time of finishing the transporting is set to a fixed position, as now recited in Applicant’s claim 1. However, the examiner respectfully disagrees. First, applicants merely recite the claim language and then state that the prior art does not teach the claim language. Therefore, Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Second, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Based on the claim amendments, the examiner has modified the rejection over Denninger in view of Sinz, and the examiner asserts that modified Denninger teach the limitations of claim 1 (see above).
Applicants argues, see pages 8-10 of their remarks, that Sinz does not teach or suggest Applicant’s disk-shaped transport magnetic body and a disk-shaped positioning magnetic body arrangement which includes: a specimen holder that holds a specimen container to which a specimen identifier is attached and that is provided with a disk-shaped transport magnetic body; and a plurality of electromagnets that are arranged under a transport surface to transport the specimen holder by attracting or repelling the disk-shaped transport magnetic body, wherein an axial center of the disk-shaped transport magnetic body is eccentric with respect to a central axis of the specimen container, wherein the specimen holder whose horizontal section is circular further has a disk-shaped positioning magnetic body, wherein an axial center of the disk-shaped positioning magnetic body is located at a position of the central axis of the specimen container, wherein the disk-shaped transport magnetic body has a larger shape than a shape of the disk-shaped positioning magnetic body so that a magnetic force of the disk-shaped transport magnetic body is higher than a magnetic force of the disk-shaped positioning magnetic body, and wherein a direction of the specimen holder at a time of finishing the transporting is set to a fixed position, as now recited in Applicant’s claim 1. However, the examiner respectfully disagrees. First, applicants merely recite the claim language and then state that the prior art does not teach the claim language. Therefore, Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Second, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Based on the claim amendments, the examiner has modified the rejection over Denninger in view of Sinz, and the examiner asserts that modified Denninger teach the limitations of claim 1 (see above).
Applicant argues, see pages 10-11 of their remarks that it would not have been known to modify Denninger’s laboratory sample distribution system based on Sin’z teaching of a second magnetically active device in an attempt to provide Applicant’s arrangement without hindsight analysis. The examiner respectfully disagrees. Denninger and Sinz both teach laboratory distribution system comprising specimen holders having a plurality of permanent magnets configured to interact with electromagnets to transport samples, and it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the transport magnetic body of Denninger to be disk-shaped wherein an axial center is eccentric with respect to a central axis of the holder, as taught by Sinz, because the disk-shaped transport magnetic body with an axial center that is eccentric with respect to the central axis of the holder creates a magnetic anisotropy allowing rotation of the holder on the transport plane around a vertical axis in order to establish a desired field of view (Sinz; [0075]), and would further allow adjacent electromagnets arranged under the transport surface to attract or repel the eccentric transport magnetic body while minimizing interference or influence from the magnetic field of the centrally positioned positioning magnetic body. Further, in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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.
Other References Cited
The prior art of made of record and not relied upon is considered pertinent to Applicant’s disclosure include:
King et al. (US 2010/0236445) disclose a transport system and transport vehicle comprising a central magnet between two half magnets configured to transport the vehicle.
Heise et al. (US 2017/0138971) disclose a laboratory distribution system comprising a sample holder with a transport magnetic body and a positioning magnetic body.
Hoehnel (US 2019/0018027) disclose a laboratory sample distribution system and method of controlling a plurality of electromagnetic actuators that drive a specimen holder.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CURTIS A THOMPSON whose telephone number is (571) 272-0648. The examiner can normally be reached on M-F: 7:00 a.m. - 5:00 p.m..
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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.
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/C.A.T./Examiner, Art Unit 1798
/BENJAMIN R WHATLEY/Primary Examiner, Art Unit 1798
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