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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-18 in the reply filed on 10/21/25 is acknowledged. The traversal is on the ground(s) that the inventions are closely related and overlap. This is not found persuasive because the apparatus as claimed does not recite or require the membrane, pipetting or sample elements that are recited in method claim 19. The Examiner again submits the additional elements require searches that are not required for the apparatus claims. Therefore, the requirement is still deemed proper and is therefore made FINAL.
Inventorship
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.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 1-5 and 9-15 are rejected under 35 U.S.C. 103 as being unpatentable over Chernomorsky et al. (US 2014/0196550) in view of Tuuminen (US 5,474,742). Chernomorsky teaches a system for processing cells that includes a microplate having wells and inserts in the wells for containing the cellular material. The embodiments of the device of Chernomorsky most relevant to the instant device are shown in Figures 1A, 3A and 8A-9B; and described in Paragraphs 0019-0032.
Regarding claims 1, 3, 9 and 13 – As shown in Figures 1A, 3A and 8A-9B, Chernomorsky teaches an apparatus that includes a multiwell plate (tray 100) having a top side with a plurality of openings that form a plurality of respective wells (102).
The apparatus further includes a plurality of retention elements (sample insert or basket 800/900) for retaining materials in the plurality of wells (102). The plurality of retention elements (sample insert or basket 800/900) include multiple web elements (sidewall portions 810/910) which extend downwards from the top opening and the ends of the web elements are connected to one another to form a bottom side of the apparatus by means of an annular connection element (bottom wall 812/912) which has a central opening. The multiple web elements (sidewall portions 810/910) include openings (openings 808/908) between the webs (sidewall portions 810/910) which extend continuously from the top opening of the retention element (800/900) to the connection element (bottom wall 812/912).
With respect to claims 3 and 13, the Examiner submits a pipetting needle can be inserted downwards from above through the respectively corresponding opening of the retention element (800/900) along a central axis of symmetry of the retention element right up to the annular connection element.
Chernomorsky does not teach a support structure having respective openings corresponding to the retention elements such that the retention elements are connected by the support structure.
Tuuminen teaches an apparatus for retaining an array of solid materials in the wells of a microplate. The embodiment of the device most relevant to the instant claims is shown in Figures 5-7 and described in column 2, line 65 – column 3, line 26. As show in Figures 5-7, the device of Tuuminen includes a support plate (frame plate 1.1) having a plurality of openings corresponding to the wells of a microplate with each opening being attached to a retainer or basket (5.1) for containing a solid bead or body for reaction. During use, the support plate (frame plate 1.1) is placed on the well plate such that the baskets (5.1) are located in the wells of the microplate. The Examiner submits it would have been obvious to one of ordinary skill in the art at the time of the effective date of the invention to combine the support plate having a plurality of baskets from Tuuminen with the device of Chernomorsky. One of ordinary skill in the art at the time would add the support plate to Chernomorsky in order to load or place a plurality of baskets into the wells as taught by Tuuminen. See also MPEP 2144.04, Section V, B – “Making Integral”.
Regarding claim 2 and 12 – Figures 8A, 8B and 9B show a retention element (800/900) having a flat bottom (bottom wall 812/912) which is parallel to the support plate.
Regarding claims 4, 5, 14 and 15 – Figures 8B and 9B show a retention element having webs (sidewall portions 810/910) symmetrically arranged around a central axis of the retention element and a tapering portion at the bottom of the retention element. Also the webs (sidewall portions 810/910) are arranged at first edge sections of the edge and wherein the downwardly extending openings (openings 808/908) between the webs (sidewall portions 810/910) are arranged at second edge sections of the edge, such that mutually closest, adjacent edge sections of adjacent openings of the support structure are respectively second edge sections.
Regarding claims 10 and 11 –The Examiner submits the Chernomorsky and Tuuminen references are silent as to the gap distances from the retention element to the bottom wall and side wall of the well. The Examiner takes the position that the difference between the prior art and the claims is one of relative dimensions (the gap distances) and the claimed device would not perform different than the prior art. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In this case the claimed device would not perform the function of containing material and allowing fluid flow into the retention member differently than the cited prior art. MPEP 2144.04, Section IV, A.
Claims 6-8 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Chernomorsky et al. (US 2014/0196550) in view of Tuuminen (US 5,474,742) and further in view of Guelzow et al. (US 7,347,977). Chernomorsky and Tuuminen as combined above in Paragraphs 7-12 teach every element of claims 6-8 and 16-18 except for the handle. Guelzow teaches a microtitration plate having a seal plate. The embodiment of the device is best shown in Figures 3 and 6. The device includes a microplate (1) having a plurality of wells and a lid (20) having plate (21) with a plurality of seals (22) that are inserted into the wells (3). As shown in Figure 6, Guelzow provides a handle (28) for the lid plate (21) which may be used to provide a handling surface and locking engagement with the microplate. See column 6, lines 38-67. The Examiner submits it would have been obvious to one of ordinary skill in the art at the time of the effective date of the invention to combine the handle element from Guelzow with the combined teachings of Chernomorsky and Tuuminen. One of ordinary skill in the art would add the handle to Chernomorsky and Tuuminen in order to provide a surface for grasping the support plate and locking engagement as taught by Guelzow.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DWAYNE K HANDY whose telephone number is (571)272-1259. The examiner can normally be reached M-F 10AM-7PM.
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/DWAYNE K HANDY/Examiner, Art Unit 1798 January 23, 2026
/CHARLES CAPOZZI/Supervisory Patent Examiner, Art Unit 1798