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 .
Status of Claims
This office action is in response to Applicant's Amendment/Request for Reconsideration filed on 26 December 2025.
Claims 1 – 13, 15 – 16, 18 – 19, and 21 – 26 are pending. Claims 14, 17, 20, and 27 – 28 are cancelled by Applicant.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 26 December 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Examiner.
Drawings
The drawings were received on 26 December 2025. These drawings are unacceptable.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following feature must be shown or the feature canceled from the claim. No new matter should be entered.
“suitable shapes” – claim 1. Paragraph [00107] states the tip tray 103 is supported by the base by suitable shapes in inner surfaces 108a wherein specification states that these suitable shapes are not shown in the drawings.
The drawings are objected for the following reasons:
The new figure 6 shows the words, “Suitable Shapes”, enclosed in a box within the interior of a base 101; however, the words, “Suitable Shapes”, enclosed in the box are not directed towards any structure or structures within the base 101 and it is ambiguous as to what structure or structures within the base 101 is the “suitable shapes” described in paragraph [00107]. Moreover, it is more appropriate to use a reference character and a lead line to indicate a structure in a drawing. The examiner respectfully suggests amending paragraph [00107] to assign “suitable shapes” a reference character and then amending figure 6 (or remove figure 6 and amend figure 1) to show this new reference character with a lead line directed towards the structure or structures of the suitable shapes 108a on the inner surfaces of the base 101. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
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.
Claims 1 – 13, 15 – 16, 18 – 19, and 21 – 26 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 1, line 7 and 23 – 24, the limitations, “the base and/or the cover comprise one or more gas-permeable zones” and “at least one zone of said one or more gas-permeable zones is located in the bottom face of the base”, is indefinite because the first limitation is broad requiring either the base to comprise one or more gas-permeable zones, the lid to comprise one or more gas-permeable zones, or the base and the lid to comprise one or more gas-permeable zones wherein the second limitation is narrow requiring the base to comprise one or more gas-permeable zones – thus there is confusion over the intended scope of the claim in that one of the alternatives of the first limitation, “the lid to comprise one or more gas-permeable zones”, is eliminated with this combination of broad and narrow limitations. Please note, since claims 2 – 13, 15 – 16, 18 – 19, and 21 depend upon claim 1, claims 2 – 13, 15 – 16, 18 – 19, and 21 are likewise rejected under 35 USC §112(b) for indefiniteness. Additionally, claim 22 recites, “the package according to claim 1”, thus claim 22 is also rejected under 35 USC §112(b) for indefiniteness as well as claims 23 – 26 that depend upon claim 22.
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 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.
Claims 1 – 8, 10 – 13, 15 – 16, 18 – 19, and 21 – 26 are rejected under 35 U.S.C. 103 as being unpatentable over Smith (US 8 418 872 B2), in view of Riley (US 6 217 835 B1), in further view of Rainin (US 4 676 377 A).
Regarding claim 1, Smith discloses a box-shaped package, comprising:
a base (40, fig. 1), and
a cover (30, fig. 1) configured to be placed on the base to close the package, wherein:
the base and/or the cover comprise one or more gas-permeable zones (34, fig. 1) which are capable of passing gases into and out from the package in the closed configuration (Col. 5, ll. 26 – 30 describes a permeable filter 34 allowing gases such as air to enter or exit the package wherein col. 5, ll. 49 – 63 describes the permeable filter 34 can be located in the top face of the lid 30, the lateral sidewalls of the tray 40, and/or the bottom face of the tray 40); and
outside said one or more gas-permeable zones, a material of the base and of the cover comprises a plastic material (Col. 7, ll. 8 – 15 describes the lid 30 and the tray 40 made of a plastic polymer),
wherein the package further comprises a first seal element (42, fig. 1) on a perimeter of an open top end of the base (As shown in fig. 1), wherein said first seal element is fixed to and runs on the perimeter of the top end of the base along the entire length of the perimeter (Col. 4, ll. 33 – 49 describes a tray 40 having a tray lip 42 that forms or includes an upper portion of a barrier 60 to inhibit the passage of microorganisms from the unsterile exterior environment to the internal, sterile environment of the container. Figure 1 shows the tray lip 42 fixed to and running along the perimeter of the top end of the base 40 along the entire length of the perimeter) and
wherein at least one zone of said one or more gas-permeable zones is located in the bottom face of the base (Col. 5, ll. 26 – 30 describes a permeable filter 34 allowing gases such as air to enter or exit the package wherein col. 5, ll. 49 – 63 describes the permeable filter 34 can be located in the bottom face of the tray 40)
Smith further describes in a closed configuration of the package, an interface (60, fig. 2) between the base and the cover as a seal that inhibits the passage of microorganisms (Col. 4, ll. 46 – 49), but Smith does not explicitly disclose that this interface/seal between the base and the cover as gas-tight.
However, Riley, in the same field of endeavor, teaches an interface between a base (12, fig. 1) and a cover (24, fig. 1) being a seal that is gas-tight (Col. 4, ll. 20 – 25 describes a seal or interface between a receptacle 12 and a cover 24 as fluid-tight).
Riley is evidence that having the interface between the base and the cover gas-tight was within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention. Therefore, the one having ordinary skill in the art would have had a reasonable expectation of success modifying the interface of Smith such that the interface between the base and the cover is gas-tight as taught by Riley. Additionally, the one having ordinary skill in the art would have been motivated to modify the interface of Smith such that the interface between the base and the cover is gas-tight as taught by Riley in order to provide a fluid-tight seal at the boundary between the cover and the base (Col. 4, ll. 20 – 25).
Smith discloses the package further comprises a basket (50, fig. 1) for containing surgical instruments wherein this basket is located in an interior of the base (As shown in fig. 1) .
The modified Smith does not explicitly disclose said package further comprises disposable tips for a liquid handling device, and wherein said tips are supported by a plate-formed tip tray located in an interior of the base, and wherein said tips have been inserted into respective openings in the tip tray, and wherein the tip tray is supported by the base by suitable shapes in the inner surfaces of the lateral sidewalls of the base, and is located in the interior of the package in the closed configuration.
However, Rainin, in the same field of endeavor, teaches a similar box-shaped package (10, fig. 1) comprising disposable tips (28, fig. 1) for a liquid handling device, and wherein said tips are supported by a plate-formed tip tray (22, fig. 1) located in an interior of a base (12, fig. 1), and wherein said tips have been inserted into respective openings (118, fig. 2) in the tip tray, and wherein the tip tray is supported by the base by suitable shapes (90, fig. 1) in the inner surfaces of the lateral sidewalls of the base, and is located in the interior of the package in the closed configuration (As shown in figure 1).
Rainin is evidence that having the package further comprises disposable tips for the liquid handling device, and wherein these tips are supported by the plate-formed tip tray located in the interior of the base, and wherein these tips are inserted into respective openings in the tip tray, and wherein this tip tray is supported by the base by suitable shapes in the inner surfaces of the lateral sidewalls of the base, and is located in the interior of the package in the closed configuration was within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention. Therefore, the one having ordinary skill in the art would have had a reasonable expectation of success replacing the basket of Smith and modifying the package of Smith such the package further comprises disposable tips for the liquid handling device, and wherein these tips are supported by the plate-formed tip tray located in the interior of the base, and wherein these tips are inserted into respective openings in the tip tray, and wherein this tip tray is supported by the base by suitable shapes in the inner surfaces of the lateral sidewalls of the base, and is located in the interior of the package in the closed configuration, as taught by Rainin. Additionally, the one having ordinary skill in the art would have been motivated to replace the basket of Smith and to modify the package of Smith as taught by Rainin in order to provide a package that supports pipette tips as needed by a user and to have a tip tray that holds these pipette tips so that these pipette tips do not touch the inside bottom of the base or the inside top of the cover, which may contaminate the pipette tips, and allows autoclaving gas to freely contact the pipette tips within the tip tray when the package is in the closed configuration
Regarding claim 2, Smith, as modified by Riley, as further modified by Rainin, discloses the invention as recited in claim 1.
Smith discloses said one or more gas-permeable zones (34, fig. 1) are non-permeable to microbes (Col. 5, ll. 26 – 30 describes the permeable filter 34 allowing gases such as air to enter or exit the chamber without allowing passage of microorganisms).
Regarding claim 3, Smith, as modified by Riley, as further modified by Rainin, discloses the invention as recited in claim 1.
Smith discloses said one or more gas-permeable zones (34, fig. 1) are configured to prevent build-up of a pressure difference between an interior of the package and the surroundings of the package in the closed configuration (Col. 5, ll. 26 – 30 describes a permeable filter 34 allowing gases such as air to enter or exit the package. This continuous flow of air between the interior of the package and the surroundings of the package prevents any build-up of a pressure difference between the interior of the package and the surroundings of the package by allowing air to flow from areas of high pressure – either from the interior of the package or the surroundings of the package – to areas of low pressure).
Regarding claim 4, Smith, as modified by Riley, as further modified by Rainin, discloses the invention as recited in claim 1.
Smith discloses said one or more gas-permeable zones (34, fig. 1) are configured to reduce pressure differences (Col. 5, ll. 26 – 30 describes a permeable filter 34 allowing gases such as air to enter or exit the package. This continuous flow of air between the interior of the package and the surroundings of the package prevents any build-up of a pressure difference between the interior of the package and the surroundings of the package by allowing air to flow from areas of high pressure – either from the interior of the package or the surroundings of the package – to areas of low pressure).
Regarding claim 5, Smith, as modified by Riley, as further modified by Rainin, discloses the invention as recited in claim 1.
Smith discloses said one or more gas-permeable zones (34, fig. 1) comprise or consist of a film material (The plain meaning of the term, “film”, is “a thin sheet of any material” – Oxford English Dictionary. Col. 5, l. 64 – col. 6, l. 14 describes one type of filter material used in the permeable filter 34 as a medical grade paper wherein the examiner deems this medical grade paper as a film material), which is permeable to gases.
Regarding claim 6, Smith, as modified by Riley, as further modified by Rainin, discloses the invention as recited in claim 1.
Smith discloses a material of said one or more gas-permeable zones (34, fig. 1) is more permeable to gases than a material of other parts of the package (Col. 5, ll. 26 – 30 describes a permeable filter 34 allowing gases such as air to enter or exit the package wherein col. 7, ll. 8 – 15 describes the lid 30 and the tray 40 made of a plastic polymer. One having ordinary skill in the art would recognize that a permeable filter 34 that allows gases such as air to enter or exit the permeable filter 34 would be more permeable than the solid plastic polymer of the lid 30 and the tray 40. Additionally, col. 5, ll. 24 – 26 describes the permeable filter 34 as the path for gases to enter the sterilization container 10 implying gases do not enter the sterilization container 10 via the material of other parts of the package but through the permeable filter 34).
Regarding claim 7, Smith, as modified by Riley, as further modified by Rainin, discloses the invention as recited in claim 1.
The modified Smith discloses the package permeates gases only through said one or more gas-permeable zones (Smith – 34, fig. 1) in the closed configuration (Riley – Col. 4, ll. 20 – 25 describes the seal or interface between the receptacle 12 and the cover 24 as fluid-tight, wherein Smith – col. 5, ll. 26 – 30 describes a permeable filter 34 allowing gases such as air to enter or exit the package. Col. 5, ll. 24 – 26 describes the permeable filter 34 as the path for gases to enter the sterilization container 10 implying gases only enter the sterilization container 10 via the permeable filter 34).
Regarding claim 8, Smith, as modified by Riley, as further modified by Rainin, discloses the invention as recited in claim 1.
Smith discloses a material of said one or more gas-permeable zones (34, fig. 1) comprises (Col. 5, l. 64 – col. 6, l. 14 describes one type of filter material used in the permeable filter 34 as a medical grade paper)
Regarding claim 10, Smith, as modified by Riley, as further modified by Rainin, discloses the invention as recited in claim 1.
Smith discloses in the closed configuration said one or more gas-permeable zones (34, fig. 1) are separate from the interface (60, fig. 2) between the base (40, fig. 1) and the cover (30, fig. 1) (As shown in figures 1 and 2).
Regarding claim 11, Smith, as modified by Riley, as further modified by Rainin, discloses the invention as recited in claim 1.
Smith discloses outside said one or more gas-permeable zones (34, fig. 1) the base (40, fig. 1) and the cover (30, fig. 1) are not capable of passing gases into or out from the package (Col. 5, ll. 24 – 26 describes the permeable filter 34 as the path for gases to enter the sterilization container 10 implying gases only enter the sterilization container 10 via the permeable filter 34. Additionally, col. 7, ll. 8 – 15 describes the lid 30 and the tray 40 made of a plastic polymer wherein one having ordinary skill in the art would recognize that this plastic polymer is not capable of passing gases into or out of the sterilization container 10 of the modified Smith).
Regarding claim 12, Smith, as modified by Riley, as further modified by Rainin, discloses the invention as recited in claim 1.
Smith discloses the material of the base (40, fig. 1) and of the cover (30, fig. 1) comprises or consists of a thermoplastic material (Col. 7, ll. 8 – 15 describes the lid 30 and the tray 40 made of a plastic polymer such as nylon wherein nylon is a type of thermoplastic).
Regarding claim 13, Smith, as modified by Riley, as further modified by Rainin, discloses the invention as recited in claim 1.
The modified Smith discloses the base (Smith – 40, fig. 1) is box-shaped (Smith – The plain meaning of the term, “box”, is “a square or rectangular container with stiff sides” — Cambridge dictionary, thus the examiner interprets the limitation, “box-shaped”, as square or rectangular. Figure 1 shows the tray 40 as square or rectangular) and comprises four lateral sidewalls and a bottom face (Smith – As shown in fig. 1), the base having the open top end in an opened configuration (Smith – As shown in fig. 1); wherein the cover (Smith – 30, fig. 1) is box-shaped (Smith – Figure 1 shows the lid 30 as square or rectangular) and comprises four lateral sidewalls and a top face (Smith – As shown in fig. 1), the cover having an open bottom end in the opened configuration (Smith – As shown in fig. 1), wherein the openings (Rainin – 118, fig. 2) in the tip tray (Rainin – 22, fig. 1) are adapted for receiving and holding the disposable tips (Rainin – 28, fig. 1) for the liquid handling device; wherein, in the closed configuration of the package, said cover lies on the base, the open top end of the base and the open bottom end of the cover face each other, and the perimeter of the base and the perimeter of the cover engage with each other via said first seal element (Smith – 42, fig. 1) (Smith – As shown in figs. 1, 2).
Regarding claim 15, Smith, as modified by Riley, as further modified by Rainin, discloses the invention as recited in claim 1.
The modified Smith discloses said first seal element (Smith – 42, fig. 1) is configured to hermetically seal (Riley – Col. 4, ll. 20 – 25 describes a seal or interface between a receptacle 12 and a cover 24 as fluid-tight) the interface (Smith – 60, fig. 2) between the base (Smith – 40, fig. 1) and the cover (Smith – 30, fig. 1) in the closed configuration of the package.
Regarding claim 16, Smith, as modified by Riley, as further modified by Rainin, discloses the invention as recited in claim 1.
Smith discloses said first seal element (42, fig. 1) runs on and along the entire perimeter of the open top end of the base (40, fig. 1) (Figure 1 shows the tray lip 42 fixed to and running along the perimeter of the top end of the base 40 along the entire length of the perimeter).
Regarding claim 18, Smith, as modified by Riley, as further modified by Rainin, discloses the invention as recited in claim 1.
Smith discloses the material of the first seal element (42, fig. 1) comprises or consists of a thermoplastic elastomer material selected from the group consisting of thermoplastic polyolefin elastomers (Col. 3, ll. 17 – 22 describes the rim of the tray made of material that is heat activated during steam sterilization to secure the lid to the tray wherein such materials include hot melt adhesives made from polyolefins. One having ordinary skill in the art would recognize that polyolefins are a family of thermoplastic elastomers)
Regarding claim 19, Smith, as modified by Riley, as further modified by Rainin, discloses the invention as recited in claim 1.
The modified Smith discloses the package is hermetically re-sealable such that said first seal element (Smith – 42, fig. 1) is configured to repeatedly hermetically seal (Riley – Col. 4, ll. 20 – 25 describes a seal or interface between a receptacle 12 and a cover 24 as fluid-tight) the interface (Smith – 60, fig. 2) between the base (Smith – 40, fig. 1) and the cover (Smith – 30, fig. 1) upon repeated closures of the package (Smith – Col. 7, ll. 12 – 15 describes the tray 40 and the lid 30 being reusable).
Regarding claim 21, Smith, as modified by Riley, as further modified by Rainin, discloses the invention as recited in claim 1.
The modified Smith discloses said one or more gas-permeable zones (Smith – 34, fig. 1) comprise a paper-based material (Smith – Col. 5, l. 64 – col. 6, l. 14 describes one type of filter material used in the permeable filter 34 as a medical grade paper) (Smith – Col. 7, ll. 8 – 15 describes the lid 30 and the tray 40 made of a plastic polymer such as nylon wherein nylon is a type of thermoplastic), and wherein the package further comprises the disposable tips (Rainin – 28, fig. 1) for the liquid handling device.
Regarding claim 22, Smith, as modified by Riley, as further modified by Rainin, discloses the invention as recited in claim 1.
The modified Smith discloses a method, comprising:
providing the package according to claim 1 (See claim 1), and
sterilizing said package in the closed configuration by a gas sterilization process (Smith – Col. 12, ll. 62 – 66 describes a gas sterilization process using ethylene oxide)
Regarding claim 23, Smith, as modified by Riley, as further modified by Rainin, discloses the invention as recited in claim 22.
Smith discloses sterilizing is carried out by the gas sterilization process in which a bactericidal gas is used as a sterilizing gas (Col. 12, ll. 62 – 66 describes a gas sterilization process using ethylene oxide), and wherein said one or more gas-permeable zones (34, fig. 1) are permeable to said bactericidal gas (Col. 5, ll. 24 – 26 describes the permeable filter 34 providing a path for a sterilant – in this case, ethylene oxide).
Regarding claim 24, Smith, as modified by Riley, as further modified by Rainin, discloses the invention as recited in claim 22.
Smith discloses sterilizing is carried out by the gas sterilization process in which ethylene oxide is used as a sterilizing gas (Col. 12, ll. 62 – 66 describes a gas sterilization process using ethylene oxide), and wherein said one or more gas-permeable zones (34, fig. 1) are permeable to the ethylene oxide (Col. 5, ll. 24 – 26 describes the permeable filter 34 providing a path for a sterilant – in this case, ethylene oxide).
Regarding claim 25, Smith, as modified by Riley, as further modified by Rainin, discloses the invention as recited in claim 22.
Smith discloses said one or more gas-permeable zones (34, fig. 1) are non-permeable to microbes (Col. 5, ll. 26 – 30 describes the permeable filter 34 allowing gases such as air to enter or exit the chamber without allowing passage of microorganisms) that a bactericidal gas is capable of exterminating during said gas sterilization process.
Regarding claim 26, Smith, as modified by Riley, as further modified by Rainin, discloses the invention as recited in claim 22.
The modified Smith discloses after said sterilizing step, and after opening the package, the package is hermetically re-sealable by closing the cover and bringing the package back to the closed configuration (Col. 7, ll. 12 – 15 describes the tray 40 and the lid 30 being reusable implying the tray 40 and the lid 30 being reusable after a sterilizing step).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Smith (US 8 418 872 B2), in view of Riley (US 6 217 835 B1), in further view of Rainin (US 4 676 377 A), in further view of Frieze (US 2005/0238530 A).
Regarding claim 9, Smith, as modified by Riley, as further modified by Rainin, discloses the invention as recited in claim 1.
Smith discloses filter materials include nonwoven filter materials such as medical grade paper, polyolefin meltblown materials, and nonwoven laminate materials such as laminates of spunbond materials and meltblown materials wherein these materials are stable in the presence of steam and heat as well as in the presence of ethylene oxide (Col. 6, ll. 8 – 14).
The modified Smith does not explicitly disclose the one or more gas-permeable zones comprise high-density spunbound polyethylene.
However, Frieze teaches a similar package having one or more gas-permeable zones (vents 114 having a filter 124 in a top face of the lid 24, fig. 5A) comprising high-density spunbound polyethylene ([0080], Il. 25 — 35 describes when steam or ethylene oxide is used as a sterilizing agent, paper or the Tyvek® brand of spunbound polyethylene can be used).
Because the filter material of Smith having the nonwoven laminate materials such as laminates of spunbond materials filter and the filter material of Frieze having the high-density spunbound polyethylene both inhibit microorganisms from passing through the filter in a sterilization container system, the filter material of Smith and the filter material of Frieze are functional equivalents.
Response to Arguments
Applicant’s arguments, filed 26 December 2025, with respect to the rejection of claims 1 – 8, 10 – 16, 18 – 19, and 21 – 26 under 35 U.S.C. §103 have been fully considered but are not persuasive. Applicant argues:
Applicant respectfully traverses the rejections for at least the reasons laid out below, namely that Smith teaches away from at least one feature and the modification of Smith with Riley and Rainin would change the principle of operation of Smith and/or render Smith unsatisfactory for its intended purpose.
Smith discusses a container for sterilizing and storing surgical materials and preserving surgical materials in a sterilized condition.
The Office Action states on page 14,"Smith discloses at least one zone of said one or more gas-permeable zones (34, fig. 1) is located in the bottom face of the base (40, fig. 1) (Col. 5, ll. 49- 63 describes the permeable filter 34 can be located in the bottom face of the tray 40)."
However, Smith also says in Col. 5 line 59 that "The filter may be located on the bottom of the tray although such a location risks damage to the filter as the container is moved and stored after sterilization." Smith further says in Col. 5 line 49 - 50 that "The permeable filter 34 is desirably located in the central area of the lid 30 ..." Therefore, Applicant respectfully argues that Smith teaches away from feature (a). "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, ...would be led in a direction divergent from the path that was taken by the applicant.”
In response to applicant’s argument that Smith teaches away from the limitation, “at least one zone of said one or more gas-permeable zones is located in the bottom face of the base”, the applicant argues that since Smith discloses a preferred or desired embodiment as a gas-permeable zones located in the top face of the lid, this preferred or desired embodiment teaches away from a nonpreferred or less than optimal embodiment of Smith of a gas-permeable zone located in the bottom face of the base; however, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). In Gurley, the invention was directed to an epoxy impregnated fiber-reinforced printed circuit material. The applied prior art reference taught a printed circuit material similar to that of the claims but impregnated with polyester-imide resin instead of epoxy. The reference, however, disclosed that epoxy was known for this use, but that epoxy impregnated circuit boards have "relatively acceptable dimensional stability" and "some degree of flexibility," but are inferior to circuit boards impregnated with polyester-imide resins. The court upheld the rejection concluding that applicant’s argument that the reference teaches away from using epoxy was insufficient to overcome the rejection since "Gurley asserted no discovery beyond what was known in the art." Id. at 554, 31 USPQ2d at 1132. (See MPEP 2123(II)). Please note, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) In Celeritas, the court held that the prior art anticipated the claims even though it taught away from the claimed invention. See MPEP 2123 (I). In the instant case, Smith states, “[t]he filter may be located on the bottom of the tray although such a location risks damage to the filter as the container is moved and stored after sterilization” and further states, “[g]enerally, however the exact location of the permeable filter is not critical as long as [the filter] is present and functional”, indicating that though the position of the filter on the bottom of the tray is the nonpreferred or less than optimal embodiment, the position of the filter on the bottom of the tray is a viable configuration known in the art. Moreover, the fact that the gas-permeable zone located in the bottom face of the base is shown to be less than optimal does not vitiate the fact that it is disclosed by Smith. Therefore, the applicant’s argument that Smith teaches away from the limitation, “at least one zone of said one or more gas-permeable zones is located in the bottom face of the base”, is unpersuasive.
Applicant further argues:
Applicant respectfully submits that Rainin does not disclose at least feature(a) of claim 1 as amended. Rainin discusses that the top of the container can have a vent that can be open or closed for auto-claving. However, Rainin does not disclose that the vent could be on the bottom of the container.
Additionally, the Applicant respectfully submits that adding the vent openings of Riley to Smith would change the principle of operation of Smith and/or render Smith unsatisfactory for its intended purpose.
As discussed in MPEP 2143.01, section V, "If a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there may be no suggestion or motivation to make the proposed modification."
Further, as discussed in MPEP 2143.01, section VI: "The proposed modification cannot change the principle of operation of a reference. If the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious."
Specifically, Smith modified with vent openings of Riley would change the principle of operation of Smith by changing the sterilization gas flow of Smith from a container where the gas enters from the top to a container where the gas enters from the bottom (thus having different gas flow characteristics).
Further, adding the vent openings of Riley on the bottom would also require a filter on the bottom of the container covering these openings. Such a filter would be susceptible to water condensation (from steam gas) collecting and saturating the filter and causing gas flow and sterilization issues. This would render Smith unsatisfactory for its intended purpose.
Furthermore, Applicant respectfully submits there would be no motivation to add the vent openings of the container of Riley to the containers of Smith and/or Rainin because this would present a redundant advantage as Smith and Rainin already have vent openings. Also, as mentioned Smith teaches away from such an addition.
The Patent Trial and Appeal Board and courts have regularly held that no rational basis exists where the primary reference already possesses the alleged advantage(s) provided by a proposed modification. For example, in Kinetic Concepts v. Smith and Nephew, the Federal Circuit held that an advantage provided by one prior art reference was redundant with an advantage already possessed by another prior art reference (on page 46; "In addition, both of these references independently accomplish similar functions, namely, draining fluids. Because each device independently operates effectively, a person having ordinary skill in the art, who was merely seeking to create a better device to drain fluids from a wound, would have no reason to combine the features of both devices into a single device."
The remaining claims within the present application all depend on claim 1 as amended herein. Therefore, Applicant respectfully submits that all claims are patentable over the combination of Smith, Riley, and Rainin.
Since the rejection of claims 1 – 8, 10 – 16, 18 – 19, and 21 – 26 under 35 U.S.C. §103 does not rely on Riley or Rainin to teach the limitation, “at least one zone of said one or more gas-permeable zones is located in the bottom face of the base”, applicant’s arguments concerning Riley or Rainin teaching the limitation, “at least one zone of said one or more gas-permeable zones is located in the bottom face of the base”, are inapposite and do not apply in the current rejection.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID G SHUTTY whose telephone number is 571-272-3626. The examiner can normally be reached 7:30 am - 5:30 pm, Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SHELLEY SELF can be reached on 571-272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAVID G SHUTTY/Examiner, Art Unit 3731
13 January 2026
/SHELLEY M SELF/Supervisory Patent Examiner, Art Unit 3731