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 .
This action is in response to papers filed December 05, 2025. The amendments have been thoroughly reviewed and entered. Any previous objection/ rejection not repeated herein has been withdrawn. New and/or modified grounds for rejection, necessitated by the amendments, are discussed.
Drawings
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 “respective triangular-shaped planar surface extending between each of the one or more blades and the tip, at least one of the triangular-shaped planar surfaces having a vertex aligned with the acute-angled cutting edge and having a base adjoining the planar annulus” as now recited in claims 1, 20, and 22-24 must be shown or the feature(s) canceled from the claim(s). 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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-11 and 13-24 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
At the top of page 10 of applicant’s above referenced reply, cites as support for the new amendments to the independent claims applicant’s specification para [0062] and Fig. 3B. This cited portion recites “[i]n the depicted embodiment, the acute angled cutting edge 344 can extend along the length L″. The acute angled cutting edge 344 could extend along the length L′, as well. In some embodiments, the length L′ can include triangular-shaped planar surfaces extending from the flat annular tip end, as best shown in FIG. 3A. The flat annular tip end 333 may be formed in a plane perpendicular to the axial axis A1. Acute-angled cutting edge 344 can have a cutting angle Δ, as shown in FIG. 3E-3E, of from 25 degrees to 45 degrees, or even a cutting angle Δ of from 30 degrees to 40 degrees. This cutting angle Δ provides a knife-like edge that can readily cut the well cover 112 as the pipette tip 131 is driven in the −Z direction. In each of the embodiments shown, the acute-angled cutting edge 344 is formed by a first planar surface 352 intersecting with a second planar surface 354 to form the cutting angle Δ on at least some of the one or more blades, and, in the depicted embodiment, on all of the blades 342.” Applicant’s reply also cites for support Fig. 7B on page 12 (see conical portion 740C, blades 342 and triangular-shaped planar surface extending between the conical portion 740C and the blades 342). However, the triangular-shaped planar surfaces are not pointed out with any reference number. Nor does the examiner find any structure (without a refence number) that would support the at least one triangular-shaped portions (one or more are not shown any of the Figures) having a vertex aligned with the acute-angled cutting edge 344 and a base adjoining the planar annulus 333. The only portion the examiner can verify is the conical portion 740C, which does not appear to have any vertex or base, much less a reference number associated with a vertex or base. While this claimed language may find antecedent basis in the specification, the particulars of the triangular-shaped surfaces are not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor had possession of the claimed invention. This is considered new matter.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-11 and 13-24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As discussed above, Independent claims 1, 20, 22, 23, and 24 now recite “the pipette tip further comprising a respective triangular- shaped planar surface extending between each of the one or more blades and the tip, at least one of the triangular- shaped planar surfaces having a vertex aligned with the acute-angled cutting edge and having a base adjoining the planar annulus”.
It is not clear what applicant means by a triangular-shaped planar surface extending between each of the one or more blades and the tip. First, how can triangular shaped planar surfaces exist between each blade, when the claim only requires one blade? In addition, the limitations “at least one of the triangular- shaped planar surfaces having a vertex aligned with the acute-angled cutting edge and having a base adjoining the planar annulus” is confusing and indefinite since the examiner cannot find what structure supports the “one or more than” triangular shaped planar surfaces with a vertex and base.
As discussed above, applicant’s reply points to applicant’s para [0062] and Fig. 3B and Fig. 7B (see conical portion 740C, blades 342 and triangular-shaped planar surface extending between the conical portion 740C and the blades 342). However, the triangular shaped planar surfaces are not pointed out. Nor does the examiner find any at least one triangular-shaped portions which have a vertex aligned with the acute-angled cutting edge 344 and a base adjoining the planar annulus 333. This is confusing and indefinite. The only portion the examiner can verify is the conical portion 740C, which does not have any vertex or base.
Prior art
For the reasons outlined in 35 U.S.C. 112 above, claims 1-11 and 13-24 are not being treated with prior art. MPEP 2173.06(II) states, “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art”. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), “a rejection under 35 U.S.C. 102/103 should not be based on considerable speculation about the limitations employed in a claim or assumptions that must be made as to the scope of the claims.” However, should applicant clarify or include amendments to clarify the previous prior art may be applied in the next Official action.
Response to Arguments
Applicant's arguments filed December 05, 2025 have been fully considered but they are not persuasive. For the reasons delineated above, the claims cannot be reasonably interpreted with respect to the prior art. The examiner invites applicant to contact the examiner regarding any clarifications that would advance prosecution. The examiner did make several attempts to contact applicant’s representative, Michael Krenicky via the phone number (914-451-7760) provided at the end of the Response filed Dec. 05, 2025, in order to discuss this case. However, this phone number indicates that the user is not available and does not provide a means to leave a voice message.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to P. Kathryn Wright whose telephone number is (571)272-2374. The examiner can normally be reached on 9:30am-7:30 pm EST.
Examiner interviews are available via telephone and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Capozzi can be reached on (571) 270-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/P. Kathryn Wright/Primary Examiner, Art Unit 1798