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 .
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 9-21 are rejected under 35 U.S.C. 103 as being unpatentable over Nguyen et al. (US 2005/0196872) in view of Chen et al. (US 2004/0161788), and further in view of Engbersen et al. (US 2015/0182156). This rejection was applied in Paragraphs 10-18 in the Non-Final Rejection mailed 08/27/25. The rejection remains in effect. Please see Response to Arguments below.
Response to Arguments
Applicant’s arguments, filed 12/01/25, with respect to the rejection(s) of claims 9-21 under 35 U.S.C. 103 as being unpatentable over Nguyen et al. (US 2005/0196872) in view of Chen et al. (US 2004/0161788), and further in view of Engbersen et al. (US 2015/0182156) have been fully considered but they are not persuasive. Applicant has amended claims 9 and 21 to recite a sliding actuator “configured to slide perpendicular to the lysing container along a bottom seal of the lysing container” and then argued this feature is not taught by the prior art. See pages 6-8 of Applicant’s Arguments. The Examiner respectfully disagrees and submits the following in rebuttal.
The Examiner notes that Applicant appears to be arguing the amended claim language reciting the limitation of “the sliding actuator configured to slide perpendicular to the lysing container along a bottom seal of the lysing container” requires the actuator to move horizontally while sliding “perpendicularly to the original up and down punching”. See Figures 3 and 4 of Applicant’s device cited on page 7 of Applicant’s Remarks and also Figures from Nguyen cited on page 8 by Applicant.
The Examiner submits this argument is narrower than the actual scope of the claim. While the Examiner agrees with Applicant’s description of the operation of both devices, the Examiner submits the limitation of “the sliding actuator configured to slide perpendicular to the lysing container along a bottom seal of the lysing container” does not require the horizontal movement cited by Applicant. The Examiner submits that the second puncturing element (nozzle 101) of Nguyen – as shown in the reference and described in Applicant in Remarks - is “configured to slide perpendicular to the lysing container 106 (towards the lysing container 106)” and is “along a bottom seal of the lysing container” when piercing the lysing container. Therefore the nozzle is “configured to slide perpendicular to the lysing container along a bottom seal of the lysing container”. The Examiner submits this is what the claim requires as currently written; therefore the claims remain rejected. See also Paragraphs 10-13 of the Non-Final Rejection mailed 08/27/25. The Examiner further suggests amending the lysing container and or sliding actuator to define the elements and spatial relationships between the lysing container and actuator.
Conclusion
THIS ACTION IS MADE FINAL. 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 DWAYNE K HANDY whose telephone number is (571)272-1259. The examiner can normally be reached M-F 10AM-7PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Capozzi can be reached at 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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/DWAYNE K HANDY/Examiner, Art Unit 1798 March 07, 2026
/CHARLES CAPOZZI/Supervisory Patent Examiner, Art Unit 1798