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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/02/2026 has been entered.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-7 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.
Claim 1 is unclear reciting “a reagent container, having a pump, the pump comprising a control and an outlet, whereby moving the control causes fluid to flow from the outlet”. Claim 1 positively recites: a reagent container, a pump, the pump comprising a control and an outlet. However, it is not completely clear whether the apparatus comprises a reagent container, the reagent container having a pump, the pump comprising a control and an outlet, or the apparatus comprises a reagent container, and a pump, the pump comprising a control and an outlet. For this reason, dependent claims 2-7 relevant to these elements are similarly unclear.
Claim Rejections - 35 USC § 102
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 102a1/a2 as being anticipated by Carey et al. (US 2006/0013729 A1; incorporated reference U.S. Pat. No. 4,539,854 to Bradshaw et al.).
Regarding claim 1, Carey et al. teach:
1. An apparatus for dispensing fluid, the apparatus comprising:
a reagent container (e.g., 30, 60, 75),
having a pump (e.g., syringes 651-654), the pump comprising a control (e.g., drive mechanism) and an outlet (e.g., 659-662), whereby moving the control causes fluid to flow from the outlet (¶ 0202+);
a pump actuator assembly (e.g., syringe bank 32) comprising a first bracket mounted on the reagent container, a second bracket capable of engaging the control, and a pump actuator (e.g., stepper motors 655-658) to move the second bracket relative to the first bracket (see Fig. 73 & ¶ 0202, 0209+);
a dispenser assembly (e.g., sample probe transport system 24, reagent probe transport systems R1, R2 and R3) in connection with the outlet of the pump (see Fig. 50 & ¶ 0255 for example), the dispenser assembly comprising a dispensing nozzle (e.g., probe 407), a nozzle positioning mechanism (e.g., reagent probe transport system) capable of moving the dispensing nozzle through a plurality of positions (see ¶ 0179-0182+ & Figs. 50-59 for example), and a flexible tube (e.g., 659) having a first end connected to the dispensing nozzle (see an end of 659 connected to 407 in Fig. 50 & ¶ 0202 for example) and a second end connectible to the outlet of the pump (see the other end of 659 connected to 651 in Fig. 73 & ¶ 0202 for example); and
a controller (e.g., CPU, PC board) in communication with the dispenser assembly and the pump actuator assembly, the controller capable for controlling the pump actuator and the nozzle positioning mechanism (see ¶ 0172, 0183-0188+ for example).
With regard to limitations in claims 1, 4-7, (e.g., to move [...], for controlling [...]; rotatably mounted [...]; extendible [...]; [...] to position a selected one of the dispensing nozzles over a dispensing location; [...] selected based on a surface tension of a liquid being dispensed to form a static meniscus at the dispensing nozzle when the pump ceases a pumping action, to prevent entry of gas into, or further flow of liquid from, the dispensing nozzle, etc.), these claim limitations are considered process or intended use limitations, which do not further delineate the structure of the claimed apparatus from that of the prior art. The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)). "Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim." Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Furthermore, "[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims." See In re Young, 75 F.2d *>996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115).
Regarding claims 2-7, Carey et al. teach:
2. The apparatus of claim 1 wherein the nozzle positioning mechanism comprises a turret (e.g., gear segment 524, 612) rotatably mounted on a base (e.g., post 522), wherein the turret comprises an extendible arm (e.g., lead screw 371, 499, 602) projecting radially with respect to an axis of rotation of the turret and having the dispensing nozzle at a distal end thereof (see Figs. 60, 63 for example).
3. The apparatus of claim 2 wherein the nozzle positioning mechanism comprises yaw gears (e.g., pulley 531, 533) mounted on a first mounting plate (e.g., bottom wall 510) above a bottom of the base (e.g., lower horizontal flange 512), a yaw motor (e.g., stepper motor 468) mounted on a second mounting plate at the bottom of the turret (see i.e., a plate of the carriage 464 in Fig. 64 for example), and an advancement motor (e.g., electrical stepper motor 528) mounted on the second mounting plate (see Fig. 64 for example).
4. The apparatus of claim 3 wherein the dispenser assembly comprises a plurality of dispensing nozzles (e.g., probes 407, 535, 576, 633), and the nozzle positioning mechanism is configured to position a selected one of the dispensing nozzles over a dispensing location (see Figs. 2, 62 & ¶ 0150 for example).
5. The apparatus of claim 4 wherein the nozzle positioning mechanism comprises a roll motor (e.g., electrical stepper motors 365) connected to a roll gear mechanism (e.g., roll nut 409) capable of rotating the extendible arm about a longitudinal axis of the extendible arm (see ¶ 0179 for example).
6. The apparatus of claim 1 wherein the control comprises a plunger and the pump actuator assembly is configured to depress the plunger (see i.e., A plurality of syringes 651, 652, 653, and 654 are mounted to the front of the housing and are actuated by the stepper motors 655, 656, 657, and 658, respectively, the drive mechanism between each stepper motor and its respective syringe is a frictional rack and pinion drive which is shown and described in U.S. Pat. No. 4,539,854 to Bradshaw et al. and incorporated herein by reference. ¶ 0202; see also the incorporated reference Bradshaw et al. teach: a precision syringe 12 has a plunger 14 located therein. The syringe is supported at one end 13 in a connector 15. The plunger 14 is coupled to a drive pin 19. The drive pin 19 is reciprocally moveable between positions A and B [...], C3/L3-8).
7. The apparatus of claim 1 wherein the flexible tube has an internal diameter (see ¶ 0168 for example).
Response to Arguments
Applicant’s arguments have been considered but are moot in view of the new ground(s) of rejection. Applicant is thanked for their thoughtful amendments to the claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEAN KWAK whose telephone number is (571)270-7072. The examiner can normally be reached M-TH, 4:30 am - 2:30 pm EST.
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/DEAN KWAK/Primary Examiner, Art Unit 1798
DEAN KWAK
Primary Examiner
Art Unit 1798
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