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 without traverse of Group I, claims 1-20 in the reply filed on 10/23/2025 is acknowledged.
Claims 21-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-7 and 13-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Carrano (US 20190025163).
Regarding claim 1, Carrano teaches a system for processing biological samples comprising a primary shear body (202) having an inlet channel (248), a first outlet channel (252), and a second outlet (210) channel formed therein; and a secondary shear body (204) disposed in an aperture of the primary shear body (202) and having a dissection chamber (234) formed therein, the secondary shear body (204) being movable between a first position and a second position relative to the primary shear body (202) (refer to rotational arrows in Figure 4B). Applicants further recite “wherein in the first position, the dissection chamber pneumatically connects the inlet channel to the first outlet channel, wherein in the second position, the dissection chamber pneumatically connects the inlet channel to the second outlet channel, wherein movement of the secondary shear body from the first position to the second position causes a shearing action at a shearing interface between the secondary shear body and the primary shear body.” This limitation is considered a process and/or intended use limitation, which do not further delineate the structure of the claimed apparatus from that of the prior art. Since claim 1, etc. are drawn to an apparatus statutory class of invention, it is the structural limitations of the apparatus, as recited in the claims, which are considered in determining the patentability of the apparatus itself. This recited process or intended use limitation is accorded no patentable weight to an apparatus. Process limitations are not germane to patentability to a structure, which is not distinguished from the prior art. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. The apparatus of Carrano is capable of rotating in a first and second position. Furthermore, applicants have not recited any structure that pneumatically connects the first and outlet channels.
Regarding claim 2, the first outlet channel (252) has a smaller diameter than the dissection chamber (234). (Refer to Figure 4B)
Regarding claim 3, the first outlet channel (252) has a first diameter and wherein the dissection chamber (234) has a second diameter, wherein the first diameter is 50% - 75% of the second diameter. (Refer to Figure 4B)
Regarding claim 6, the first outlet channel (252) has a smaller diameter than the second outlet (210) channel. (Refer to Figure 4B)
Regarding claim 6, the first outlet channel (252) and the dissection chamber (234) form the shearing interface. (Refer to Figure 4B)
Regarding claim 7, the secondary shear body (204) is a cylinder (Refer to Figure 3) that rotates relative to the primary shear body (202) between the first position and the second position. (Refer to Figure 4B)
Regarding claim 13, a drive (514) operably coupled to move the secondary shear body between the first position and the second position.
Regarding claim 14, an actuator (514) and a controller operably coupled to the actuator and to the drive, wherein actuation of the actuator sends a signal to the controller, and in response to the signal, the controller sends a second signal to the drive, causing the drive to move the secondary shear body between the second position and the first position. (Refer to paragraphs [0051-0052])
Regarding claim 15, a display screen operably connected to the controller, wherein the controller comprises logic, which when executed: stores a number of cycles of the actuator; and displays the number of cycles on the display screen. (Refer to paragraph [0027])
Regarding claim 16, a grinder (244), comprising: a pestle assembly (244) comprising a rotating pestle (204); and a carriage assembly (202) comprising a carriage (212) having a test tube aperture configured to hold a test tube, wherein the carriage is configured to translate relative to the rotating pestle. (Refer to Figure 5)
Regarding claim 17, the carriage (212) is configured to translate along a track (equivalent to the inner circumference of 202) relative to the pestle (244).
Regarding claim 18, the grinder (244) further comprises a first drive operably coupled to a lead screw configured to translate the carriage along the track. (Refer to paragraph [0051])
Regarding claim 19, the grinder (244) further comprises a second drive (262) configured to rotate the pestle. (Refer to paragraph [0036])
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.
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(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Carrano.
Refer above for the teachings of Carrano.
Carrano fails to teach the first outlet channel has a first diameter and wherein the dissection chamber has a second diameter, wherein the first diameter is 0.50mm - 1.00mm smaller than the second diameter.
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. Therefore, it would have been obvious to one having ordinary skill in the art to modify the first outlet channel has a first diameter and wherein the dissection chamber has a second diameter, wherein the first diameter is 0.50mm - 1.00mm smaller than the second diameter.
Allowable Subject Matter
Claims 8-12 and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The prior art fails to teach a vacuum connector pneumatically couplable to the first outlet channel and the second outlet channel, wherein the shear dissection mechanism is configured such that, when the vacuum connector is pneumatically coupled to a vacuum source and the secondary shear body is in the first position, the vacuum source draws a vacuum through the inlet channel, the dissection chamber, and the first outlet channel, wherein the shear dissection mechanism is configured such that when the vacuum connector is pneumatically coupled to the vacuum source and the secondary shear body is in the second position, the vacuum source draws the vacuum through an air inlet of the secondary shear body, the dissection chamber, and the second outlet channel and a second controller operably coupled to the pestle assembly and the carriage assembly, wherein the second controller comprises logic, which when executed: advances the carriage toward the pestle; rotates the pestle a predetermined number of grinds based upon an input from a user input device.
Conclusion
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/JYOTI NAGPAUL/Primary Examiner, Art Unit 1798