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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/18/2025 has been entered.
Response to Amendment
Claims 1-5, 7, 9-19 are pending.
Claims 1, 15, and 18 is amended.
Claims 6, and 8 are canceled.
Claim 19 is newly added.
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.
Claim 1-5, 7, 9-19 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.
A. Claims 1, and 15 recites “when the extractor is pulled vertically away from the container”. The original written description or the drawing fails to provide support for this newly incorporated limitation as such this is considered new matter. All the dependent claims inherit the same issue. Further correction and or clarification is required.
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, 9, 11, and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by BIENHAUS (EP 0836884; Provided by applicant).
Regarding claim 1, Bienhaus discloses, A lid (2) comprising: a top surface; a rim (See annotated fig. below) disposed around a periphery of the top surface, the rim comprising a periphery and at least one skirt (See annotated fig. below); a plurality of angular segments (Fig. 7b) in the top surface defined by a cut pattern in the top surface and defining a septal portion of the top surface (Fig. 7b).
The preamble recites “use in an automated system” is considered to be intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction See MPEP 2111.02 ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation"). See MPEP § 2111.02(II).
The limitation “the periphery being configured to rest on a lip portion of a container and the angular segments being configured to permit an extractor to be inserted through the cut pattern, deform both elastically and plastically in response to the at least one pipette rip being inserted through the cut pattern and to grip the at least one pipette tip by a frictional force in response to the deformation such that the lid if removed from the container when the extractor is pulled vertically away from the container.” is considered to be functional language. The prior art of Bienhaus has all the structures required perform the claimed functional limitation. Hence, the prior art is capable of performing the limitation. It is well settled that it is possible for functional language to define structure, but that where no distinguishing structure has been defined, the claim is not patentable and is fully met by the reference. See In re Swinehart, 169 USPQ 226. See also General Electric v. United States, 198 USPQ 73 which further reinforced the concept that functional language which defines no structure cannot distinguish over the prior art. 2173.05(g). It is noted that claim 1 only requires the lid; in other words claim 1 does not require the container or the pipette. Thus, if the lid (2) of Bienhaus is used with a container, such that the periphery of the rim simply rests on the container without gripping the lip of the container, the prior art is expected to perform the same as claimed i.e., the lid is removed from a container when the extractor is pulled vertically away from the container, since the lid (2) of Bienhaus comprises the required structure of the rim, skirt, and has the plurality of angular segments to allow a pipette to go through the lid.
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Regarding claim 9, BIENHAUS discloses a pierceable liquid tight layer (“It is important that the opening is closed, that no liquid can occur by itself outwardly.”).
Regarding claim 11, BIENHAUS discloses the top surface includes a hydrophobic material (the closure is made from silicone which is a hydrophobic material).
Regarding claim 14, BIENHAUS disclose, the top surface has a thickness from 0.0025 inch to 0.030 inch (“The inner seal has a thickness of 0.1 to 20 mm” (converts to .0004 in. to .78in)See attached translation of EP 0836884 page 3. Para 4.
Claim(s) 1, and 10-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ono (US 20160296937) and as evidenced by NPL (plasticseurope; footnote for claim 10).
Regarding claim 1, Ono disclose, A lid, comprising: a top surface (See annotated fig. below); a rim (See annotated fig. below) disposed around a periphery of the top surface, the rim comprising a periphery and at least one skirt (See annotated fig. below); a plurality of angular segments in the top surface defined by a cut pattern (224, 223) in the top surface and defining a septal portion of the top surface.
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The preamble recites “use in an automated system” is considered to be intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction See MPEP 2111.02 ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation"). See MPEP § 2111.02(II).
The limitation “the periphery being configured to rest on a lip portion of a container and the angular segments being configured to permit an extractor to be inserted through the cut pattern, deform both elastically and plastically in response to the at least one pipette rip being inserted through the cut pattern and to grip the at least one pipette tip by a frictional force in response to the deformation such that the lid if removed from the container when the extractor is pulled vertically away from the container.” is considered to be functional language. The prior art of Ono has all the structures required perform the claimed functional limitation. Hence, the prior art is capable of performing the limitation. It is well settled that it is possible for functional language to define structure, but that where no distinguishing structure has been defined, the claim is not patentable and is fully met by the reference. See In re Swinehart, 169 USPQ 226. See also General Electric v. United States, 198 USPQ 73 which further reinforced the concept that functional language which defines no structure cannot distinguish over the prior art. 2173.05(g). It is noted that claim 1 only requires the lid; in other words, claim 1 does not require the container or the pipette. Thus, if the lid of Ono is used with a container, such that the periphery of the rim simply rests on a container without gripping the lip of the container, the prior art is expected to perform the same as claimed i.e., the lid is removed from a container when the extractor is pulled vertically away from the container, since the lid of Ono comprises the required structure of the rim, skirt (see annotated drawing above), and has the plurality of angular segments (223, 224) to allow a pipette to go through the lid.
Regarding claim 10, Ono disclose, the top surface includes a material that is opaque (222 is made of HDPE which is opaque)1.
Regarding claim 11, Ono disclose, the top surface includes a hydrophobic material (222 the top surface is made of high-density polypropylene; Para 44 which is known to be hydrophobic).
Regarding claim 12, Ono disclose, the lid comprising high density polyethylene (para 44).
Regarding claim 13, Ono disclose, the lid comprising at least one of a conductive material (“First film layer 221 and second film layer 222 may contain […] metal foil”; Para 44).
Claim(s) 1, 15-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Peng (US 20180290798).
Regarding claim 1, PENG discloses, A lid (10) comprising: a top surface (See annotated fig. below); a rim (See annotated fig. below) disposed around a periphery of the top surface, the rim comprising a periphery and at least one skirt (See annotated fig. below) ; a plurality of angular segments (See annotated fig. below) in the top surface defined by a cut pattern in the top surface and defining a septal portion of the top surface (Fig. 1).
The preamble recites “use in an automated system” is considered to be intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction See MPEP 2111.02 ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation"). See MPEP § 2111.02(II).
The limitation “the periphery being configured to rest on a lip portion of a container and the angular segments being configured to permit an extractor to be inserted through the cut pattern, deform both elastically and plastically in response to the at least one pipette rip being inserted through the cut pattern and to grip the at least one pipette tip by a frictional force in response to the deformation such that the lid if removed from the container when the extractor is pulled vertically away from the container.” is considered to be functional language. The prior art of Peng has all the structures required perform the claimed functional limitation. Hence, the prior art is capable of performing the limitation. It is well settled that it is possible for functional language to define structure, but that where no distinguishing structure has been defined, the claim is not patentable and is fully met by the reference. See In re Swinehart, 169 USPQ 226. See also General Electric v. United States, 198 USPQ 73 which further reinforced the concept that functional language which defines no structure cannot distinguish over the prior art. 2173.05(g). It is noted that claim 1 only requires the lid; in other words claim 1 does not require the container or the pipette. Thus, if the lid (10) of is used with a container, such that the periphery of the rim simply rests on the container without gripping the lip of the container, the prior art is expected to perform the same as claimed i.e., the lid is removed from a container when the extractor is pulled vertically away from the container, since the lid (10) of Peng comprises the required structure of the rim, skirt, and has the plurality of angular segments (see annotated figure below) to allow a pipette to go through the lid.
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Regarding claim 15, Peng discloses, A substance containment system comprising a container (100), a lid (10) configured to cover the container (Fig. 1) the lid (2) comprising: a top surface; a rim (See annotated fig. above) disposed around a periphery of the top surface, the rim comprising a periphery and at least one skirt (See annotated fig. above) , the periphery being configured to rest on a lip portion of a container(See annotated fig. above); a plurality of angular segments (Fig. 7b) in the top surface defined by a cut pattern in the top surface and defining a septal portion of the top surface (Fig. 7b).
The preamble recites “use in an automated system” is considered to be intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction See MPEP 2111.02 ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation"). See MPEP § 2111.02(II).
The limitation “the periphery being configured to rest on a lip portion of a container without gripping the lip portion of the container and the angular segments being configured to permit at least one pipette tip of the automated system disposed on an extractor to be inserted through the cut pattern, deform both elastically and plastically in response to the at least one pipette rip being inserted through the cut pattern and to grip the at least one pipette tip by a frictional force in response to the deformation such that the lid if removed from the container when the extractor is pulled vertically away from the container.” is considered to be functional language. The prior art of Bienhaus has all the structures required perform the claimed functional limitation. Hence, the prior art is capable of performing the limitation. It is well settled that it is possible for functional language to define structure, but that where no distinguishing structure has been defined, the claim is not patentable and is fully met by the reference. See In re Swinehart, 169 USPQ 226. See also General Electric v. United States, 198 USPQ 73 which further reinforced the concept that functional language which defines no structure cannot distinguish over the prior art. 2173.05(g). It is noted that claim 15 does not require the pipette. Also, it is noted that the prior art of Peng does not require any fit type connection between the lid and the container (100). Thus, if the lid (10) of is used with container (100), such that the periphery of the rim simply rests on the container without gripping the lip of the container (100), the prior art is expected to perform the same as claimed i.e., the lid is removed from a container when the extractor is pulled vertically away from the container, since the lid (10) of Peng comprises the required structure of the rim, skirt, and has the plurality of angular segments (see annotated figure above) to allow a pipette to go through the lid.
Regarding claim 16, Peng discloses wherein the container is configured to contain a sample (within the container).
Regarding claims 17-18, the limitations require that the friction force is greater than a weight of the lid when the at least one pipette tip is inserted through the cut pattern (claim 17) and that the friction force is greater than a combined force provided by a weight of the lid and rim-container friction force between the rim and the container when the at least one pipette tip is inserted through the cut pattern (claim 18).
It is noted that these recitations are contingent limitation. Pursuant MPEP2111.04-II “The broadest reasonable interpretation of a system (or apparatus or product) claim having structure that performs a function, which only needs to occur if a condition precedent is met, requires structure for performing the function should the condition occur.” It is further noted that the pipette tip is not a positively recited structure, and absent any additional structure, the system as disclosed by Peng is capable of having a friction force is greater than a weight of the lid or that the friction force is greater than a combined force provided by a weight of the lid and rim-container friction force between the rim and the container when the at least one pipette tip is inserted through the cut pattern, by for example utilizing a pipette of a material that would generate friction with the lid (see response to arguments for examples of pipettes with at least rubber tips, wherein rubber is known for friction properties, not relied upon for rejection purposes since the pipette is not required by the claims), while the lid rests (i.e. not tight fit) on top of the container. Again, the claim lacks any structure that would make the apparatus perform in the claimed manner. Thus, since the prior art of Peng comprises all of the structural limitations, as set forth above in the rejection of claim 15, then the invention of Peng would be capable of performing these functions.
Regarding claim 19, Peng discloses, a material and a surface roughness of the angular segments are selected to provide the friction force (the lid is made of plastic same as the application and has surface roughness that provide friction force).
Claim Rejections - 35 USC § 103
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.
Claim(s) 2-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over BIENHAUS as applied to claim 1 in view of Von (US 4177906).
Regarding claims 2-5, while BIENHAUS does not explicitly disclose, the mass of the lid is less than 5 grams or less than 2.5 grams, less than 1 gram, and less than 0.75 gram respectively.
Von is relevant to this issue and discloses a lid to be 2.2 grams or less (Col. 7; line 59-64).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified BIENHAUS to have a lid of mass less than about 5 grams or less than 2.5 grams, less than 1 gram, and less than 0.75 gram respectively as this is disclosed by Von as this range mass can provide “an excellent seal, resistant to leaking” (Col. 7; line 59-64).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ono as applied to claim 1 in view of Hart (US 20160068313).
Ono does not explicitly disclose, the angular segments are coated with a frictional enhancement material.
Hart is relevant to this issue and discloses a container comprising a lid wherein the lid is coated with frictional enhancement material (para 44).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Ono to is coat the top surface with frictional enhancement material as taught by Hart for the purpose of assisting with gripping the part.
Response to Arguments
Applicant's arguments filed 08/18/2025 have been fully considered and while argument related to limitations being function language is found persuasive, the prior arts as incorporated in the rejections above meets the scope of the limitations as claimed.
The applicant argues that prior art of Bienhaus and Ono fails to disclose features (1) (lid) resting on a lip portion of the container without gripping the lip portion of the container nor (2) applying any frictional force to the pipette. Claim 1 does not positively claim the extractor/pipette or the container and these limitations are recognized as functional language. When the lids of the prior arts Bienhaus or Ono are used under the same conditions (i.e. when a lid is resting on a lip without gripping a container), the prior art lids are expected to performed as claimed i.e. being removed from the container when pulled. A pipette can remove the lid as it is simply resting on a container without anything attaching the lid to the container. The applicant fails to disclose any distinguishing structure over the prior art and thus there is no reason to believe the prior art would perform any different than the instant application. It is well settled that it is possible for functional language to define structure, but that where no distinguishing structure has been defined, the claim is not patentable and is fully met by the reference. See In re Swinehart, 169 USPQ 226. See also General Electric v. United States, 198 USPQ 73 which further reinforced the concept that functional language which defines no structure cannot distinguish over the prior art. The claims as currently presented fail to provide any distinguishing structure that is not disclosed by the prior arts of record.
Applicants argument with regards to claim 15 related to prior art of Glanz is considered but moot as this prior art is no longer utilized in the current office action.
The applicant further argues that the office fails to provide “evidence of hypothetical sticky or textured pipette”, to that the examiner again replies that the extractor is not a positively claimed structure. The use of rubber pipette is well known and is disclosed in prior art Glukhoy (US 20090280268) para 110 “the pipettes 376 are made from an inflatable material, such as rubber […]” or prior art of Bin (US 20100144005) wherein the tip of the pipette is rubber . Rubber is known to be friction enhancement material.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANJIDUL ISLAM whose telephone number is (571)272-7670. The examiner can normally be reached Monday-Friday 8:30 -5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Orlando E. Aviles can be reached at 571-270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SANJIDUL ISLAM/Examiner, Art Unit 3736
/ORLANDO E AVILES/Supervisory Patent Examiner, Art Unit 3736
1 https://plasticseurope.org/plastics-explained/a-large-family/polyolefins “It is also harder and more opaque […]”