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 Office action is response to amendments filed on 09/12/2025. Claims 1-10 are pending with claim 10 as withdrawn from previous response to restriction filed on 05/20/2025.
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.
Claims 1, 4, 6, and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Regester (US Patent No. 6,109,139), provided in IDS filed on 12/06/2022, in view of Bartholomew (US Patent No. 9,038,503).
Regarding claim 1, Regester (US Patent No. 6,109,139) discloses a tool (figs. 1-3) for manipulating a plurality of plugs (col. 2, ll. 52-54; fig. 2) spaced apart and arranged in a linear manner (col. 3, ll. 5-11; not explicitly shown), each having an upper surface with a cavity (item 100; fig. 2), the tool taking the form of a comb including two main faces (defined as front face of item 10, in view of fig. 1; second main face is defined as rear face of item 10, designated in annotated fig. 2 below) extending on either side of a main plane (designated in annotated fig. 2 below) and having a first portion (item 10; fig. 1) adapted for handling by an operator (col. 2, ll. 52-53) and a second portion (item 14; fig. 3) adapted for taking the plugs when applying to the first portion (col. 2, ll. 53-54), a pivoting movement perpendicular to the main plane (item A; fig. 2; col. 3, ll. 17-21 and col. 4, ll. 1-5),
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Annotated Fig. 2.
the tool comprising:
a body (item 10; figs. 1-2; similar to applicant’s disclosure) provided with a row of teeth (items 18; figs. 1 and 3) projecting from the second portion of the comb (col. 3, ll. 1-3) in directions of extension parallel to each other (teeth 18 are parallel to one another; fig. 1) and spaced apart in a linear direction (designated in annotated fig. 1 below) in order to be intended to engage with the cavities of the plugs (col. 3, ll. 12-17); and
a separation system (defined as the tool release feature includes items 30, 32, 34, 36, 38; col. 3, ll. 32 through col. 4, ll. 5) for separating the plugs from the teeth (col. 4, ll. 1-5) comprising a control (item 38; figs. 1-2) for moving fingers (items 32; col. 3, ll. 36-38; figs. 1 and 3) of the comb engaged between the teeth (fingers 32 surround each tooth 18; col. 3, ll. 35-38; fig. 3);
wherein:
the teeth intended to engage in the plugs during the pivoting movement (col. 3, ll. 13-18);
the separation system comprises a slide (item 30; figs. 1-2) configured to be returned elastically (via item 34; fig. 2) and guided to slide with respect to the body in a direction parallel to the direction of extension of the teeth (item 38 is pushed by user which activates slide 30 to move towards item 14 of portion and move fingers 32, which are a part of the slide, downward and outward from item 14, thereby, moving the fingers 32 in a direction parallel to the direction of the extension for at least a portion of the movement) the slide including the fingers of the comb (fingers 32 of the comb are provided on the slide body 30), which are movable by sliding between the teeth; and
the control is accessible from the first portion of the comb (fingers 32 move between each tooth 18 and the control 38 is accessible, i.e. able to be reached, from the first portion of the body) and is configured to be pressed to move translationally to cause the fingers of the comb to slide in order to eject the plugs from the teeth (col. 3, ll. 34 through col. 4, ll. 10).
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First Annotated Fig. 1.
Regester does not explicitly disclose the teeth have pointed distal portions oriented in directions substantially perpendicular to the main plane of the comb, to be intended to engage in the plugs during the pivoting movement.
However, Bartholomew (US Patent No. 9,038,503) teaches a tool (item 200; figs. 7A-7E embodiment) for manipulating a plurality of plugs (col. 2, ll. 50-55) analogous to the tool for removing a plurality of plugs in Regester, wherein the tool has a body (item 230; figs. 7A-7E) having a first portion (item 240) adapted to be grasped by the user (col. 11, ll. 1-4) and a second portion (item 250) adapted for taking the plugs when applying a pivoting movement to the first portion (col. 11, ll. 9-12), wherein the body has a row of teeth (items 260; fig. 7C) projecting from the second portion and the teeth having pointed distal portions (items 26a-b; fig. 7E) oriented substantially perpendicular to a main plane of the body (corresponding to main plane in Regester) and intended to engage in the plugs during the pivoting movement (col. 11, ll. 60 through col. 12, ll. 6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention modify the row of teeth, as disclosed in Regester, to include a pointed distal portion oriented in a direction substantially perpendicular to the main plane, as taught in Bartholomew, in order to advantageously provide an edge that can engaged, i.e. grip, a plug when the body is pivoted to manipulate the plugs (Bartholomew; col. 12, ll. 1-6).
Regarding claim 4, Regester as modified discloses the tool as claimed in 1, wherein the control of the slide is accessible from a proximal side of the first portion (designated in annotated fig. 2 of Regester above) of the comb (the control 38 of the slide is accessible, i.e. able to be reached or enter, from the proximal side, as designated in annotated fig. 2 above).
Regarding claim 6, Regester as modified discloses the tool as claimed in 1, wherein the body takes the form of a plate (body is a flat, curved structure in order for the user to grasp; figs. 1-2) externally delimiting at least one main face of the two main faces of the comb (plate defines one main face of the two main faces on the right outermost side of the plate, as designated in annotated fig. 2 above) and slidably guiding the slide (body guides the slides 30 movement via items 36; figs. 1-2) made in the form of a plate (slide 30 defined as a bent plate; col. 3, ll. 36-38) externally delimiting another main face of the two main faces of the comb (slide 30 defines second main face of the two main faces, as designated in annotated fig. 2 above; when item 38 abuts first portion 10 and when user faces body 10 from left side in view of fig. 2, the second main face is defined by slide 30 on lower end of the second main face and by first portion 10 on an upper end of the second main face).
Regarding claim 8, Regester as modified discloses the tool as claimed in 1, wherein the pointed distal portion of each tooth is connected to the body by a connecting segment (Bartholomew; item 254; fig. 7E) delimiting a clearance space for the engagement of the pointed distal portions in the plugs (connecting segments 254 define a space from body, corresponding to body of Regester, for the pointed distal portions 265a-b to engage with the plugs without the edge of the body being an obstacle).
Regarding claim 9, Regester as modified discloses the tool as claimed in 1, wherein the pointed distal portion of each tooth has a rear face (Bartholomew; item 262 which is at the rear, i.e. bottommost surface relative to first portion of body, of the pointed distal portion, fig. 7E) extending coplanarly with a rear face of the fingers (rear face of fingers 32 in Regester defined as bottommost surface of item 32 in view of figs. 1-2 relative to first portion) of the comb (at least a portion of the rear face of the pointed distal portion and at least a portion of the rear face of the fingers are coplanar extending in a vertical direction in view of fig. 2 of Regester).
Claims 2-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Regester (US Patent No. 6,109,139), provided in IDS filed on 12/06/2022, in view of Bartholomew (US Patent No. 9,038,503) and further in view of Schimek (US Patent No. 3,787,946).
Regarding claim 2, Regester as modified discloses the tool as claimed in 1. Regester does not explicitly disclose the first portion of the comb comprises an aperture which opens into the two main faces, the aperture being arranged at a distance from a proximal side of the first portion of the comb to ensure the passage of the operator’s fingers for gripping the tool.
However, Schimek (US Patent No. 3,787,946) teaches a plug remover (item 10; figs. 1-3) comprising body (item 11; figs. 1-3) having two main faces (designated in annotated fig. 2), a first portion (item 11) adapted for handling by an operator (col. 2, ll. 12-15), a second portion (includes items 14, 16, 17, 18s; fig. 1-2) adapted for taking the plugs when applying a pivoting movement to the first portion (shown as movement from fig. 2 to fig. 3; col. 2, ll. 44-59), wherein the first portion of the body comprises an aperture (item 12) which opens onto the two main faces (aperture 12 extends through first face and second face of body; figs. 1-3), the aperture being arranged at a distance (distance defined as vertical distance in view of fig. 2 from proximal side to aperture 12) from a proximal side of the first portion (designated in annotated fig. 2 below of Schimek; corresponding to proximal side of first portion in body of Regester, annotated in fig. 2 above) of the comb to ensure a passage of the operator’s fingers for gripping the tool (col. 2, ll. 11-15).
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Schimek Annotated Fig. 2.
Regester discloses the configuration of the body shown in figs. 1-3 is not critical to the invention (col. 2, ll. 55-58), and therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the body to include an aperture through the main faces, as taught in Schimek, in order to accommodate the fingers of the average human hand during use and obtain adequate leverage of the tool to manipulate the plurality of plugs (Schimek; col. 1, ll. 56-59 and col. 2, ll. 10-15).
Regarding claim 3, Regester as modified discloses the tool as claimed in 2, wherein the control of the slide is located between the aperture and the proximal side of the first portion of the comb (upper portion of control 38 is structurally positioned between the aperture, modified in from Schimek closer to the uppermost edge on body 10, and the proximal side, as designated in annotated fig. 2 above).
Regarding claim 5, Regester as modified discloses the tool as claimed in 1, wherein the first portion of the comb being delimited by two lateral sides (designated in second annotated fig. 1 below) connected to a proximal side (defined as side facing user in view of fig. 1 below), the control of the slide being located in a corner of the proximal side (the control 38 positioned, i.e. located, in a right and left corner of the proximal side; fig. 1).
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Regester Second Annotated Fig. 2.
Regester does not explicitly disclose wherein the first portion of the comb has a rectangular shape. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first portion of the comb to be formed in a rectangular shape since it has been held that unless a new and unexpected result is produced, a change of shape of the essential working parts of a device involves only routine skill in the art (see MPEP 2144.04.IV-B). Schimek (US Patent No. 3,787,946) teaches a plug remover (item 10; figs. 1-3) comprising body (item 11; figs. 1-3) having two main faces (designated in annotated fig. 2), a first portion (item 11) adapted for handling by an operator (col. 2, ll. 12-15), a second portion (includes items 14, 16, 17, 18s; fig. 1-2) adapted for taking the plugs when applying a pivoting movement to the first portion (shown as movement from fig. 2 to fig. 3; col. 2, ll. 44-59), wherein the body is a rectangular shape (fig. 1). Therefore, absent any new or unexpected results, it would have been obvious to change the shape of the first portion, in view of the teachings of Schimek, since such a modification would yield the same results of defining a body of the tool for the user to grasp with convenience and control, and in view of Schimek, there are reasonable expectations of success. Please note that in the instant application, pp. [0028-0029], the application has not disclosed any criticality for the claimed limitation.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Regester (US Patent No. 6,109,139), provided in IDS filed on 12/06/2022, in view of Bartholomew (US Patent No. 9,038,503) and further in view of Woodsum (US Patent No. 5,692,789).
Regarding claim 7, Regester as modified discloses the tool as claimed in 1, wherein the body is provided with a spring (item 34; figs. 1-2) an end of which is supported on the slide (a lower end of spring 34 is supported on slide 30; figs. 1-2) so that the slide is biased by a return force during a sliding travel (springs 34 bias slide 30 against second portion 14 of tool, i.e. in which user is not pressing against item 38 to eject plugs off; col. 3, ll. 38 through col. 4, ll. 5).
Regester does not explicitly disclose wherein the spring is a flexibly deformable blade structure. However, Woodsum (US 5,692,789) teaches a tool in which a slidable component (item 34; analogous to the slide in Regester) is moved in one direction by a user against an elastic force of an elastic component (items 60, 62; fig. 3) and once the component is released, the biasing force of the elastic component returns the slidable component back to the original position (defined as the open position, col. 2, ll. 34-36; analogous to the position in Regester in which the plugs are not being ejected). Woodsum discloses the elastic component may be a tension coil spring, similar to the spring in Regester, or a spring steel coated with a rubber friction layer or a linearly-resilient composition (e.g. a linear blade).
Both Regester and Woodsum disclose elastic components that return a slide component to its original position. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention substitute the spring, as disclosed in Regester, for the flexibly deformable linear blade means, as taught in Woodsum to be an analogous spring means, to achieve the predictable result of biasing the slide component towards its original position.
Response to Arguments
Applicant's arguments filed 09/12/2025 have been fully considered but they are not persuasive.
Applicant argues, “the tool described in Regester [the prior art of record] particularly suited for easily uncapping and recapping tubes with caps without affecting the contents of the tube. However, such a tool is not suitable for discarding caps into a waste container without risk of contamination for the operator…such a separation system does not sure a safe and complete detachment of the caps from the pegs when the caps are held only by the tool’s fingers…On the other hand, the present claims provide a simply design tool for gripping caps sealing tubes that contain samples of chemical or biological solutions to be analyze, and also for safely and completely separating the caps from the tool without risk of contamination for the operator” (p. 7-8 of Remarks). However, in response to these arguments and that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., intended use recitations) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Additionally, the Examiner notes if the applicant claims the intended use structure for the chemical or biological solutions within the caps, 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.
Further, applicant argues “the teeth disclosed in Bartholomew [the teaching reference of record] are not oriented in directions substantially perpendicular to the main plane of the body but only to the second portion” (p. 8 of Remarks). However, the Examiner respectfully disagrees. The Examiner notes Regester [the primary reference of record] discloses a row of teeth and Bartholomew [the teaching reference of record] is utilized as a teaching reference to modify only a substantially perpendicular pointed distal portion on the teeth, as required by the claim. The non-planar relationship between the two body portions of Bartholomew are not intended to be modified into the structure of Regester (refer to motivation statement in claim 1 rejection above). Therefore, the orientation of the two main faces and the plurality of teeth are vertical, in view of Regester annotated fig. 2 (above), and the pointed distal portions, as modified from Bartholomew, are substantially perpendicular to the vertical orientation, which corresponds to the main plane orientation in the primary reference (Regester). Therefore, the rejection remains in place.
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 SIDNEY D FULL whose telephone number is (571)272-6996. The examiner can normally be reached Monday-Friday, 7:00a.m.-2:30p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Keller can be reached at (571)272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SIDNEY D FULL/Examiner, Art Unit 3723
/BRIAN D KELLER/Supervisory Patent Examiner, Art Unit 3723