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 .
Response to Amendment
The amendment filed on May 11, 2026 is acknowledged. Claims 1-20 are pending, wherein claims 13-19 remain withdrawn but subject to rejoinder. Applicant amended claims 1-19 and added new claim 20.
The amendment obviated most of the outstanding objections and 35 U.S.C. 112 rejections. The maintained objections and rejections are reiterated and/or updated below.
Response to Arguments
Despite the amendment, the outstanding prior art rejections are maintained, albeit they have been updated to address the amended claim language. That said, Applicant's arguments with respect to the outstanding prior art rejections have been fully considered but they are not persuasive.
Regarding Sampson, Applicant argues that the rejection of claim 1 should be withdrawn because Sampson does not teach the following recitations:
“a lid including a plate having an upper face and a lower face…configured to limit the depression for pipette tips” and
”the unitary assembly being configured…to position the chimneys above the tubes…each of the pipette tips substantially reaches an inner wall of a bottom of the tubes.” Remarks 10.
The basis for the argument is that cap assembly 20 (structure corresponding to the claimed “lid”) taught by Sampson does not perform the functions recited in the recitations identified above. Id. The argument is not persuasive because the alleged distinction between the claimed invention and Sampson is based on intended use. Because the pipette tips and the tubes are not part of the claimed invention, limitations directed to the pipette tips and the tubes are hypothetical, meaning the quoted recitations merely convey abilities of the lid and the unitary assembly to perform the claimed functions. In other words, contrary to Applicant’s remarks (Remarks 10), Sampson need not explicitly teach chimneys guiding “the pipette tips penetrating the inside of tubes” and stopping “the pipette tips by the abutments so that a distal end of each of the pipette tips substantially reaches an inner wall of a bottom of the tubes”. Rather, Simpson need only disclose chimneys that are capable of performing the quoted functions. In this case, if pipette tips having:
a tapered shape having a top (collar) that is wider than the abutments 22; and
a length that can reach the inner bottom walls of the tubes 84,
are provided to be used with the device, then the unitary assembly would be “configured to” perform the claimed functions. Naturally, the abutments 22 would also be “configured to limit the depression for pipette tips” as the collars of the pipette tips would be prevented from entering the chimneys.
Likewise, Applicant’s arguments directed to the disclosure of Hovatter (Remarks 11) are not persuasive. Hovatter need not disclose a support tray actually holding tubes to anticipate the limitations directed to the tubes. Rather, the limitations are anticipated if the support tray taught by Hovatter is simply capable of holding tubes. In this instance, the support tray taught by Hovatter is capable of holding tubes having the same diameter as pipette tips 226 held by the support tray. Moreover, because the holes 224 extend through the entire thickness of the support tray, the support tray is ”adapted to each receive one of the tubes bearing on the upper surface with a tube bottom protruding from the lower face of the tray”, as required by claim 1.
Applicant’s remarks directed to the chimneys of Hovatter (Remarks 12) are not persuasive for the same reason. Specifically, Applicant’s remarks are directed to whether Hovatter actually teaches the claimed functions, even though the limitations directed to the claimed functions merely convey intended use. In this case, the abutments taught by Hovatter are configured to limit the depression of pipette tips having a top (e.g. a collar) that is larger than the openings 224 of the support tray, and for pipette tips and tubes having appropriate lengths, the chimneys are configured to guide the pipettes tips such that distal ends (bottom) of the tips reach the inner bottom walls of the tubes.
For the foregoing reasons, the rejections are maintained, albeit they have been updated to address the amended claim language.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the complementary housing on each flanged edge of the tray must be shown (see claim 1) or the feature(s) must be canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1, 7, 9 and 20 are objected to because of the following informalities:
In the last two lines of claim 1, the limitation “a bottom of the tubes” should be changed to “the bottom of the tube”. First, the claim establishes antecedent basis for the “bottom”. Second, the recitation refers to a single tube, not multiple tubes.
In the last line of claim 7, the limitation “bottom” should be changed to “bottoms”.
In claim 9, the limitation “the chimneys of the lid include abutments” should be changed to “the abutments are” unless the claim intends to introduce a new set of abutments separate from the abutments introduced in claim 1.
In addition, the limitation “bottom of the tubes” at the end of claim 9 should be changed to “bottoms of the tubes”.
In the penultimate line of claim 20, the limitation “bottom” should be changed to “bottoms”.
Appropriate corrections are required.
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 1-12 and 20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Independent claim 1 still recites the limitation “similar” in line 12, which is considered indefinite due the abstract nature of the limitation. Contrary to Applicant’s remarks (Remarks 9), the amendment did not obviate the rejection.
In claim 7, the recitation “the tray bearing through the flanged edges thereof on the lid” is indefinite and possibly contradictory to the subject matter recited in claim 1. The recitation conveys that the tray bears through its own flanged edges (even though claim 1 recites that the lid bears through the flanged edges on the tray), and it is unclear what “on the lid” intends to convey.
Claim 11 recites “the tip of the pipette”. There is no antecedent basis for the limitation. The limitation is being interpreted as a tip of the pipette itself, not a pipette tip that is attached to the pipette.
Claims not explicitly rejected are rejected due to dependency.
Claim Rejections - 35 USC § 102
Claims 1, 2, 4-6, 9 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sampson (US 2015/0132841 A1).
With respect to claim 1, Sampson teaches a device comprising (see Fig. 1):
a support tray 42 for tubes 84 (see Fig. 6) receiving samples to be analyzed and into which a tip of a pipette is intended to be introduced*, the tray 42 including a plate having a upper face and a lower face and holes 44 arranged according to a determined distribution by opening out into the upper face and the lower face, the holes being adapted to each receive one of the tubes bearing on the upper face with a tube bottom protruding from the lower surface of the tray (see Fig. 6), the plate of the tray 42 being delimited by flanged edges including two longitudinal flanged edges 90/92 parallel to each other and connected to each other by two transverse flanged edges (sidewalls along the length of the tray 42) parallel to each other (see annotation below identifying flanges using arrows);
a lid 20 including a plate having an upper face and a lower face, the lid 20 provided with chimneys 24 arranged according to a distribution identical to the distribution of the holes 44 of the tray 42 and provided with abutments (upper surface 22) configured to limit the depression for pipette tips, the plate of the lid being delimited by flanged edges including two longitudinal flanged edges 32 parallel to each other and connected to each other by two transverse flanged edges (attachment members 32 along length of the lid 20) parallel to each other (see annotation below);
the tray 42 and the lid 20 including a removable assembly system configured to fasten the lid and the tray together to form a unitary assembly in which the lid occupies a position of superposition above the tray (see Fig. 8),
the removable assembly system including two elastically deformable legs 50 arranged in the flanged edges of the support tray 42 and each configured to cooperate with a complementary housing (pair of protrusions 32) arranged in each of the flanged edges of the lid 20 to achieve an elastic interlocking (see [0048] and [0058]); and
the unitary assembly being configured to hold the tubes and to position the chimneys 24 above the tubes 80 (see Fig. 8) in order to guide the pipette tips penetrating inside the tubes and to stop the pipette tips by the abutments so that a distal end of each pipette tip substantially reaches an inner wall of a bottom of a tube*.
The device illustrated in the Figures of Sampson comprises legs 50 arranged on the tray 42 and housings 32 arranged on the lid 20, which is opposite of the claimed arrangement of legs and housing. However, Sampson explicitly teaches that the device can comprise an opposite arrangement of legs and housings (i.e. tray 42 comprises housings 32 that accommodate complementary legs 50 of lid 20, see [0063]), which anticipates the claimed assembly system.
*The limitations are recitation of intended use. Consequently, prior art need not teach the functions conveyed by the limitations to reject the claim. The prior art device need only be capable of performing the claimed functions to anticipate the limitations. In this instance, because the lid 20 comprises apertures (chimneys 24), the device allows access to the bottoms of tubes 80 by pipette tips. Moreover, depending on the dimensions of the pipette tips and/or the pipette holding the pipette tips, the abutments 22 would limit downward movement of the pipette tips.
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With respect to claim 2, because the arrangement of the chimneys 24 correspond to the arrangement of the holes 44, the lid 20 is designed to occupy a position of superposition below the tray so that the chimneys hold the bottoms of the tubes protruding from the lower face of the tray*.
*The limitations are recitation of intended use. As discussed above, the limitations are anticipated if the device of the prior art can be used in the claimed manner. In this case, the lid 20 can be placed under the tray 42 such that the chimneys 24 support the bottom of the tubes 80.
With respect to claim 4, the flanged edges of the lid 20 delimit a border that bears on the tray 42 when the lid 20 occupies a position of superposition above the tray 42 (see Fig. 8).
With respect to claim 5, the flanged edges of the lid 20 and the flanged edges of the tray 42 include nesting parts (legs 50 and housing 32 on sides of tray 42 and lid 20) intended to be nested together (see Fig. 8) so that when the lid 20 is assembled above the tray 42, the footprint (arrangement of chimneys) of the lid delimited by the lid’s flanged edges is equal to the footprint (arrangement of holes) of the tray delimited by the tray’s flanged edges (see Fig. 8).
With respect to claim 6, the nesting parts of the lid 20 and of the tray 42 are arranged with a foolproof system to ensure a direction of mounting of the lid on the tray (see abstract disclosing that a tool may be required to detach the lid from the tray).
With respect to claim 9, as discussed above, the chimneys 24 include abutments (top surface 22) for limiting the depression of the pipette tips so that the tips substantially reach the inner walls of the bottoms of the tubes*.
*As discussed above, the limitations constitute recitation of intended use. Depending on the dimensions of the pipette tips and the pipette holding the tips, the abutments 22 enable the claimed intended use.
With respect to claim 12, the tray includes bearing ribs (elements 32 situated along the length of the tray 42, see [0063]) protruding from the upper face of the tray 42 to serve as a bearing for a bearing element of an analysis machine*.
*Absent the claim specifying the structure of the claimed “bearing ribs” and/or how they interact with the bearing element, the broadest reasonable interpretation of the limitation “bearing ribs” encompasses elements 32 taught by Sampson.
Claims 1, 2, 4, 7-10 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hovatter (US 2006/0045815 A1).
With respect to claim 1, Hovatter teaches a device comprising (see Figs. 7 and 14):
a support tray (bottom element 402 illustrated in Fig. 14) for tubes 226 (see Fig. 7) receiving samples to be analyzed and into which the tip of a pipette is intended to be introduced*, the tray including a plate 220 having an upper face and a lower face and holes 224 arranged according to a determined distribution by opening out into the upper face and the lower face, the holes being adapted to each receive a tube 226 bearing on the upper surface and with a tube bottom protruding from the lower face of the tray (see Fig. 10), the plate 220 of the tray being delimited by flanged edges including two longitudinal flanged edges (bottom edges 218 of the widths of the tray) parallel to each other and connected to each other by two transverse flanged edges (bottom edges 218 of the lengths of the tray) (see Fig. 7);
a lid (upper element 402 illustrated in Fig. 14) including a plate 220 having an upper face and a lower face, the lid provided with chimneys (see annotation below) arranged according to a distribution identical to the distribution of the holes 224 of the tray and provided with abutments (upper surface) configured to limit the depression for pipette tips (see annotation below), the plate 220 of the lid being delimited by flanged edges including two longitudinal flanged edges (bottom edges 218 of the widths of the lid) parallel to each other and connected to each other by two transverse flanged edges (bottom edges 218 of the lengths of the lid) parallel to each other (see Fig. 7);
the tray and the lid including a removable assembly system 400 configured to fasten the lid and the tray together to form a unitary assembly in which the lid occupies a position of superposition above the tray (see Fig. 14), the removable assembly system including two elastically deformable legs arranged in the flanged edges of the lid and each configured to cooperate with a complementary housing arranged in each of the flanged edges of the tray to achieve an elastic interlocking (see Figs. 11, 13 and 15);
the unitary assembly being configured to hold the tubes 226 and to position the chimneys above the tubes in order to guide the pipette tips penetrating inside the tubes and to stop the tips by the abutments so that a distal end of each pipette tip substantially reaches an inner wall of the bottom of the tube*.
*As discussed above, the limitations are recitation of intended use. In this instance, the support tray allows accommodation of tubes having the same dimensions as pipette tips 226, and the device allows access to bottoms of said tubes by pipette tips accommodated in the chimneys of the lid.
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With respect to claim 2, because the support tray and the lid are structurally identical and stackable, the lid is designed to occupy (i.e. capable of occupying) a position of superposition below the tray so that the chimneys hold the bottoms of the tubes protruding from the lower face of the tray.
With respect to claim 4, the flanged edges of the lid delimit a border that bears on the tray when the lid occupies a position of superposition above the tray (see Fig. 15).
With respect to claims 7 and 8, the lid includes, from the upper face, a centering system configured to center the tray bearing through the flanged edges of the lid (see annotation below), the height of the flanged edges of the tray being adapted to ensure the engagement of the chimneys by the bottoms of the tubes*, wherein the centering system is set laterally back from the flanged edges of the lid to receive the flanged edges of the tray so that the footprint of the lid delimited by its flanged edges is equal to the footprint of the tray delimited by its flanged edges (see annotation below).
*The limitations constitute recitation of intended use. Depending on the dimensions of the tubes, the intended use is enabled by the device of Hovatter.
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With respect to claim 9, as discussed above, the chimneys include abutments (top surface) for limiting the depression of the pipette tips so that the tips substantially reach the inner walls of the bottoms of the tubes*.
*As discussed above, the limitations constitute recitation of intended use. Depending on the dimensions of the pipette tips, the pipette holding the tips, and the tubes, the abutments enable the claimed intended use.
With respect to claim 10, the chimneys each protrude from the plate of the lid (see annotation for rejection of claim 1).
With respect to claim 20, because the lid and the tray are identical (either can be considered the lid or the tray) and they are stackable, they are configured to be fastened together in a manner in which the lid occupies a position of superposition below the tray, and the tray bears on the upper face of the lid through a rim of the flanged edges of the tray (see Fig. 14); and
The chimneys protrude from the upper face of the lid and are configured to receive the bottom of the tubes* when the lid and the tray are fastened together with the lid occupying the position of superposition below the tray.
*As discussed above, the limitations constitute recitation of intended use. Depending on the dimensions of the tubes, the chimneys of the lid can receive the bottoms of the tubes.
Claim Rejections - 35 USC § 103
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hovatter.
While Hovatter does not explicitly disclose that the lid and the tray are made of translucent or transparent materials, Hovatter discloses that cover 204 is made from a transparent material to allow the contents of the device (pipette tips) to be readily seen, and further discloses that the material of the lid and the tray can be made from any conventional material that is inexpensive and does not significantly outgas or shed particles, for example glass-filled polypropylene (see [0041]). In light of the disclosure, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the tray and the lid from clear polypropylene, which would enable visual inspection of the contents of the device.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Sampson in view of Kilcoin et al. (“Kilcoin”) (WO 0010707 A1).
With respect to claim 11, Sampson does not disclose that the chimneys 24 each delimit a frustoconical-shaped opening having its largest section on the upper face of the lid.
Kilcoin discloses an analogous device for facilitating insertion of a pipette tip into a tube via a septum situated in a chimney (see Fig. 3A), wherein the chimney comprises a frustoconical-shaped opening having its largest section at the top to minimize entry of contaminants into the tube (see lines 10-16, p. 9). In light of the disclosure of Kilcoin, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the chimneys 24 of Sampson with a frustoconical-shaped opening having its largest section on the upper face of the lid.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 PAUL S HYUN whose telephone number is (571)272-8559. The examiner can normally be reached M-F 8:30-5:00.
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/PAUL S HYUN/ Primary Examiner, Art Unit 1796
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