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 21, 2026 is acknowledged. Claims 1 and 3-14 remain pending wherein claims 8, 13 and 14 remain withdrawn but subject to rejoinder. Applicant amended claims 1, 4, 5 and 7-13 to obviate the outstanding claim objections.
Response to Arguments
Applicant's arguments directed to the patentability of the claims have been fully considered but they are not persuasive.
Applicant argues that the claims are patentable over the disclosure of Berman et al. (“Berman”) because Berman does not disclose the claimed robotic sample handling system. Remarks 7. The argument is not persuasive because the rejection of claim 1 acknowledges that Berman does not disclose the claimed robotic sample handling system. Instead, the rejection concludes it would have been obvious to have modified the system taught by Berman so as to arrive at the claimed robotic handling system. Consequently, Applicant’s argument that the claims are patentable over Berman because Berman does not teach the claimed robotic sample handling system is moot.
Applicant appears to also argue that it would not have been obvious to have modified the system taught by Berman so as to arrive at the claimed robotic handling system. According to Applicant, while Berman teaches a “robotic mechanism”, Berman does not disclose that said “robotic mechanism” is “controllable to be positioned…along a Z-axis perpendicular to the work area” as recited in claim 1. Remarks 8. The argument is not persuasive. As acknowledged by Applicant (Remarks 8), Berman teaches a “robotic mechanism” that places a loaded chip device into an instrument. Id. While the disclosure does not convey movement along the Z-axis, Berman further discloses that the insertion of the loaded chip device (sample capsule 1522) into the instrument can be achieved via a push-push mechanism (see [0198]), which occurs along the Z-axis (i.e. up and down) (see Fig. 15). The disclosure provides a motivation for configuring the “robotic mechanism” to move along the Z-axis to facilitate insertion of the loaded chip device into the instrument via said push-push mechanism. If the system is modified as discussed above, then the robotic mechanism would be “controllable to be positioned…along a Z-axis perpendicular to the work area” as recited in claim 1.
Regarding Applicant’s argument that Berman merely teaches alignment of holes using a push-push mechanism rather than a work area comprising a module comprising a push-push mechanism (Remarks 8), Berman explicitly teaches that the push-push mechanism applies to the work area illustrated in Figure 15 (see [0197]-[0198]). That said, Figure 15 illustrates a work area comprising a module 1526 comprising a push-push mechanism for securing a loaded chip device 1522 therein. Based on the Figure, the push-push mechanism is achieved by movement of the chip device 1522 up and down along the Z-axis (see Fig. 15). Consequently, contrary to Applicant’s remarks, Berman explicitly discloses a work area comprising a module comprising a push-push mechanism. Moreover, as discussed above, if the “robotic mechanism” is configured to insert the loaded chip device 1522 into the module 1526, then the controller would control the “robotic mechanism” to move along the Z-axis.
Applicant also argues that the claims are patentable over the disclosure of Berman because Berman teaches away from the modification proposed in the rejection of claim 1, specifically using a robot to insert a sample into a module. Remarks 9. The argument is not persuasive because Berman explicitly teaches the use of a robot for inserting a loaded chip device into an instrument (see [0195]). Notwithstanding the disclosure of Berman cited by Applicant (see section 4.3 of the Remarks), in the context of inserting a loaded chip device into an instrument, Berman does NOT teach away from using a robot.
Lastly, Applicant argues that the rejection of claim 1 involves modification of multiple, unrelated elements of Berman’s system such that the rejection improperly uses Applicant’s claim as a roadmap. Remarks 10. The argument is not persuasive. First, contrary to Applicant’s remarks, the system taught by Berman IS a robotic sample handling system comprising at least one robotic arm, wherein the at least one robotic arm can move in all three axes. Berman explicitly discloses a robot that retrieves a chip device from a storage location (i.e. the system handles samples robotically) (see [0195]), and Berman explicitly discloses the use of a robot for subsequently inserting the chip device into an instrument (see [0195]) using a push-push mechanism (see [0198]). To achieve the robotic automation disclosed in [0195], the robot(s) must comprise a robotic arm and it/they must be able to move in X/Y/Z axes. Consequently, the rejection does not require “reinterpret[ing]” Berman as a robotic sample handling system, or “further add[ing]” an X/Y/Z robotic arm, as argued by Applicant. Second, the rest of the modifications discussed by Applicant flow naturally from the disclosure of Berman. Specifically, based on Berman’s disclosure that a robot may be used to retrieve a chip device from storage and subsequently insert the chip device into an instrument using a push-push mechanism, 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 an X/Y/Z robot comprising an arm for retrieving a chip device and inserting the chip device via a push-push mechanism, wherein the X/Y/Z robot moves in the Z-axis to achieve the insertion. Naturally, the movement(s) of said robot would be controlled by the controller.
For the foregoing reasons, the outstanding rejections are maintained.
Claim Objections
Claim 5 is objected to because of the following informalities:
Claim 5 recites a Markush group. A Markush group should be a closed list of alternatives. See MPEP 2117(I). The claim currently recites “the effector comprises”, which is open.
Appropriate correction is required. It is suggested that the claim employ language used in claim 6, for example “the effector is at least one of”.
Claim Rejections - 35 USC § 103
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, 3-6, 9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Berman (US 2021/0215607 A1). The provisional application to which Berman claims benefit provides support for the subject matter relied upon in the rejection below.
With respect to claim 1, Berman discloses a robotic sample handling system (see [0195]) for performing sample handling tasks in a laboratory environment, the system comprising (see Fig. 15):
a work area 1520 for holding samples;
at least one robotic arm for manipulating a sample (see [0195] disclosing a robot for retrieving a sample and inserting the sample into an instrument, meaning it comprises a structure corresponding to the broadest reasonable interpretation of “arm”); and
a controller configured to control the at least one robotic arm to position and operate the at least one robotic arm as part of a sample handling task (it is evident that the at least one robotic arm is linked to a controller), wherein
the work area comprises a module 1526 for use with one or more of the samples, wherein the module 1526 comprises a push-push mechanism which is actuatable by downward force and is arranged to, by repeated pushes, alternately assume a latched position and an unlatched position (see [0198]).
The system differs from the claimed invention in that Berman does not explicitly disclose that the controller is configured to control the at least one robotic arm in the claimed manner to actuate the push-push mechanism. However, given that Berman discloses that the system is automated (see [0152]) and the at least one robotic arm is configured to place a sample capsule 1522 into an analyzer (i.e. the module 1526) (see [0195]), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have configured the controller to control the at least one robotic arm to be positioned in a plane parallel to the work area 1520 and move along a Z-axis perpendicular to the work area 1520 to actuate the push-push mechanism (see [0198]).
With respect to claim 3, the module 1526 is a stand, wherein the stand comprises:
a receiving part (receptacle) for receiving and removably holding a sample container 1522 (see Fig. 15); and
an effector (e.g. ZMW array comprising a port) (see Fig. 15 and [0197]) for acting on a sample which is placed within a predefined vicinity of the effector; wherein
the push-push mechanism is arranged to:
in the latched position (see right figure of Fig. 15), position the sample container 1522 in the predefined vicinity of the effector, and
in the unlatched position (see left figure in Fig. 15), position the sample container 1522 out of the predefined vicinity of the effector (see [0198]).
With respect to claim 4, if the modification is made (see rejection of claim 1), then the controller would be configured to control the at least one robotic arm to actuate the push-push mechanism by pushing on a part of the sample container (see [0198] and Fig. 15).
With respect to claim 5, the effector comprises a radiation source for irradiating the sample (see [0073] disclosing that the ZMW array comprises a light source for irradiating the sample with evanescent waves).
With respect to claim 6, the sample container 1522 is a liquid container (see Fig. 15 and [0195] disclosing volumetric capacity of the container 1522).
With respect to claim 9, the at least one robotic arm comprises a liquid-handling head*, wherein the controller would be configured to control the at least one robotic arm to actuate the mechanism with the liquid-handling head (see rejection of claim 1 above).
*Absent the claim further limiting the scope of “liquid-handling head” any structure that handles a liquid is deemed to satisfy the limitation. In this case, the at least one robotic arm taught by Berman handles sample container 1522, which contains liquid.
With respect to claim 12, the at least robotic sample handling system is a robotic liquid handling system comprising an automated robotic gripper (see [0195]).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Berman as applied to claims 1, 3-6, 9 and 12 above, and further in view of Hawkins (US 5,705,628).
With respect to claim 7, the sample container 1522 is a liquid container, as discussed above (see rejection of claim 6). However, Berman does not disclose that the effector comprises a magnet for subjecting a liquid sample in the liquid container to a magnetic field. However, the system taught by Berman is intended to perform nucleic acid sequencing (see title), and it is well-known in the art to use magnetic beads and a magnetic field to purify and isolate nucleic acid in a sample mixture (e.g. bodily fluid) prior to performing sequencing (see abstract of Hawkins). That said, 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 effector with a magnet for purifying and isolating nucleic acid. If the modification is made, then the controller would be configured to control the at least one robotic arm to perform at least part of an automated magnetic bead separation process by operating the push-push mechanism to bring the liquid sample into and out of the magnetic field.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Berman as applied to claims 1, 3-6, 9 and 12 above, and further in view of Lange (US 6,264,814 B1).
With respect to claim 10, Berman does not disclose that the “liquid-handling head is arranged to mount a disposable tip”. However, Berman discloses that the liquid sample can be introduced into a cartridge (e.g. container 1522) using a pipette (see [0129]), and further discloses that the system is automated (see [0152]). Based on 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 provided the system with a multi-functional robotic arm that can pipette liquids into container 1522 and further actuate the push-push mechanism. For example, Lange discloses a multi-functional robotic arm used in a laboratory setting, the robotic arm comprising a pipette tip mount 190 for mounting a pipette tip 290 and a separate gripper 400 (e.g. tongs, fork) for manipulating objects (see Fig. 7 and lines 54-67, col. 13). If the system taught by Berman is modified pursuant to the teachings of Lange, then the liquid-handling head would comprise a mount for attaching a disposable tip, and the controller would be configured to control the at least one robotic arm to actuate the push-push mechanism with the liquid-handling head with or without a mounted disposable tip (e.g. using a separate tool of the at least one robotic arm).
With respect to claim 11, as discussed above, the liquid-handling head of the modified Berman system would be arranged to mount a fixed tip, and the controller would be configured to control the at least one robotic arm to actuate the mechanism with the liquid-handling head with a mounted fixed tip (see Fig. 8 of Lange illustrating a separate tool 400 for manipulating objects).
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 PAUL S HYUN whose telephone number is (571)272-8559. The examiner can normally be reached M-F 8:30-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL S HYUN/Primary Examiner, Art Unit 1796
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