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
This is an office action in response to Applicant’s arguments and remarks filed on 29 December 2025. Claims 1 and 3-5 are currently pending in the application. Claim 2 has been cancelled. Claims 1 and 3-5 are being examined herein.
Status of Objections and Rejections
The objections to claim 2 are withdrawn in view of the cancellation of the claim.
The interpretations of claims 1, 4, and 5 under 35 U.S.C. § 112(f) is maintained.
The rejections of claims 1 and 3-5 under 35 U.S.C. § 112(b) are withdrawn in view of amendments.
The rejection of claim 2 under 35 U.S.C. § 112(b) are withdrawn in view of cancellation of the claim.
The rejections of claims 1 and 4-5 under 35 U.S.C. § 102(a)(1) are maintained.
The rejection of claims 2 under 35 U.S.C. § 103 is withdrawn in view of the cancellation of the claim.
The rejection of claim 3 under 35 U.S.C. § 103 is maintained.
Response to Arguments
Applicant's arguments filed 29 December 2025 have been fully considered but they are not persuasive.
In regard to the rejection of claim 1, Applicant argues that the bypass passage 43 of Molitor does not read on the vent groove of amended claim 1. Applicant states the bypass passage 43 is "structurally and functionally distinct" from the vent groove (Remarks, pg. 04).
Examiner respectfully disagrees. As discussed below in the newly presented prior art rejection, the bypass section 15 of Molitor acts to vent the air duct 10 when the valve is open (par. 0046, 0088) and reads on the instantly claimed vent groove. Applicant makes no arguments against the bypass section 15, only bypass passage 43 (remarks, pg. 04). The examiner does not rely on the bypass passage 43 of Molitor to read on the limitation. It is further noted that the features upon which applicant relies (i.e., "wherein the pressure-varying hole unit includes a vent groove to facilitate ventilation to the intra-tubular passage when the through hole is opened" from the examples presented in the table of 4 of the Remarks) 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). Namely, no part of the claim requires the vented groove to be on the inner surface of the stepped hole.
Applicant offers no further arguments for claims 4 and 5 outside of their dependence on claim 1.
In regard to the rejection of claim 3, Applicant only argues that Qu does not remedy the deficiencies of the vent groove of claim 1 (Remarks, pg. 05). Applicant asserts that the dimensional relationships of the insertion hole, central hole and connection hole in combination with the vent groove produces synergistic effects not taught by the prior art and that a POSITA would not have been motivated to eliminate Molitor’s separate bypass channel approach and integrate a vent groove within a stepped hole combined with the specific dimensional relationships.
Examiner respectfully disagrees. Ultimately, the only argument made by Applicant in regard to Molitor and Molitor in view of Qu are drawn to the newly amended feature of the vent groove. Applicant only presents an argument against bypass passage 43 of Molitor; however, Examiner believes the bypass section 15 has the structural and functional elements of the vent groove of the instant application. Moreover, applicant has not presented evidence of unexpected results. The fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). With respect to the modification of Molitor in view of Qu, one of ordinary skill in the art would have been motivated to modify the channel of Molitor to include the connections taught by Qu to ensure a tight joint connection so that it doesn’t leak and drives the pressure change to ensure the fluid is being driven into the syringe (Qu at paras. [0023], [0025]). Applicant has not provided any substantive evidence to the contrary but only conclusory statements.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“a suction unit” in claim 1.
Examiner interprets “a suction unit” to be a pipette or any system capable of generating a temporary vacuum in the system or equivalents thereof (pg. 07 of specification).
“an opening-and-closing unit” in claims 1 and 5.
Examiner interprets “an opening-and-closing unit” to be an actuation means (lever or button and corresponding parts) for varying the pressure of the intra-tubular passage by way of the through hole or equivalents thereof (Claim 5; pg. 04, 10).
“a pressure-varying hole unit” in claims 1 and 4.
Examiner interprets “a pressure-varying hole unit” to be a through hole or equivalents thereof connecting intra-tubular passage to outside body (pg. 03)
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
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, 4, and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Molitor (WO 2019096993 A1; citations made with respect to copy provided 1 October 2025).
Regarding claim 1, Molitor teaches a micrometering device for producing a small volume of fluid sample to be used with a pipette device (Abstract) (for coupling a capillary tip to a sample collection equipment). Molitor teaches a microdosing device module 1 that attaches and detaches to an external pipetting device 200' (Fig. 2; par. 0023). Molitor teaches:
A base body 40 (par. 0088) with an air duct 10 (an intra-tubular passage) passing through the full length of the base body and connected at one end to a conventional pipette 200 (a suction unit ) and connected at the opposite end to a connecting section 100 holding a tip 99 (a capillary tip) (Fig. 1a; par. 0083) (a body having an intra-tubular passage penetrating through both sides thereof, wherein the intratubular passage includes an insertion hole configured to be coupled with a suction unit of the sample collection equipment, a connection hole configured to be coupled with the capillary tip, and a central hole between the insertion hole and the connection hole).
At least one valve 31 (a pressure-varying hole unit) along air duct 10 to control the pressure in air duct 10 (Fig. 1a; par. 0083, 0085) and a passage opening 14 (a through hole) that connects the air duct to the valve and extends to the external environment of the device (Fig. 1b; par. 0087-0088) (a pressure-varying hole unit which is formed in the body, and includes a through hole formed to communicate the intra-tubular passage to outside of the body).
The at least one valve 31 having an actuation means (an opening-and-closing unit) comprising a valve tappet 36a, spring 36b, actuator 36e, and membrane 36c in a valve guide 37 on a side of the base body 10 at the passage opening 14 (Fig. 1b; par. 0090); spring 36b and membrane 36c (parts of the opening-and-closing unit) allow elastic movement of the at least one valve 31 (par. 0090, 0096) (an opening-and-closing unit which is elastically supported by the pressure-varying hole unit, and is installed to close or communicate the through hole and the intra-tubular passage while moving with an elastic force).
A bypass section 15 at the innermost portion of valve 31 adjacent passage opening 14 connecting sections 11 and 12 of the air duct 10 to passage opening 14 wherein when the valve is closed the bypass section 15 is also closed and opened when the valve is opened (Fig. 1b; par. 0088). Molitor teaches the closable bypass channel serves to ventilate air for pressure equalization (par. 0046) (wherein the pressure-varying hole unit includes a vent groove to facilitate ventilation to the intra-tubular passage when the through hole is opened).
Regarding claim 4, Molitor teaches within the at least one valve 31, 32 (the pressure-varying hole unit) is a valve guide 37 with increasing width when moving from the side closest to passage opening 14, 23 to the side closest to the external environment. The walls of the valve guide 37 that change the width are seen circled in provided Figure 1b below and are significantly wider than passage opening 14 (wherein the pressure-varying hole unit includes stepped holes ,wherein a hole further from the passage has a larger inner diameter than a hole closer to the passage).
Regarding claim 5, Molitor teaches the at least one valve 31, 32 having an actuation means (an opening-and-closing unit) comprising:
A spring 36b and membrane 36c in valve guide 37 on a side of the base body 10 at the passage opening 14, 23 (Fig. 1b, 1c; par. 0090); each allowing for elastic movement of the at least one valve 31, 32 (par. 0090, 0096).
The valve guide 37 increases in width when moving from the side closest to passage opening 14, 23 to the side closest to the external environment. The walls of the valve guide 37 that change the width are seen circled in provided Figure 1b below and are significantly wider than passage opening 14. Membrane 36c specifically is installed between the innermost wall (step) of the valve guide 37 and passage opening 14 (Fig. 1b) (an elastic body installed on a step of the stepped holes)
A clamping pin 36d (a pressing member) and actuator 36e that moves valve tappet 36a through valve guide 37 with the help of spring 36b and abuts membrane 36c sealing passage opening 14 (Fig. 1b; par. 0090).
Clamping pin 36d and actuator 36e are partially stopped by membrane 36c when valve tappet 36a abuts wall of the valve guide 37 that has passage opening 14 allowing for passage opening 14 to seal/unseal (Fig. 1b; par. 0090-0092) (a pressing member supported by the elastic body, and for opening and closing the through hole).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Molitor (WO 2019096993 A1; citations made with respect to copy provided 1 October 2025) in view of Qu, et. al. (CN 208146014 U).
Regarding claim 3, Molitor teaches:
A first opening 21 at an end of air duct 10 connecting to the pipette 200 (Fig. 1a; par. 0083) (an inner diameter of the insertion hole)
A first air channel section 11 connecting the first opening 11 to passage opening 14, 23 (Fig. 1a, par. 0083) (an inner diameter of the central hole)
A second opening 22 connecting air duct 10 to connecting section 100 and tip 99 (Fig. 1a; par. 0083) (an inner diameter of the connection hole).
Modified Molitor is silent to wherein an inner diameter of the insertion hole is larger than an inner diameter of the central hole, and the inner diameter of the central hole is larger than an inner diameter of the connection hole.
Qu teaches a micropipette for accurately transferring small volumes by a capillary and suction device(par. 0004). Qu teaches the micropipette comprises a tube shell 1 with a core tube 2, a pressurizing device with drive wheel 4 along the side wall of the shell 1 and an air bag 11 and air injection nozzle 12 at an upper end of the tube shell 1, and the core tube 2 has a capillary 3 extending out a lower end of the core tube 2(Fig. 1; par. 0021, 0023, 0025). Qu teaches the tube shell 1 is connected to the pressurizing device through the sealing slider 13 clamping onto core tube 2 within air injection nozzle 12 (par. 0023); Figure 1 and 2 clearly depicts core tube 2 inserted inside slider 13 within tube shell 1 meaning the diameter of slider 13 must be smaller than the diameter tube shell 1. A modified copy of Figure 2 is provided below with an arrow indicating the opening of the tube shell 1 meeting injection nozzle 12 with slider 13 inside (wherein an inner diameter of the insertion hole is larger than an inner diameter of the central hole). Qu teaches this configuration, the core tube 2 being inside slider 13 within tube shell 1 ensures a tight connection of injection bag 11 to the tube 2 to establish the pressure changes that drives the fluid moving into and out of the capillary 3.
On the opposite end of tube shell 1 of the pressurizing device is a capillary 3 extending out of tube shell 1 through core tube 2 (Fig. 1; par. 0025). When turning to Figure 1, tube shell 1 moves inward at the lower end to meet core tube 2 meaning it is smaller than the sides of tube shell 1 that do not move inward to meet injection nozzle 12 as explained in claim 2 (wherein the inner diameter of the central hole is formed larger than an inner diameter of the connection hole). A modified copy of Figure 1 is provided below with an upper arrow indicating to the diameter of the insertion hole and the lower arrow indicating to the diameter of the connection hole. Narrowing the diameter of the lower hole of the tube shell 1 allows for the tube shell to secure the core tube 2 and capillary 3 within the device.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the diameter of the first opening of Molitor to be wider than the pipette connection portion as taught by Qu in order to create a tight connection to pressurize the chamber and to modify the diameter of the second opening of Molitor to be narrower than the first opening as taught by Qu in order to secure the capillary within the chamber. Because both devices use pressure to meter small volumes of liquid into a chamber, modifying the first opening to be wider than the pressurizing portion opening and the second opening as provided by Qu, provides likewise sought functionality with reasonable expectation of success. MPEP 2143(I)(G).
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 MADISON T HERBERT whose telephone number is (571)270-1448. The examiner can normally be reached Monday-Friday 8:30a-5:00p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Maris Kessel can be reached at (571) 270-7698. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.T.H./Examiner, Art Unit 1758
/MARIS R KESSEL/Supervisory Patent Examiner, Art Unit 1758