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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-9, 14, and 16) in the reply filed on January 5, 2026 is acknowledged.
With respect to Applicant’s amendments to the claims to make claim 10 dependent on elected claim 1, of the restriction requirement, applicant should note that the restriction requirement was properly made with respect to the claims presented at the time of the previous office action (i.e., the claims as originally presented) and Applicant has not presented any arguments directed to the original claims. Additionally, even with respect to the newly amended claims, the amended claims do not make a contribution over the prior art (i.e., Groups I and II still lack the same or corresponding special technical feature) because the groups do not make a contribution over the prior art, namely Tokuyama (JP 11153605 A) (provided by applicant in IDS dated 6/29/2023) as set forth below:
Amended claim 10 is directed to an invention that has a shared technical feature that does not make a contribution over the prior art: Claims 1 and 10 lack unity of invention because even though the inventions of these groups require the technical feature of the pipette tool of claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Tokuyama (JP 11153605 A) (provided by applicant in IDS dated 6/29/2023). Tokuyama discloses a pipette tool comprising a shield plate (plate 5) that includes a first major surface (other end 4B) and a pipe member (nozzle tip 2) that includes a first end portion (hollow circular cone portion 2b), a second end portion (sample suction nozzle mounting portion 2c), and a surrounding wall (cylindrical body 2d) defining an internal space (See Figs. 4-7 and Paras. 0019-0024), wherein the pipe member is fixed at an end surface of the first end portion to the first major surface of the shield plate (See Fig. 4 and Para. 0019); includes in the surrounding wall in the first end portion a first opening (sample suction port 2a) communicating with the internal space; and includes in an end surface of the second end portion a second opening (opening that sample suction nozzle 20 is attached to, See Fig. 4) communicating with the internal space, an outer periphery of the end surface of the first end portion of the pipe member is inward to an outer periphery of the first major surface of the shield plate in the view from a direction of a major axis of the pipe member (See Fig. 4 reproduced below).
As such, claims 10-13, 15, and 17 are withdrawn without traverse.
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Fig. 4 (reproduction)
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 second major surface 32 should be clearly depicted. Specifically, applicant’s specification filed 4/12/2023 describes in Para. 0025 that the second major surface is depicted in Figs. 1 and 4; however, the embodiment numbering is only depicted in Fig. 4. 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 Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 14 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 14 recites the limitation "the second major surface" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
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 and 3-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tokuyama (JP 11153605 A) (provided by applicant in IDS dated 6/29/2023).
With respect to claim 1 Tokuyama discloses a pipette tool comprising
a shield plate (plate 5) that includes a first major surface (other end 4B); and
a pipe member (nozzle tip 2) that includes a first end portion (hollow circular cone portion 2b), a second end portion (sample suction nozzle mounting portion 2c), and a surrounding wall (cylindrical body 2d) defining an internal space (See Figs. 4-7 and Paras. 0019-0024),
wherein the pipe member
is fixed at an end surface of the first end portion to the first major surface of the shield plate (See Fig. 4 and Para. 0019);
includes in the surrounding wall in the first end portion a first opening (sample suction port 1a/2a/6a) communicating with the internal space (See Figs. 3, 4 and 7 and Paras. 0016, 0019, and 0025); and
includes in an end surface of the second end portion a second opening (opening that sample suction nozzle 20 is attached to, See Fig. 4) communicating with the internal space,
an outer periphery of the end surface of the first end portion of the pipe member is inward to an outer periphery of the first major surface of the shield plate in the view from a direction of a major axis of the pipe member (See Fig. 4 reproduced below).
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Fig. 4 (reproduction)
With respect to claim 3 Tokuyama discloses/depicts that the pipette member includes in the surrounding wall in the first end portion at least two first openings (See Figs. 3, 4, and 7 and Paras. 0016, 0019, and 0025).
With respect to claim 4 Tokuyama depicts that an angle between the major axis of the pipe member and the first major surface of the shield plate is 70° to 90° (See second reproduction of claim 4 below).
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Fig. 4 (second reproduction)
With respect to claim 5 Tokuyama discloses that the end surface of the first end portion of the pipe member is fixed at a center of the first major surface of the shield plate. (See second reproduction of Fig. 4 above).
With respect to claim 6 Tokuyama discloses that the pipe member is cylindrical columnar, elliptical columnar, or polygonal columnar in shape (See Para. 0019).
Claim(s) 1, 2, 5, and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Qian (US 2016/0097049 A1).
With respect to claim 1 Qian discloses a pipette tool (system for collecting a sample of nucleic acid, See Para. 0034) comprising
a shield plate (removable cap 101) that includes a first major surface (internal side 107; See Para. 0034 and Figs. 1A-C); and
a pipe member (filter column 200) that includes a first end portion (area depicted by male threads 220), a second end portion (area adjacent to open end 204), and a surrounding wall (body of column 200) defining an internal space (internal passage 206, See Para. 0035 and Figs. 2A-3),
wherein the pipe member
is fixed at an end surface of the first end portion to the first major surface of the shield plate (See Fig. 3 and Para. 0035 for discussion of how the filter column 200 is adapted to be removably attached to the connection interface of the receptacle cap 101);
includes in the surrounding wall in the first end portion a first opening (open end 202) communicating with the internal space (See Figs. 2A-B and Para. 0035); and
includes in an end surface of the second end portion a second opening (open end 204, See Fig. 2B) communicating with the internal space,
an outer periphery of the end surface of the first end portion of the pipe member is inward to an outer periphery of the first major surface of the shield plate in the view from a direction of a major axis of the pipe member (See Figs. 1C and 3 for depiction of how the filter column has a smaller outer diameter than the inner diameter of the removable/receptacle cap 101; See Para. 0034 for discussion of how the internal side of the cap comprises a connection interface 108 that is threaded with female threads 110 for being screwed onto a receptacle having male threads).
With respect to claim 2 Qian disclosed that the first opening is in contact with the first major surface of the shield plate (See Para. 0034 and Figs. 3 and 6B for depiction of the filter column interfaced with the receptacle cap).
With respect to claim 5 Qian depicts that the end surface of the first end portion of the pipe member is fixed at a center of the first major surface of the shield plate (See Figs. 1C and 3).
With respect to claim 6 Qian discloses that the pipe member is cylindrical columnar, elliptical columnar, or polygonal columnar in shape (See Paras. 0035 and 0037).
Claim(s) 1, 2, 6, and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Black et al (US 2016/0195457 A1).
With respect to claim 1 Black discloses a pipette tool (system, See Fig. 1 and Para. 0031) comprising
a shield plate (mixing vessel 202) that includes a first major surface (internal surface 204, See Figs. 2A-B and Paras. 0119-0120); and
a pipe member (pipette tip 208) that includes a first end portion (proximal portion 212), a second end portion (distal portion 216), and a surrounding wall (walls of pipette tip) defining an internal space (internal cavity 214, See Figs. 2A-B and Paras. 0119-0120),
wherein the pipe member
is fixed at an end surface of the first end portion to the first major surface of the shield plate (See Fig. 2B for depiction of the pipette tip in contact with he internal surface of the mixing vessel);
includes in the surrounding wall in the first end portion a first opening (orifice 210) communicating with the internal space (See Figs. 2A-B and Para. 0119); and
includes in an end surface of the second end portion a second opening (See Fig. 1 and Para. 0112 for discussion of how a nozzle is engaged with a distal portion of the pipette tip) communicating with the internal space,
an outer periphery of the end surface of the first end portion of the pipe member is inward to an outer periphery of the first major surface of the shield plate in the view from a direction of a major axis of the pipe member (See Fig. 2B for depiction of how the orifice of the pipette tip is contained with and in contact with the internal surface of the mixing vessel; inner diameter of the mixing vessel is depicted as exceeding the outer diameter of the pipette tip).
With respect to claim 2 Black discloses and depicts that the first opening is in contact with the first major surface of the shield plate (See Fig. 2B and Para. 0120).
With respect to claim 6 Black depicts that the pipe member is cylindrical columnar, elliptical columnar, or polygonal columnar in shape (See Fig. 1-4D for depiction of the columnar shape of the pipette tip).
With respect to claim 14 Black depicts that the shield plate excludes an opening through rom the first major surface to a second major surface (See Figs. 1-3B for depiction of no hole in the internal surface).
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tokuyama (JP 11153605 A) (provided by applicant in IDS dated 6/29/2023).
Refer above for the disclosure of Tokuyama.
With respect to claim 16, Tokuyama fails to disclose that the pipette tool is a single piece integrally molded with the shield plate and the pipe member. However, It would have been obvious to one of ordinary skill in the art at the time the invention was made to make the shield plate and pipe member integral, since it has been held that forming in one piece a structure which has formerly been formed in two, or more pieces, involves only routine skill in the art. Howard v. Detroit Stove Works, 150 USPQ 164 (1893).
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Qian (US 2016/0097049 A1).
Refer above for the disclosure of Qian.
With respect to claim 16, Qian fails to disclose that the pipette tool is a single piece integrally molded with the shield plate and the pipe member. However, It would have been obvious to one of ordinary skill in the art at the time the invention was made to make the shield plate and pipe member integral, since it has been held that forming in one piece a structure which has formerly been formed in two, or more pieces, involves only routine skill in the art. Howard v. Detroit Stove Works, 150 USPQ 164 (1893).
Allowable Subject Matter
Claims 7-9 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest cited prior art of reference fails to disclose or fairly teach that:
an outer periphery of the second major surface of the shield plate is inward to the outer periphery of the first major surface of the shield plate in the view from a direction orthogonal to the first major surface of the shield plate (each of Tokuyama, Qian, and Black disclose/depict that an opposing surface of the first major surface either has the same circumference/diameter or is greater than outer periphery is greater than the outer periphery of the first major surface) (claim 7). Claim 9 is dependent upon claim 7 and inherits the same status; and
the shield plate is tapered in diameter from the first major surface to the second major surface (each of Tokuyama, Qian, and Black disclose/depict that an opposing surface of the first major surface either has the same circumference/diameter or is greater than outer periphery is greater than the outer periphery of the first major surface) (claim 8).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRITTANY I FISHER whose telephone number is (469)295-9182. The examiner can normally be reached IFP.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth Robinson can be reached at 571-272-7129. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRITTANY I FISHER/Examiner, Art Unit 1796 February 7, 2026