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 with traverse of Group I, claims 1-15, in the reply filed on 02/03/2026 is acknowledged. The traversal is on the ground(s) that the Office Action does not explain why there would be a serious search and/or examination burden. This is not found persuasive because this application was restricted under Unity of Invention analysis rather than 35 U.S.C. 111 analysis. The prior Office Action explained why unity of invention is lacking, due to the lack of a corresponding special technical feature, and therefore restriction is proper.
The requirement is still deemed proper and is therefore made FINAL.
Claims 16-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 02/03/2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04/20/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 1, 6, and 12 are objected to because of the following informalities:
Claim 1 defines “A transfer mechanism/device…”; however, each dependent claim depending on claim 1 recites “The transfer mechanism…”. Therefore it is recommended to amend claim 1 to recite “A transfer mechanism
Claim 6: change “the pivoting motion of the mount (43)/holding means (47)” to “the pivoting motion of the mount (43) or holding means (47)” for consistency with the base claims.
Claim 12: change “the mount (43)/holding means (47)” to “the mount (43) or the holding means (47)” for consistency with the base claims.
Appropriate correction is required.
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are:
a holding means (47) for the one or more objects in claim 1; and
complementary guiding means (48) on the shuttle (42) in claim 3.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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.
Claims 7-9, 13, and 15 are 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 7 recites the limitation "the pivoting range" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the objects" in line 3. There is insufficient antecedent basis for this limitation in the claim. The base claim(s) define “one or more objects” rather than a plurality of objects.
Regarding claim 7, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05.
Regarding claim 7, the phrase “about 90⁰” renders the claim indefinite as this is an approximation and there is nothing in the specification to provide any indication as to what range of movement is covered by “about 90⁰”. See MPEP § 2173.05.
Regarding claim 7, the phrase “essentially horizontal” renders the claim indefinite as this is an approximation and there is nothing in the specification to provide any indication as to what range of orientations is covered by “essentially horizontal”. See MPEP § 2173.05.
Claim 8 recites the limitation "the pivoting motion" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the defined axial position" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the pivoting motion of the mount (43) or holding means (47)" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the at least one rotation axis" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "the side of the opening" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "the pivoting motion" in lines 3-4. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 15, the phrase "preferably" (line 3 and line 4) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05.
Dependent claims are rejected for the same reason(s) as the base claim(s) upon which they depend.
Claim Rejections - 35 USC § 102
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.
Claims 1-10 and 13-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gabusi (WO 2020144722 A1) (already of record) (US equivalent document PGPUB 20220055232, also already of record, will be cited herein).
Regarding claim 1, Gabusi discloses a transfer mechanism for transferring one or more objects 11 through a transfer port (Abstract, para. 68, 73, 148), comprising:
a supporting base (called guide members 36; reads on a supporting base as it serves as a base to support a slider 23, see para. 87-89 and Figs. 2-3, sheet 3 of 4);
a shuttle (called slider 23, reads on a shuttle as it serves to shuttle objects from one location to another, see para. 76, 148 and Figs. 1-4, sheets 1-3 of 4) with a holding means (comprising portion 23a) for the one or more objects (para. 76, 82) (Figs. 2-4, sheets 2-3 of 4); and
a container (22) accommodating the supporting base (36) and the shuttle (23) and configured to accommodate the one or more objects (11) (para. 74-77) (Fig. 3, sheet 2 of 4), and having at least one opening (22a) at an end portion in an axial direction of the container (para. 74, 85) (Fig. 3, sheet 3 of 4),
wherein the shuttle (23) is arranged at the supporting base (36) for a translational motion along the axial direction and is configured to thereby move the holding means with the one or more objects (para. 86-88) (Figs. 3-4, sheet 3 of 4), and
wherein the container (22) is configured to be coupled to the transfer port to allow the one or more objects to be moved into or out from the container through the at least one opening (22a) in that the shuttle translates in the axial direction (para. 68, 86-88) (Figs. 1-4, sheets 1-3 of 4).
Regarding claim 2, the entirety of the claim is directed to a further limitation of the mount; however, the mount was listed as one of a plurality of alternatives in claim 1, from which claim 2 depends, and is therefore not required for patentability. The prior art satisfied claim 1 in disclosing one of the other alternatives, and therefore, claim 2 does not introduce a patentable distinction over the prior art.
Regarding claim 3, Gabusi discloses wherein the shuttle (23) is guided at and along the supporting base (36) for the translational motion by complementary guiding means on the shuttle and the supporting base (para. 86-89).
Regarding claim 4, Gabusi discloses wherein the holding means is articulated with the shuttle to allow a pivoting motion of the holding means relative to the shuttle about at least one rotation axis (para. 88) (Figs. 3-6, sheets 3-4 of 4).
Regarding claim 5, Gabusi discloses wherein the holding means is articulated with the shuttle to allow the pivoting motion of the holding means about the at least one rotation axis at a defined axial position of the translational motion (para. 88) (Figs. 3-6, sheets 3-4 of 4).
Regarding claim 6, Gabusi discloses wherein at least one rotation axis is arranged such that the pivoting motion of the holding means is aided by gravity at the defined axial position of the translational motion (para. 88) (Figs. 3-6, sheets 3-4 of 4).
Regarding claim 7, Gabusi discloses wherein a pivoting range of the holding means is configured to allow a change of posture of the objects (11) by about 90⁰ from a horizontal orientation to a vertical orientation (para. 88) (Figs. 3-6, sheets 3-4 of 4).
Regarding claim 8, Gabusi discloses a first stopper (42) defining an end position of pivoting motion (para. 104-108) (Figs. 5-6, sheet 4 of 4).
Regarding claim 9, the entirety of the claim is directed to a further limitation of the end position of the translational motion; however, this limitation was recited in the alternative in claim 8, from which claim 9 depends, and is therefore not required for patentability. The prior art satisfied claim 8 in disclosing one of the other alternatives, and therefore, claim 9 does not introduce a patentable distinction over the prior art.
Regarding claim 10, Gabusi discloses a transfer actuator (called extraction device 64) accessible from the outside of the container and configured to effect the translational motion of the shuttle (23) along the axial direction (para. 97-99) (Figs. 3-4, sheet 3 of 4).
Regarding claim 13, Gabusi discloses wherein the shuttle (23) is configured to be pulled/pushed from a side of the opening to effect the translational motion if provided (para. 97-99) (Figs. 3-4, sheet 3 of 4).
Regarding claim 14, Gabusi discloses wherein the holding means is one that is configured to hold a plurality of Petri dishes in an aligned parallel orientation (para. 62, 76) (Figs. 2-3, sheet 3 of 4).
Regarding claim 15, Gabusi discloses a door configured to selectively close the at least one opening (22a) of the container wherein the door is configured to be connectable to the transfer port wherein the transfer port is an alpha unit (para. 68, 74-75).
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.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Gabusi (WO 2020144722 A1) (already of record) (US equivalent document PGPUB 20220055232, also already of record, will be cited herein).
Regarding claim 11, Gabusi discloses the transfer actuator configured to effect the translational motion of the shuttle along the axial direction, as set forth above.
Gabusi is silent as to the transfer actuator including a first rod connected with the shuttle to effect the translation motion.
However, Gabusi discloses wherein the transfer actuator can comprise one or more of a gripping member or an arm connected with the shuttle to effect the translation motion (para. 100), and modifying the transfer actuator to comprise a first rod as claimed would amount to merely changing the shape of the transfer actuator, e.g., forming the transfer actuator as a rod-shaped arm. It has been held that changes in shape are considered a matter of choice which a person of ordinary skill in the art would find prima facie obvious absent persuasive evidence that the particular shape configuration is significant (MPEP §2144.04). Therefore, the claim does not introduce a patentable distinction over the prior art.
Allowable Subject Matter
Claim 12 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, and to correct the minor informalities noted above.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Bores et al. (US Patent Application Publication 2018/0362910) is directed to a device for transferring cell culture vessels through a transfer port of an aseptic interior.
Deutschle et al. (US Patent Application Publication 2017/0247132) is directed to a device for transferring pharmaceutical containers through a transfer port of a clean room using translational motion.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOLLY KIPOUROS whose telephone number is (571)272-0658. The examiner can normally be reached M-F 8.30-5PM.
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/HOLLY KIPOUROS/Primary Examiner, Art Unit 1799