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The 112b rejections are withdrawn in view of amendments.
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.
Claims 1-2, 4-6, 8-12, 16, 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lurz et al (US20040258568A1 published 12/23/2004; hereinafter Lurz).
Regarding claim 1, Lurz a treatment apparatus comprising:
a heating block (a heat regulating device 20 resting against a thermostated block 68 corresponding to thermostated block 8 in Fig. 2 – Figs. 2, 6-7 and paragraph 52) configured to heat a container accommodating a sample including a liquid within a first range of the container (“a first range of the container” is interpreted as a first portion of the container) in a gravity direction (the heat regulating device 20 is a Peltier element and capable of heating a container accommodating a sample including a liquid within a first portion of the container in a gravity direction – Figs. 2, 6-7 and paragraph 51) (the claim is deemed to read on a device capable of holding and heating a container because the limitation “a container accommodating a sample including a liquid” is a material worked upon by the treatment apparatus; per MPEP2115, inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims); and
a first cooling block (a heat regulating device 19 resting against the thermostated block 68 – Figs. 2, 6-7 and paragraph 52) configured to cool the container heated by the heating block within a second range of the container (“a second range of the container” is interpreted as a second portion of the container) narrower than the first range in the gravity direction (the heat regulating device 19 is a Peltier element and capable cooling a container within a second portion the container narrower than the first portion – Figs. 2, 6-7 and paragraph 51) (the claim is deemed to read on a device capable of cooling a container because the limitation “the container” is a material worked upon by the treatment apparatus; per MPEP2115, inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims),
wherein the second range includes a part on a side slightly above a liquid level of the sample in the container and a part of the container below the liquid level of the sample (the heat regulating device 19 is capable of cooling a container wherein the second portion comprising a part on a side slightly above a liquid level of the sample in the container and a part of the container below the liquid level of the sample – Figs. 2, 6-7 and paragraph 52), or the second range is on only a side below the liquid level of the sample in the container.
Regarding claim 2, Lurz teaches the treatment apparatus according to claim 1, wherein the second range includes a lower portion of the container (the heat regulating device 19 is capable of cooling a container wherein the second portion includes a lower portion of the container – Figs. 2, 6-7 and paragraph 52) (the claim is deemed to read on a device capable of cooling a container because the limitation “the container” is a material worked upon by the treatment apparatus; per MPEP2115, inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims).
Regarding claim 4, Lurz teaches the treatment apparatus according to claim 1, wherein the second range is on only a side below a liquid level of the sample in the container (the heat regulating device 19 is capable of cooling a container wherein the second portion is on only a side below a liquid level of the sample in the container (e.g. when the container is full of a liquid) – Figs. 2, 6-7 and paragraph 52).
Regarding claim 5, Lurz teaches the treatment apparatus according to claim 1,
wherein a first insertion hole into which the container is inserted and heated within the first range is formed in the heating block (the well 71 – Figs. 6-7),
wherein a second insertion hole into which the container is inserted and cooled within the second range is formed in the first cooling block (the well 72 – Figs. 6-7), and
wherein the second insertion hole is shallower than the first insertion hole (the well 72 is shallower than well 71 – Figs. 6-7 and paragraph 69).
Regarding claim 6, Lurz teaches the treatment apparatus according to claim 1, further comprising a second cooling block (the heat regulating device 19' is cooling – paragraphs 58 and Fig. 4A) configured to cool the container cooled by the cooling block within a third range of the container wider than the second range in the gravity direction (the heat regulating device 19' is capable of cooling a third portion of a container wherein the third portion is wider than the second portion – Fig. 4a).
Regarding claim 8, Lurz teaches the treatment apparatus according to claim 5, wherein the container comprises:
a container main body (a perforated plate – Fig. 1 and paragraph 27) which has a plurality of accommodation portions accommodating the sample (the perforated plate holding sample liquids are present in vials 1 – paragraph 26); and
coupling portions (holders 5 – Fig. 1) coupling the plurality of accommodation portions to each other (holes 6 in the perforated plate acting as holders 5 for the vials – paragraph 27 and Fig. 1 ).
Regarding claim 9, Lurz teaches the treatment apparatus according to claim 8, wherein an inner wall surface of the first insertion hole is in contact with or close to an insertion part excluding upper end portions of the plurality of accommodation portions (the wells 71 are capable of being brought in contact with bases of the vials 1 – Figs. 6-7).
Regarding claim 10, Lurz teaches the treatment apparatus according to claim 8, wherein the container comprises a lid (a plate-cover 12 covering holding plate 5 – Fig. 1 and paragraph 29) which has a lid portion covering upper end opening portions of the plurality of accommodation portions (plate-cover 12 having a bottom surface covering the vials 1 – Fig. 1 and paragraph 29) and a plurality of sealing portions inserted into the upper end opening portions (vial lids 3 inserted into the opening of the vials 1 – Fig. 1).
Regarding claim 11, Lurz teaches the treatment apparatus according to claim 10, wherein the lid portion has a flat plate shape having the same size as the coupling portions (the plate cover 12 has a portion with a flat plate shape that is the same size as the perforated plate with holders 5 – Fig. 1 and paragraph 29).
Regarding claim 12, Lurz teaches the treatment apparatus according to claim 10, wherein the plurality of sealing portions are a plurality of projecting portions protruding downward from a lower surface of the lid portion (the plate-cover 12 covering holding plate 5 is mounted over plate 5 and presses against the elastic lids 3 of vials 1 – paragraph 29 and Figs. 1-2) (the bottom of the plate-cover 12 contacts the top of the lids 3; therefore, the lids are deemed to project from the bottom of the plate cover 12).
Regarding claim 16, Lurz teaches the treatment apparatus according to claim 10, further comprising a movement device configured to sequentially move the container to the heating block (a block-changeover drive is capable of first moving a container via a push rod 26 – Fig. 2 and paragraphs 36-37) and then the first cooling block (block-changeover drive is capable of moving the block 8 via a rotor 30 after moving a container via a push rod 26 – Fig. 2 and paragraph 48),
wherein the movement device comprises a container mounting portion in which the container is mounted (housing 4' – Fig. 2), and
wherein the container mounting portion comprises:
a container support portion (a rotor 30 – Fig. 2) configured to support the coupling portions in a state in which the plurality of accommodation portions are suspended (the housing 4’ comprising the rotor 30 supporting the perforated plate when multiple vials are mounted – Fig. 2); and
a container fixing portion configured to overlap the lid portion (a disengageable clamping means 29 for securing the plate cover 12 – Fig. 2 and paragraph 45), the container fixing portion being configured to sandwich the container together with the container support portion (the clamping means 12 are capable of pressing the vials against the rotor 30 – Fig. 2, and the container fixing portion being provided in a manner of being able to be opened and closed with respect to the container support portion (the disengageable clamping means 29 is capable of being disengaged – Fig. 2 and paragraph 45).
Regarding claim 18, Lurz teaches the treatment apparatus according to claim 16, wherein the container fixing portion comprises a hook portion capable of being engaged and disengaged with respect to the container support portion (the disengageable clamping means 29 a hooked portion and is capable of being disengaged with the rotor 30 by allowing the plate cover 12 to be removed – Fig. 2 and paragraph 45), and
wherein the container fixing portion switches between a locked state in which the container fixing portion is unable to be released with respect to the container support portion (when the plate cover 12 is installed the disengageable clamping means 29 is unable to be released with respect to the rotor 30 – Fig. 2 and paragraph 45), and an unlocked state in which the container fixing portion is able to be released with respect to the container support portion (when the plate cover 12 is not installed the disengageable clamping means 29 is related with respect to the rotor 30 – Fig. 2 and paragraph 45).
Regarding claim 19, Lurz teaches a nucleic acid extraction system comprising the treatment apparatus according to claim 1, the nucleic acid extraction system extracting nucleic acid from cells of the sample (a laboratory thermostat which is especially appropriate for the PCR process – paragraphs 25).
Regarding claim 20, Lurz teaches a nucleic acid analysis system comprising the nucleic acid extraction system according to claim 19, the nucleic acid analysis system analyzing the extracted nucleic acid (then these samples may thereupon be analyzed and a determination thus can be made which ones were optimally thermostated – paragraphs 66).
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.
Claims 7, 17 are rejected under 35 U.S.C. 103 as being unpatentable over Lurz.
Regarding claim 7, Lurz teaches the treatment apparatus according to claim 5, comprising a third insertion hole into which the container is inserted and cooled within a third range of the container wider than the second range in the gravity direction (oval holes 73 are capable of holding and cooling a third portion of a container wherein the third portion is wider than the second portion – Fig. 7), and wherein the third insertion hole is deeper than the second insertion hole (the oval holes 73 are deeper than the wells 72 – Fig. 7 and paragraphs 69-70).
However, Lurz (Fig. 7) does not teach a second cooling block configured to cool the container cooled by the first cooling block.
Lurz (Fig. 4a) teaches a second cooling block (the heat regulating device 19' is cooling – paragraphs 58 and Fig. 4A) configured to cool the container cooled by the cooling block within a third range wider than the second range in the gravity direction (the heat regulating device 19' is capable of cooling a different sized range of container sizes from the heat regulating device 20 – Fig. 4a) (see 112b rejection). Lurz teaches to use a three heat regulating device setup to gain a linear temperature gradient across the middle heat regulating device (Fig. 4a and paragraph 59) (the middle heat regulating device is analogous to the heat regulating device 19 in claims 1 and 5).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the thermostated block 68, as taught by Lurz (Figs. 6-7), with a second heat regulating device 19', taught by Lurz (Fig. 4a), to gain a linear temperature gradient across the middle heat regulating device. One of ordinary skill would have expected that this modification could have been performed with a reasonable expectation of success because Lurz teaches multiple embodiments of the same invention.
Regarding claim 17, Lurz teach the treatment apparatus according to claim 16.
wherein the container fixing portion has a flat plate shape (a portion of the clamping means 29 contacting the housing 4 is a flat plate – Fig. 2).
Although Lurz does not teach the flat plate shape having the same size as the container support portion, Lurz teaches clamping means 29 with a flat plate shape. The examiner points out that the only difference between Lurz and the claimed flat plate shape was a recitation of relative dimensions of the claimed device, and the claimed relative dimensions would not perform differently than the prior art device. Therefore, per MPEP 2144.04 IV(A) the claimed device is not patentably distinct from the prior art device.
Claims 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Lurz in view of Taunk (US20140314638A1 published 10/23/2014) as evidenced by Sherif et al Polymer Modulus of Elasticity and Hardness From Impact Data (published 08/20/2018; hereinafter Sherif).
Regarding claim 13, Lurz teaches the treatment apparatus according to claim 12.
However, Lurz does not teach wherein an annular groove having a sealing material disposed therein is formed on a circumferential surface of a lower end portion of each of the plurality of sealing portions.
Taunk teaches caps for PCR tubes (a strip cap 102 and tubes 104 – Fig. 1) wherein an annular groove (the strip cap having layered ring structure such as 612, 712, 704 having the same circumference to different circumferences – Fig. 7 and paragraph 32) (the difference circumferences forming a groove – Fig. 7) having a sealing material disposed therein is formed on a circumferential surface of a lower end portion of each of the plurality of sealing portions (a medium softness material 702 formed in the groove on the lower end of the layered ring structures – Fig. 7 and paragraphs 32). Taunk teaches to use materials with varying softness to allow the temperature driven experiments to complete without loss of samples (paragraph 32).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the lids 3, as taught by Lurz, with the strip cap 102, taught by Taunk, to allow the temperature driven experiments to complete without loss of samples. One of ordinary skill would have expected that this modification could have been performed with a reasonable expectation of success because Lurz and Taunk teach caps for PCR tubes.
Regarding claim 14, Lurz, modified by Taunk, teaches the treatment apparatus according to claim 13, wherein the sealing material seals by abutting an inner wall surface of each of the plurality of accommodation portions (the softer material 702 is capable of contacting the side walls of the vials 1 because the softer material may help expand when it is hot – Taunk paragraph 32 and Lurz Figs. 2, 6-7).
Regarding claim 15, Lurz, modified by Taunk, teaches the treatment apparatus according to claim 14, wherein the sealing material is a material having a lower modulus of elasticity than at least one of the plurality of accommodation portions or the lid portion (708 may the hardest material with 702 and 704 having a medium softness – Taunk paragraph 32) (as evidenced by Sherif, a softer plastic has a lower modulus of elasticity than a harder plastic; see Sherif Section 4.2 paragraph 2 and Fig. 11).
Response to Arguments
Applicant's arguments filed 04/08/2026 have been fully considered but they are not persuasive.
Point 1: The applicant argues the limitations “"a first range of the container", "a second range of the container", “a third range of the container”” refer to a range of size of the container and is not persuasive.
The examiner points out that “the second range includes a part on a side slightly above a liquid level of the sample in the container” is the second range of the same container with the first range. It would not make sense to interpreted the first, second, and third ranges as a range of size, because the same container cannot have multiple sizes. Furthermore, there is no evidence in the disclosure that the container is collapsible or expandible.
Therefore, the examiner has made a more reasonable interpretation of the claims, wherein “a first range of the container” is interpreted as a first portion of the container, and “a second range of the container” is interpreted as a second portion of the container.
Point 2: The applicant’s arguments directed to “FIGS. 1, 2, 6, 7 and 8” are not persuasive.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies 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).
Point 3: The applicant’s argument that Lurz “does not teach or suggest that this second range includes a part on a side slightly above a liquid level of the sample in the container and a part of the container below the liquid level of the sample” is not persuasive.
The examiner has made a new interpretation of the claims wherein “a second range of the container” is interpreted as a second portion of the container. Lurz teaches the claim limitation, because the heat regulating device 19 is capable of cooling a container within the second portion comprising a part on a side slightly above a liquid level of the sample in the container and a part of the container below the liquid level of the sample.
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 TINGCHEN SHI whose telephone number is (571)272-2538. The examiner can normally be reached M-F 9am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth Robinson can be reached at 5712727129. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T.C.S./Examiner, Art Unit 1796
/CHARLES CAPOZZI/Supervisory Patent Examiner, Art Unit 1798
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