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 Arguments
Applicant’s arguments, see amendment/remarks, filed January 2, 2026, with respect to the rejection(s) of claim(s) 1-15 under 102(a)(1),(a)(2) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Diessel et al., US 2011/0269239.
It is noted that only claim 1 has been amended. The amendment to claim is insufficient to overcome the prior 112 rejections. Claims 2-8 and 10-15 have not been amended. Therefore, the prior 112 rejections are hereby maintained.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Interpretation
Content of Specification
(k) CLAIM OR CLAIMS: See 37 CFR 1.75 and MPEP § 608.01(m). The claim or claims must commence on a separate sheet or electronic page (37 CFR 1.52(b)(3)). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. There may be plural indentations to further segregate subcombinations or related steps. See 37 CFR 1.75 and MPEP 608.01(i)-(p).
The claimed inventions are defined by the positively claimed elements, the structural elements or method steps listed on separate indented lines listed in the body of the claim after the transitional phrase, “comprising”.
A claim is only limited by positively claimed elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims”. MPEP 2115 Material or Article Worked Upon by Apparatus.
It is noted that the apparatus claims mention a plurality of pipette tips, at least one sample holder, multiwell plate, at least one information, sensor signal, pump, preparation pipetting station, sample, and amplification and detection plate pipetting station. However, neither are positively claimed as elements of the apparatus and do not define the apparatus. Such are considered as articles and/or materials intended to be, can be worked upon, used with the apparatus. It is noted that the apparatus of claim is defined by the positively structural claimed elements and not by any process steps and or intended/possible use.
As to claim 1, it is presumed that it is intended for the instrument to comprise a working surface; and the at least one compartment is embedded in the working surface. If so, is suggest that the claim be amended to clearly list such as elements of the instrument.
It is noted that the term “dedicated” does not provide for any further structure of the at least one compartment.
It is noted that the phrase “wherein the laboratory instrument comprises” repeated throughout the claims is redundant.
It is noted that the claims employ broad terms such as compartment, sensor unit, control unit, station, etc. that are not defined as being any specific structures in the claim. It is noted that each of the stations are defined by any specific structures. The names of the stations do not provide for any structural elements of the stations.
It is noted that the various “configured for/to…” clauses recited throughout the claims do not provide for any further structure/structural elements, but are directed to further possible, intended uses.
It is noted that no structural connectivity provided for any of the positively claimed structures in the claims.
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 1-8 and 10-15 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.
As to claims 1 and 13, it is unclear which/what pipetting device is being referenced by the phrase “the pipetting device” because claim 1 previously recites “at least one pipetting device”.
As to claims 1, 5, 11, and 13, although not positively claimed as structural element of the invention, it is unclear which/what sample holder is being referenced by the phrase “the sample holder” because claim 1 and 13 previously recite “at least one sample holder”. Furthermore, it is unclear what is the nexus of “at least one sample holder” recited in claim 13 to the previously recited “at least one sample holder” recited in claim 1 because the claim does not provide for such.
It is noted that the phrase “arranged below” does not provide for any structural connection but only a general relative direction. However, this does not provide for any definitive distance nor relative structural location of the structures.
Claims 2-8 and 10-15 are rejected via dependency upon a rejected claim.
As to claim 2, 4-12, and 14, it is unclear what/which sensor unit is being referenced by “the sensor unit” because claim 1 previously recites “at least one sensor unit”. As to claim 14, it is noted that claim 13 also recites at least one sensor unit.
Furthermore, as to claims 2 and 14, it is unclear what is considered as “at least one information” because the claim does not provide for such. It is noted that “information” is singular. Furthermore, there is no indication as where, what, or who any “information” is provided to.
As to claim 2-3 and 14-15, it is unclear what/which pipetting procedure (although not structure of the apparatus) is being referenced by “the pipetting procedure” because claim 1 previously recites “at least one pipetting procedure”. As to claim 14, it is noted that claim 13 also recites at least one pipetting procedure.
As to claim 2-6 and 14-15, it is unclear what/which sensor signal (although not structure of the apparatus) is being referenced by “the sensor signal” because claim 2 previously recites “at least one sensor signal”. As to claims 14-15, it is noted that claim 14 also recites at least one pipetting procedure.
It is unclear what is structurally meant, required by claims 3-6 because the claims do not provide for any additional structural elements of the apparatus nor any further structure of the at least one control unit. Instead, the various configured for clauses provide for a further intended, possible use of the control unit. Employing the phrase before every possible use of the control unit does not provide for any further structure of the control unit. Furthermore, as to claim 6 it is noted that no pump is positively claimed as an element of the invention. The claim apparatus never required to be used with any pump.
As to claims 3-6 and 15, it is unclear what/which control unit is being referenced by “the control unit” because claims 2 and 14 previously recites “at least one control unit”.
Furthermore, as to claim 3, it is noted that the claim is directed to an apparatus not a process. The “in case…” phrase is directed to a condition/action that is never required to occur. Furthermore, it is unclear what is considered as an “expected value” and what value of what is being referenced because the claim does not provide for such. Furthermore, it is unclear what action is being referenced by “the action” because the claim previously recites “at least one action”. However, no action is structure and is not required to be performed by nor to anything. However, it is unclear what is required to be done by who/what to be considered as flagging, issuing…, amending…etc. A process parameter is also not structure nor defined relative to anything. There is no indication to what is required of any parameter to be considered as “influencing” the pipetted procedure that is also not defined in the claim nor required to be performed.
As to claim 8, it is unclear what is structurally required of a balance to be considered as a fine, precision, analytical, or microbalance because the claim does not provide for such. There no structural distinction of the balances provided for in the claim. It is noted that such terms are not mutually exclusive. A single balance can be referenced by all of such names.
As to claims 11-12, it is unclear what/which compartment is being referenced by “the compartment” because claim 1 previously recites “at least one compartment”.
As to claims 11-12, it is unclear what is the structural connectivity of the sensor unit and compartment because the claim does not provide for such. The phrase “arranged below” does not provide for any structural connection but only a general relative direction. However, this does not provide for any definitive distance nor relative structural location of the structures. See prior rejection of claim 1. Furthermore, although not positively claimed as structural elements of the invention, it is unclear what is structurally required to define a preparation pipetting station and an amplification and detection plate pipetting station because such are not structurally defined in the claims. Although no analysis of anything is required to be performed, it is unclear what is considered as subsequent analysis because such is not defined in claim (analysis of what, subsequent to what).
As to claim 10, it is unclear what is structurally meant, required by the claim because the claim attempts to define the invention being claimed the laboratory instrument relative to itself, the entire laboratory instrument. Every positively claimed element is the laboratory instrument. Therefore, it is unclear what is considered as “in the laboratory instrument” (this does provide for any definitive structural location nor any structural connectivity, contact with any other positively claimed structural element. The sensor unit cannot be located in the sensor unit. It is unclear what is the nexus of the sensor unit to the prior claimed structural elements of claimed 1, it is unclear in what structure(s) the sensor unit is required to be located/connected to because the claim does not provide for such.
Claim 13 recites the limitation "the following steps" in line 2. There is insufficient antecedent basis for this limitation in the claim. The phrase is unnecessary. Furthermore, it is unclear what is required to be done that considered as “at least one pipetting step” because such is not provided for in the claim.
As to claim 13, it is unclear what is the nexus of “at least one sensor unit” and “at least one pipetting procedure” recited in claim 13 to the “at least one sensor unit”; and “at least one pipetting procedure” recited in claim 1 because the claim does not provide for such.
As to claim 14, it is unclear what performs the receiving, evaluating (what is considered as such), and providing because the claim does not recite such.
As to claim 15, see above applicable rejections including the rejection of claim 3.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-8 and 10-15 is/are rejected under 35 U.S.C. 102(a)(1),(a)(2) as being anticipated by Diessel et al., US 2011/0269239.
Diessel discloses an instrument comprising:
a liquid handling unit comprises at least two movably designed probes (at least one pipetting device) for taking up and releasing liquids in order to be able to carry out several liquid handling operations (pipetting procedures) at the same time (paragraph 0029);
a base and upper plate (601, 808) (working surface) for holding microtiter (multiwell) plates, assay reagents and containers (paragraph 0089; Figures 5, 15);
a least one compartment (wells 802) embedded in the working surface (Figures 5 and 15-16); and
at least one gravimetric sensor unit below a compartment (231 weighing device for gravimetric determination, paragraph 0116; Figure 16).
As to claims 2-6, the invention is controlled by a data processor. This can, for example, be a computer (control unit) with corresponding inputs and outputs for controlling the subsystem, for recording, and storing data and for interacting with a user. Those skilled in the art of automation technology are familiar with data processing devices for programming, controlling and regulating automated processes. Known interfaces such as RS232, USB, CAN bus and the like are preferably used for the communication process, i.e. the exchange of signals between the data processing unit and the subsystem of the analyzer. (paragraphs 0061-62).
As to claims 7-8 and 10, see weighing device for gravimetric determination fixed in the instrument below a compartment (paragraph 0116; Figure 16).
As to claims 11-12, the location of the compartment and any other location can be referenced as a preparation pipetting station and/or amplification and detection pipetting station as desired.
As to claims 13-15, the instrument is used to perform pipetting procedures multiwell plates and weighing the multiwell plates under the control of a control unit (computer). See prior remarks above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Halter; Erwin et al.; Gut; Raphael et al.; Bernet; Roland et al.; Bernet; Roland et al.; Steinbrenner; Bernd et al.; DEGGERAL; Arne; DeStefano, Jr.; Albert M.; and HURNI W M et al. pipetting apparatuses and/or well plate processing devices and methods of use.
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 BRIAN R GORDON whose telephone number is (571)272-1258. The examiner can normally be reached M-F, 8-5:30pm; off every other Friday..
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, Charles Capozzi can be reached at 571-270-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN R GORDON/Primary Examiner, Art Unit 1798
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