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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 4, 2026 has been entered.
Claims 1-16 and 19-31 are pending. Applicant amended claims 1, 3-16, 19-23 and 28-30, and added new claim 31.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on May 4, 2026 is being considered by the examiner.
Response to Arguments
The amendment necessitated the new grounds of rejection set forth below, rendering moot Applicant’s arguments directed to the patentability of the claims.
Claim Interpretation
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
As indicated in the previous Office action, the following limitations are interpreted under 35 U.S.C. 112(f):
“input and/or output means” recited in claims 13 and 22.
Claim Objections
Claim 1 is objected to because of the following informalities:
In claim 1, the limitation “performing of a pipetting task” should be changed to “performing a pipetting task”.
Appropriate correction is required.
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.
Claims 1-15, 19, 20, 22-26 and 28-31 are rejected under 35 U.S.C. 103 as being unpatentable over Leboudec (US 2019/0257849 A1) in view of Beoughter et al. (“Beoughter”) (US 2016/0132046 A1).
With respect to claim 1, Leboudec teaches a method comprising:
providing a wearable electronic device 14/16 (see Fig. 1) that is configured to be worn by a user of a liquid handling device 12 (pipette) (see abstract and Fig. 1), wherein the wearable electronic device comprises a user interface (UI) 36;
by means of the wearable electronic device, retrieving user data (movement data, configuration data) (see abstract); and
on the basis of the retrieved data, providing a functionality for remote control of at least one function (pipetting) of the liquid handling device in the UI 36 of the wearable electronic device (see abstract and Fig. 1 illustrating flow of data to and from the UI).
The method differs from the claimed invention in that Leboudec does not disclose that the data retrieved by the wearable electronic device includes status data of the liquid handling device, wherein the status data comprises instructions related to performing a pipetting task.
Beoughter teaches an analogous method of controlling a remotely-located device using a wearable UI (see abstract). By tracking work sessions (see [0066]) and/or recognizing the identity of the user (see [0088]), the UI enables said user to resume unfinished work (see [0066] and [0088]), and the UI can further provide user-specific instructions for completing the work (see [0067] and [0104]). In light of the disclosure of Beoughter, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have configured the wearable electronic device taught by Leboudec to retrieve status data and user data (user ID) corresponding to work that was previously left unfinished by the user/previous work session. The modification would enable a user to pause work and resume at a later time. If the modification is made, then the method would further comprise a step of using the wearable electronic device to retrieve status data of the liquid handling device, specifically instructions related to performing a pipetting task.
With respect to claim 2, the wearable electronic device 14 comprises smart glasses (see Fig. 1 and abstract of Leboudec).
With respect to claim 3, the liquid handling device is an automated liquid handling or dosing device (see abstract and Fig. 1 of Leboudec).
With respect to claim 4, the claim is directed to a method of using a wearable device. While the liquid handling device is mentioned in claim 1, it is mentioned solely to specify to what the wearable device is connected and configured to control. In other words, the liquid handling device is an article worked upon by a structure (wearable device) that is claimed. "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) (see MPEP 2115). That said, whether the liquid handling device is located in a sterile environment does not further limit the steps recited in claim 1. Consequently, claim 4 is rejected by the combination of Leboudec and Beoughter. Nevertheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the modified method to control a liquid handling device in a clean room (e.g. a pipette used for formulating pharmaceutical compositions, which requires a sterile environment).
Likewise, claim 5 remains rejected by the combination of Leboudec and Beoughter. Claim 5 further limits the liquid handling device, which is not a part of the claimed method.
With respect to claim 6, the wearable electronic device and the liquid handling device are connected to each other by a wireless connection (see [0049] of Leboudec).
With respect to claim 7, if the method disclosed by Leboudec is modified as suggested above (see rejection of claim 1), the user data would comprise user identity data and/or usage history data specific to the user (see rejection of claim 1 regarding the use of user identification/work log to determine the point at which work resumes).
With respect to claims 8 and 9, the at least one function (pipetting) is executable manually by the user using controller 16 (see abstract). Naturally, the remote control is provided for use or execution in the wearable device (using controller 16).
With respect to claim 10, the at least one function (pipetting) is provided in the liquid handling device 12 (see Fig. 1). While Leboudec does not explicitly disclose that the at least one function further comprises automated locking and/or unlocking of the liquid handling device, Beoughter discloses that remote control can encompass locking of the device being remotely controlled (see [0067]). In light of the disclosure, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have enabled remote locking/unlocking of the liquid handling device to prevent unauthorized use of the liquid handling device.
With respect to claim 11, if the method taught by Leboudec is modified pursuant to the teachings of Beoughter (see rejection of claim 1), then the remote control of the liquid handling device would be executed automatically when the user data (user ID) satisfies a pre-determined criterion (user ID is confirmed).
With respect to claims 12 and 13, as discussed above (see claim 1), the functionality (i.e. remote control of the liquid handling device) is provided via input and/or output means (display) of the UI 36 (see abstract and Fig. 1), wherein the UI 36, if modified pursuant to the teachings of Beoughter (see [0150] disclosing that the user interface synchronizes with user ID), would be user-customized based on the user data (user ID).
With respect to claim 14, the user interface is a user-motion-controlled user interface 16 of the liquid handling device (see abstract and Fig. 1).
With respect to claim 15, the subject matter of the claim is directed to a hypothetical situation without positively reciting any method steps. A method is defined by active steps. According to claim 1, the claimed method REQUIRES data to be retrieved. Consequently, the subject matter of claim 15 is inapplicable and thus does not further limit the steps recited in claim 1. Consequently, claim 15 remains rejected by the combination of Leboudec and Beoughter. It is suggested that the claim language be amended such that the subject matter of the claim further limits a configuration of the wearable electronic device (e.g. “wherein the wearable electronic device is configured to disable the use of the laboratory device if no user data can be retrieved”), or positively recite a step of disabling the laboratory device. Nevertheless, if the method taught by Leboudec is modified so as to require the use of user ID to utilize the wearable electronic device (see rejection of claim 1), then the subject matter of claim 15 would be satisfied.
With respect to claim 19, as discussed above (see rejection of claim 1), Leboudec discloses a wearable electronic device (see abstract), which is connectable to a liquid handling device and configured to be worn by a user of the device (see abstract and Fig. 1). Moreover, as discussed above (see rejection of claim 1), the device, when modified pursuant to the teachings of Beoughter, would be configured to:
retrieve user data and status data; and
customize, on the basis of the retrieved data, the UI so as to provide remote control of at least one function (pipetting) of the liquid handling device.
With respect to claim 20, Beoughter discloses that remote control can be achieved using a smart watch (see [0088]). Based on the disclosure, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a smart watch as a component of the wearable electronic device for performing functions (locking/unlocking; receiving status updates) that are suitable and appropriate for a smart watch.
With respect to claim 22, as discussed above (see rejection of claim 1), user data would comprise user identity data, and the UI would be customized based on the user data and provided via input and/or output means (display 36) of the wearable electronic device (see abstract and Fig. 1).
With respect to claim 23, as discussed above (see rejection of claim 1), the wearable electronic device would retrieve user data and customize the Ui based on the user data. Naturally, the user-customized would provide remote control of at least one function of the liquid handling device (see abstract of Leboudec).
With respect to claims 24 and 25, the remote control comprises gesture control of aspirating and dispensing functions of a hand-held liquid handling robot (see abstract and [0008] of Leboudec).
With respect to claim 26, the gesture control comprises synchronized motion between a body part (arm) carrying the wearable device 16 (see abstract and [0064] of Leboudec) and a movable part of the automated liquid handling robot (see abstract of Leboudec).
With respect to claims 28 and 29, Beoughter teaches that its remotely-controlled devices operate with an awareness of the user’s location (see [0090]), including automatically launching specified functions pertaining to a user’s skill set when the user is within certain proximity of a device encompassing the specified functions (i.e. an equipment unlocks features when a pertinent user is within certain proximity of the equipment) (see [0258]). Based on the disclosure, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have configured the wearable electronic device to retrieve user location data, and lock and/or unlock features of the liquid handling device (e.g. enable manual override) based on the user location data, including slowing down and eventually shutting down the liquid handling device when the user is within close proximity of the device so that the device can be manually controlled. The modification would enhance user-friendliness of the liquid handling device.
With respect to claim 30, the status data further comprises pipette location relative to other components (e.g. reagent container, microplate) (see [0011]) and availability data (i.e. what type of components are available for use with the pipette) (see [0012]).
With respect to claim 31, as discussed above (see rejection of claim 1), by retrieving the user data and status data, the method would enable the user to complete work that was previously left unfinished, meaning the functionality comprises a user-tailored set of pipetting modes.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Leboudec in view of Beoughter as applied to claims, 1-15, 19, 20, 22-26 and 28-31 above, and further in view of von Allmen (US 2020/0312448 A1).
With respect to claim 16, the combination of Leboudec and Beoughter does not disclose a step of retrieving environmental status data of a laboratory device, and subsequently providing a functionality for remote control of said device.
Von Allmen teaches the need to remotely monitor the status of laboratory equipment (see [0002]-[0006]), including pipettes (see [0036]), and proposes the use of a wearable device to remotely monitor the equipment (see [0060]). One status that can be monitored is the operating temperature of the equipment to identify abnormal operational status of the equipment (see [0059]). In light of the disclosure of von Allmen, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have to have used the modified Leboudec method to monitor environmental data (e.g. temperature) relevant to the operation of the liquid handling device, and based on the data (e.g. data indicating abnormal operating temperature) received by the wearable device, provide a functionality for remote control of the laboratory device (e.g. shut down the device remotely to prevent damage).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Leboudec in view of Beoughter as applied to claims, 1-15, 19, 20, 22-26 and 28-31 above, and further in view of Martinez Fernandez et al. (“Martinez”) (US 2015/0346834 A1).
While Leboudec discloses the use of a hand-held controller 16 for controlling an automated pipette using gestures (see abstract and [0064]), Leboudec does not disclose the use of a smart glove.
Martinez discloses that the use of smart gloves to remotely control workplace machinery using gestures is well-known in the art (see [0009]). In light of the disclosure of Martinez, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have to have used a smart glove instead of the hand-held controller when carrying out the modified method of Leboudec. The use of a smart glove would enable recognition of subtle finger movements not possible with a joystick, for example.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Leboudec in view of Beoughter as applied to claims, 1-15, 19, 20, 22-26 and 28-31 above, and further in view of Wan (CN 106019926 A)
With respect to claim 27, as discussed above (see rejection of claim 20), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a smart watch as a component of the wearable electronic device. Moreover, Beoughter teaches that the user identity data is retrieved from a log file (see [0162]). However, neither Leboudec nor Beoughter disclose that access to the user identity data (e.g. work log) occurs only when a user pulse or a user skin contact is detected by the wearable electronic device.
Wan teaches a smart watch comprising a skin detection module that automatically activates upon detecting contact with skin (see claim). When no skin contact is detected, the watch enters a power saving mode (see claim). In light of the disclosure of Wan, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have configured the smart watch of the wearable electronic device to detect contact with skin, and activate only when it detects that it is in contact with skin. The modification would improve the battery life of the smart watch.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL S HYUN whose telephone number is (571)272-8559. The examiner can normally be reached M-F 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL S HYUN/Primary Examiner, Art Unit 1796
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