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 Amendment
The amendment filed on December 12, 2025 is acknowledged. Claims 1-16 and 19-30 are pending. Applicant amended claims 1, 11-15, 19, 23, 24, 26 and 27, and added new claim 30.
Response to Arguments
Despite the amendment, the claims remain rejected based on the disclosure of Leboudec and Beoughter. That said, Applicant’s arguments directed to the patentability of the claims have been fully considered but they are not persuasive.
Applicant argues that claim 1 is patentable over the disclosure of Leboudec because Leboudec does not disclose a step of “using the wearable device to retrieve user data that is specific to said user”. Remarks 11. According to Applicant, data 46 disclosed by Leboudec, which maps to the claimed “user data that is specific to said user”, comprises data encoding positions of components in the laboratory automation device, which is not user-specific. Id. The argument is not persuasive. While the specification discloses examples of “user data specific to said user”, the specification does not provide an explicit definition for the limitation. Consequently, it is subject to the broadest reasonable interpretation in light of the specification, which in this case refers to any data relevant to a user when said user is wearing the wearable electronic device. This interpretation is consistent with the specification, which discloses that the user data includes location information of the wearable electronic device worn by the user, which is data that is not user-specific (i.e. the data would be the same regardless of who is wearing the device). That said, data 46, which includes data encoding the position of the laboratory device relative to other components (microplates, reagent containers, see [0012]), is deemed to be within the scope of the limitation “user data that is specific to said user”.
Regarding Applicant’s argument that Leboudec does not disclose the recitation, “on the basis of the retrieved user data…providing a functionality for remote control…of the laboratory device” (Remarks 11), the basis of the argument is identical to the argument above. Consequently, this argument is also not persuasive. Because data 46 corresponds to the claimed “user data” and Leboudec teaches using data 46 to enable remote control of the laboratory device (see abstract disclosing “receiving configuration data 46…generating a control program for the laboratory automation device 12”), the recitation is anticipated.
Applicant also argues that claim 1 is patentable over the disclosure of Beoughter because Beoughter does not disclose the recitation, “on the basis of the retrieved user data and the retrieved laboratory device status, providing a functionality for…control…of the laboratory device”. Remarks 12. According to Applicant, while Beoughter appears to disclose the claimed user data and status data, control of the laboratory device does not appear to be based on the retrieval of said data. Id. The argument is not persuasive. Beoughter discloses that the wearable electronic device performs synchronization based on recognition of the user (i.e. retrieval of user data) (see [0163]). Beoughter further discloses that synchronization involves retrieving data pertaining to previous work session (see [0066] and Fig. 13) as well instructions for performing the upcoming work session (see [0067], [0104] and [0129]), which is within the scope of the claimed “status data” (see [0081] of Applicant’s specification). In other words, the synchronization taught by Beoughter, which precedes remote control of the laboratory device, involves retrieval of both user data and status data. For the foregoing reason, the examiner maintains that Beoughter discloses the recitation, “on the basis of the retrieved user data and the retrieved laboratory device status [data], providing a functionality for…control of…the laboratory device”, contrary to Applicant’s assertion.
For the foregoing reasons, Applicant’s argument that the amended claims are patentable over the disclosure of Leboudec and Beoughter are not persuasive.
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
Claims 1, 12, 13 and 16 are objected to because of the following informalities:
In claim 1, the limitation “device status” at the end of line 6 should be changed to “device status data”.
In claim 12, the limitation “a user interface” should be changed to “the user interface”.
In claims 12 and 13, the limitation “said executable functionality” should be changed to “said functionality”.
In claim 16, the limitation “a functionality for control” should be changed to “the functionality for remote control”.
Appropriate corrections are required.
Claim Rejections - 35 USC § 112
Claims 8-10, 13, 19, 22, 23, 28 and 29 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
In claims 8-10, 28 and 29, it is unclear whether the limitation “functionality” intends to refer to the “at least one function”. In claim 1, the functionality is explicitly specified as “remote control”. That said, it is unclear how the claimed “functionality” (i.e. remote control) can correspond to the functions recited in the rejected claims. The claims would be definite if the “functionality” in the rejected claims refers to the ”at least one function of the laboratory device”.
Claims 13, 19, 22 and 23 introduce a user-customized user interface even though the claims previously introduce a user interface. It is unclear whether the rejected claims intend to introduce a second user interface.
Claim Rejections - 35 USC § 102
Claims 1-6, 8, 9, 12-15, 23-26 and 30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Leboudec (US 2019/0257849 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 laboratory device (see abstract), wherein the wearable electronic device comprises a user interface 36;
by means of the wearable device, retrieving user data 46 that is specific to said user (see abstract) and status data 50 of the laboratory device (see abstract, [0023] and [0070]); and
on the basis of the retrieved user data 46 and the status data 50, providing a functionality for remote control of at least one function of the laboratory device in the user interface 36 of the wearable electronic device (see abstract).
With respect to claim 2, the wearable electronic device 14 comprises smart glasses (see Fig. 1 and abstract).
With respect to claim 3, the laboratory device is an automated liquid handling or dosing device (see abstract and Fig. 1).
With respect to claim 4, the claim is directed to a method of using a wearable device. While the laboratory 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 laboratory 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 laboratory device is located in a sterile environment does not further limit the steps recited in claim 1. Consequently, claim 4 remains anticipated by Leboudec.
Likewise, claim 5 remains anticipated by Leboudec.
With respect to claim 6, the wearable electronic device and the laboratory device are connected to each other by a wireless connection (see [0049]).
With respect to claims 8 and 9, the at least one function is executable automatically by the laboratory device upon remote control via the wearable electronic device (see abstract disclosing that the laboratory device is automated).
With respect to claim 12, as discussed above (see claim 1), the functionality is provided via the user interface 36 of the wearable electronic device (see abstract and Fig. 1), and said functionality comprises remote control of at least one function of the laboratory device.
With respect to claim 13, the functionality is provided in the wearable electronic device (see abstract), and the user interface 36 is provided via input/output means (displays, see [0063]) of the wearable electronic device (see abstract). Regarding the limitation “user-customized”, the limitation is a product-by-process limitation. The patentability of the user interface is the user interface itself, not how it is made (e.g. by customizing the user interface before use). In this case, because the wearable electronic device comprises a headband (see Fig. 1), it, and hence the user interface 36, is user-customized to the shape/size of the user’s head.
With respect to claim 14, the user interface is a user-motion-controlled user interface 16 of the laboratory 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 anticipated by Leboudec. 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.
With respect to claim 23, the user-customized user interface 36/16 provides remote control of at least one function of the laboratory device (see abstract).
With respect to claims 24 and 25, the remote control comprises gesture control of an aspirating and a dispensing function of a hand-held liquid handling robot (see abstract and [0008]).
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]) and a movable part of the automated liquid handling robot (see abstract).
With respect to claim 30, the status data 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]).
Claims 1, 2, 4-15, 19, 22, 23 and 28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Beoughter et al. (“Beoughter”) (US 2016/0132046 A1).
With respect to claim 1, Beoughter teaches a method comprising:
providing a wearable electronic device (see abstract) that is configured to be worn by a user of a laboratory device* (see [0003]), wherein the device comprises a user interface (see [0013]);
using the wearable device to retrieve user data (user identification) that is specific to said user (see [0162]) and status data of the laboratory device (instructions/protocol for operating the laboratory device, see [0067], [0104] and [0129]); and
on the basis of the retrieved user data and the retrieved status data, providing a functionality for remote control (see [0147]) of at least one function of the laboratory device in the user interface (see Fig. 13).
*Absent the claim further limiting “laboratory device”, a device that is in a chemical plant can be deemed to be within the scope of a “laboratory device”.
With respect to claim 2, the wearable electronic device 14 comprises a smart watch (see [0005]).
With respect to claim 4, the claim is directed to a method of using a wearable device. While the laboratory 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 laboratory device is an article worked upon by a structure (wearable device) being 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 laboratory device is located in a sterile environment does not further limit the steps recited in claim 1. Consequently, claim 4 remains anticipated by Beoughter.
Likewise, claim 5 remains anticipated by Beoughter.
With respect to claim 6, the wearable electronic device and the laboratory device are connected to each other by a wireless connection (see Fig. 9B and [0063]).
With respect to claim 7, the user data comprises user identity data (see Fig. 13).
With respect to claims 8 and 9, the at least one function is executable by the user by manually operating the user interface (see abstract).
With respect to claim 10, the at least one function comprises automated locking of the laboratory device (see [0067]).
With respect to claim 11, the functionality is executed automatically when the user data satisfies a pre-determined criterion (see box 1320 in Fig. 13; see also [0200] disclosing user input before the at least remote control of the laboratory device is allowed).
With respect to claim 12, as discussed above (see rejection of claim 1), the functionality is provided via the user interface of the wearable electronic device (see abstract), and said functionality comprises remote control of at least one function of the laboratory device (see abstract).
With respect to claim 13, the functionality is provided in the wearable electronic device (see abstract), and said functionality comprises providing a user-customized user interface of the laboratory device (see [0150] disclosing that the user interface synchronizes with user ID).
With respect to claim 14, the user interface is a user-motion-controlled user interface of the laboratory device (see [0137]).
With respect to claim 15, as discussed above, 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 anticipated by Beoughter.
With respect to claim 19, Beoughter discloses a wearable electronic device (see abstract), which is connectable to a laboratory device and configured to be worn by a user of the laboratory device (see [0003]), wherein the wearable electronic device comprises a user interface (see abstract) and is configured to:
retrieve (via an RFID reader) user data that is specific to said user (see [0162]) and status data (protocol/instructions) of the laboratory device (see [0129]); and
provide, via the user interface, on the basis of the retrieved data, at least one functionality configured to remotely control at least one function of the laboratory device (see [0013]).
With respect to claim 22, user data comprises user identity data (see Fig. 13), the functionality comprises providing a user-customized user interface of the laboratory device (see [0150]), and the user-customized user interface of the laboratory device is provided in the wearable device via input and/or output means (display) of the wearable electronic device (see abstract and [0013]).
With respect to claim 23, the functionality comprises providing a user-customized user interface that provides remote control of at least one function of the laboratory device (see [0150]).
With respect to claim 28, Beoughter teaches that the laboratory device operates 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 an equipment encompassing the specified functions (i.e. an equipment unlocks features when a pertinent user is within certain proximity of the equipment) (see [0258]).
Claim Rejections - 35 USC § 103
Claims 3, 20, 24-26 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Beoughter in view of Leboudec.
With respect to claims 3 and 20, Beoughter broadly discloses that its method is applicable for chemical plants (see [0003]), and further discloses a smart watch (see [0088]). However, Beoughter does not explicitly disclose a step of providing a functionality for controlling a liquid handling or dosing device.
Leboudec teaches the need to remotely control the operation of laboratory equipment, such as an automated pipette (see abstract and [0002]-[0006]), and proposes the use of a wearable device 14/16 to remotely control the equipment (see abstract and Fig. 1). In light of the disclosure of Leboudec and given that the applicability of Beoughter’s invention is broad, 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 method taught by Beoughter to remotely control the operation of an automated pipette.
With respect to claims 24-26, the wearable device taught by Beoughter enables gesture control (see [0137]). That said, 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 control of the automated pipette (e.g. aspiration, dispensing) using gesture, the gesture comprising synchronized motion between a body part (e.g. arm) carrying the wearable device (see device 16 taught by Leboudec) and a movable part of the pipette (e.g. a gantry that moves the pipette in all three axes).
With respect to claim 29, as discussed above (see rejection of claim 28), Beoughter teaches that the laboratory device operates 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 an equipment encompassing the specified functions (i.e. an equipment unlocks features when a pertinent user is within proximity) (see [0258]). Moreover, as discussed above, 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 method taught by Beoughter to remotely control the operation of an automated pipette. That said, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have automatically slowed down and eventually shut down the automated pipette when the user is within close proximity to the pipette so that the unlocked features can be manually controlled.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Beoughter in view of von Allmen (US 2020/0312448 A1).
With respect to claim 16, while Beoughter broadly discloses that its method is applicable for chemical plants (see [0003]), Beoughter does not explicitly 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]), 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 (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 method taught by Beoughter to monitor the temperature of a laboratory device, and based on the temperature data (e.g. data indicating abnormal operating temperature) received by the wearable device, provide a functionality for remote control of the laboratory device.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Leboudec 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 method taught by 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 Beoughter in view of Wan (CN 106019926 A)
With respect to claim 27, while Beoughter teaches that the user identity data is retrieved from a log file (see [0162]), Beoughter does not disclose that the identification 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 taught by Beoughter 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
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 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, 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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/PAUL S HYUN/Primary Examiner, Art Unit 1796