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 .
DETAILED ACTION
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-22, drawn to a programable, semi-automatic and automatic single or multi-task liquid extraction and purification system, and a method of operating said system, classified in G01N 35/1009.
II. Claims 23-26, drawn to a sample cartridge reservoir, classified in B01L 3/50.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because the sample containing cartridge of Invention I does not require a cartridge tube, an embedded male fitting, a removable cartridge cap, or a first frit as in the sample cartridge of Invention II. The subcombination has separate utility such as sample storage, rather than sample processing as in the sample containing cartridge of Invention I.
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
a. The inventions have acquired a separate status in the art in view of their different classification; and/or
b. The inventions have acquired a separate status in the art due to their recognized divergent subject matter; and/or
c. The inventions require a different field of search (for example, searching different class/subclasses or electronic resources, or employing different search strategies or search queries); and/or
d. The prior art applicable to one invention would not likely be applicable to another invention; and/or
e. The inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Daniel Bourque on 10/9/2025 a provisional election was made without traverse to prosecute the invention of Group II, claims 23-26. Affirmation of this election must be made by applicant in replying to this Office action. Claims 1-22 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim Status
Claims 1-26 are pending, with claims 23-26 being examined, and claims 1-22 deemed withdrawn.
Information Disclosure Statement
The information disclosure statement (IDS) received on 1/4/2024 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 23 and 26 are objected to because of the following informalities:
Regarding claim 23, Ln. 3 recites, “a embedded male fitting”, which is grammatically incorrect. The above limitation needs to be amended to recite, “an embedded male fitting” to be grammatically correct.
Further regarding claim 23, Ln. 4 recites, “cartridge tub”, which is a typo of “cartridge tube”.
Further regarding claim 23, Ln. 5 recites, “a o-ring seal”, which is grammatically incorrect. The above limitation needs to be amended to recite, “an o-ring seal” to be grammatically correct.
Regarding claim 26, Ln. 2 recites, “the second end of cartridge”, which is grammatically incorrect. The above limitation needs to be amended to recite, “the second end of the cartridge” to be grammatically correct.
Appropriate correction is required.
Claim Interpretation
In claim 26, Lns. 1-2 recite, “wherein the removable cartridge cap with associated o-ring seals the cartridge by placing…”. However, claim 23, which claim 26 depends on, recites that the removable cartridge cap with associated o-ring seal is placed at an end of the cartridge tube. For purposes of compact prosecution, the above limitation has been interpreted as, “wherein the removable cartridge cap with associated o-ring seals the cartridge tube by placing…”.
Examiner’s Note: in order to clarify that the cartridge tube is sealed, the Examiner suggests amending the above limitation to recite a cartridge tube being sealed, rather than a cartridge.
In claim 26, Ln. 2 recites, “placing the endcap over the second end of cartridge…”. However, claim 23, which claim 26 depends on, recites that the endcap is a cartridge cap, and that the removable cartridge cap with associated o-ring seal is placed at an end of the cartridge tube. For purposes of compact prosecution, the above limitation has been interpreted as, “placing the cartridge cap over the second end of the cartridge tube…”.
Examiner’s Note: in order to clarify that the endcap is the previously recited cartridge cap, and that the previously recited cartridge tube is sealed rather than a cartridge, as well as to overcome the related objection to the limitation “the second end of cartridge” previously recited in the Claim Objections section of this instant Office Action, the Examiner suggests amending the above limitation to recite, “placing the cartridge cap over the second end of the cartridge tube…”.
In claim 26, Ln. 3 recites, “twisting the end cap…”. However, claim 23, which claim 26 depends on, recites that the end cap is a cartridge cap. For purposes of compact prosecution, the above limitation has been interpreted as, “twisting the cartridge cap…”.
Examiner’s Note: in order to clarify that the end cap is the previously recited cartridge cap, the Examiner suggests amending the above limitation to recite, “twisting the cartridge cap…”.
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.
Claim 25 is 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 25 recites the limitation "the removable cartridge endcap fitting is a female luer fitting" in Lns. 1-2. There is insufficient antecedent basis for this limitation in the claim. For purposes of compact prosecution, as well as to ensure that it is clear that the cap in question is the removable cartridge cap previously recited in claim 23, the above limitation has been examined as, “the removable cartridge cap has a fitting that is a female luer fitting”.
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.
(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.
Claims 23-24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ellis et al. (US Pub. No. 2013/0228502; hereinafter Ellis; already of record on the IDS received 1/4/2024).
Regarding claim 23, Ellis discloses a sample cartridge reservoir ([0037]-[0038], see Fig. 1). The sample cartridge reservoir comprises:
a cartridge tube ([0037], see Fig. 1).
An embedded male fitting at a first end of said cartridge tube ([0037], [0055], see Fig. 1 at outlet port 24 which may be a Luer fitting, and in this case would be a male fitting).
A removable cartridge cap at a second end of said cartridge tube, said removable cartridge cap including an o-ring seal ([0037], [0053], see Fig. 1, an O-ring seal can be between abutting portions of the cap 28 and container 20).
A body defining a cartridge element interior cavity extending between the first end and the second end ([0037], see Fig. 1).
A first frit disposed at the first end proximate said embedded male fitting ([0052], see Figs. 1, 3 at frit 62 near outlet port 24).
Note: The instant Claims contain a large amount of functional language (ex: “removable…”, “seals the cartridge…”, etc.). However, functional language does not add any further structure to an apparatus beyond a capability. Apparatus claims must distinguish over the prior art in terms of structure rather than function (see MPEP 2114). Therefore, if the prior art structure is capable of performing the function, then the prior art meets the limitation in the claims.
Regarding claim 24, Ellis discloses the sample cartridge reservoir of claim 23, wherein the embedded male fitting is a male luer fitting ([0037], [0055], see Fig. 1 at outlet port 24 which may be a Luer fitting, and in this case would be a male fitting).
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.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Ellis as applied to claims 23-24 above, and further in view of Shirkhan et al. (US Pub. No. 2019/0107516; hereinafter Shirkhan).
Regarding claim 25, Ellis discloses the sample cartridge reservoir of claim 23.
Ellis fails to explicitly disclose that the removable cartridge cap has a fitting that is a female luer fitting.
Shirkhan is in the analogous field of systems for processing samples (Shirkhan [0009]). Shirkhan teaches a removable cartridge cap that has a fitting that is a female luer fitting (Shirkhan; [0172], [0219], [0221], Figs. 78, 80). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the reservoir of Ellis with the teachings of Shirkhan so that the removable cartridge cap has a fitting that is a female luer fitting, as Shirkhan teaches that providing a cap with a female luer will allow for stackable and reversible connection of different cartridges as desired, and that caps having a female luer create an effective seal (Shirkhan; [0172], [0219], [0221], Figs. 78, 80).
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Ellis as applied to claims 23-24 above, and further in view of Lauks et al. (US Pat. No. 5,638,828; hereinafter Lauks).
Regarding claim 26, Ellis discloses the sample cartridge reservoir of claim 25.
Ellis fails to explicitly disclose that the removable cartridge cap with associated o-ring seals the cartridge tube by placing the cartridge cap over the second end of the cartridge tube and twisting the cartridge cap approximately 90 degrees.
Lauks is in the analogous field of sample collection devices (Lauks Col. 1 Lns. 8-13). Lauks teaches a removable cap that seals a container by placing the cap over a second end of the container and twisting the cap approximately 90 degrees (Lauks; Col. 8 Lns. 33-54, Col. 11 Ln. 1-Col. 12 Ln. 14, see Figs. 1, 2, 7a). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the reservoir of Ellis with the teachings of Lauks so that the removable cartridge cap with associated o-ring seals the cartridge tube by placing the cartridge cap over the second end of the cartridge tube and twisting the cartridge cap approximately 90 degrees, as Lauks teaches that placing a cap on a device and rotating the cap 90 degrees can secure the cap to the device (Lauks; Col. 8 Lns. 33-54, Col. 11 Ln. 1-Col. 12 Ln. 14, see Figs. 1, 2, 7a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John McGuirk whose telephone number is (571)272-1949. The examiner can normally be reached M-F 8am-530pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jill Warden can be reached at 571-272-1267. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN MCGUIRK/ Examiner, Art Unit 1798