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 .
Claim Status
Claim 1-12 are pending and under examination.
Response to Amendment
The amendments to the claims, received 01/15/2026, are accepted and the previous claim objections are withdrawn.
The 112(f) claim interpretation set forth in the Non-Final Office Action has been maintained.
Based on the amended claims and remarks, the previous prior art rejection over Croquette has been maintained (see below).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“a location information calculating device … adapted to calculate the location of the at least one rack being placed at the processing position depending on the location of the at least two teaching devices” in claim 1.
A review of applicant’s printed publication states “The location information calculating device comprises a conventional RFID reader communicating with RFID tags.”, and “According to an embodiment the location information calculating device comprises a digital camera”, see paragraph’s [0020, 0025] of applicant’s printed publication. Accordingly, the examiner is interpreting the claimed “location information calculating device” as either an RFID reader or a digital camera.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 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.
Claim(s) 1-3, 6-7, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Croquette et al. (US 2015/0273468 – hereinafter “Croquette”).
Regarding claim 1, Croquette disclose a laboratory system (Croquette; fig. 1, #100, [0035]), comprising:
at least one rack comprising retainers, wherein the at least one rack is adapted to carry laboratory sample containers inserted in the retainers (Croquette; figs. 1 & 2, #140, #200, [0036-0037]), and
a handling device, wherein the handling device is adapted to insert laboratory sample containers in the retainers of the at least one rack or remove laboratory sample containers from the retainers of the at least one rack being placed at a processing position depending on location information indicating the location of the at least one rack being placed at the processing position relative to the handling device (Croquette disclose a controller 170 identifies a predetermined sample container 150 in the retainers 200 using one or more of an identification module 154 and identification indicia 155, and a handling device 111 to transport the predetermined sample containers 150 to and from storage and retrieval system 100; figs. 1-3, & 6, #600, [0036, 0040-0041, 0043]),
wherein the laboratory system further comprises:
a plurality of teaching devices (Croquette disclose teaching devices 154/155; fig. 3, [0040-0041]),
wherein a respective teaching device is geometrically formed such that the respective teaching device is insertable into a retainer of the at least one rack (Croquette disclose teaching devices as a cap 152 and/or tube 150 and/or a sleeve 310 which are inserted into the at least one rack 140; fig. 3, [0040-0041]), and
wherein at least two teaching devices are inserted into a corresponding retainer of the at least one rack being placed at the processing position (Croquette disclose teaching devices cap 152 and/or tube 150 and/or sleeve 310 are inserted into a corresponding retainer 200 of the at least one rack 140; fig. 3, [0040-0041]), and
a location information calculating device, wherein the location information calculating device is adapted to calculate the location information of the at least one rack being placed at the processing position depending on the location of the at least two teaching devices (Croquette disclose identification module 154 and identification indicia 155 with machine readable identifier for receiving information and determining location information depending on the location of the at least two teaching devices 152/150/310. RFID tag 154 on three teaching devices 150/152/310 are inserted into a corresponding retainer 200 of the at least one rack 140. The RFID tag 154 is read by a reader 111R on the handling device 111 and the location of the tray is determined; figs. 1, 3 & 6, [0040-0041, 0043]).
Regarding claim 2, Croquette disclose the laboratory system according to claim 1 above, wherein at least three teaching devices are inserted into a corresponding retainer of the at least one rack being placed at the processing position (Croquette teach at least three teaching devices 150/152/310 are inserted into a corresponding retainer 200 of the at least one rack 140; [0040-0041]).
Regarding claim 3, Croquette disclose the laboratory system according to claim 1, wherein a respective teaching device comprises a RFID tag, at least three teaching devices are inserted into a corresponding retainer of the at least one rack being placed at the processing position, and the location information calculating device comprises a RFID reader (Croquette disclose RFID tag 154 on three teaching devices 150/152/310 inserted into a corresponding retainer 200 of the at least one rack 140. The RFID tag 154 is read by a reader 111R on the handling device 111; figs. 1, 3 & 6, [0040-0041, 0043]).
Regarding claim 6, Croquette teach the laboratory system according to claim 3 above, wherein the RFID reader is attached to the handling device (Croquette; fig. 1, #111R, [0040]).
Regarding claim 7, Croquette teach the laboratory system according to claim 3 above, wherein the RFID tags are battery powered (Croquette disclose the RFID tags are active or passive; [0040]. The examiner notes active RFID tags are battery powered).
Regarding claim 12, Croquette teach the laboratory system according to claim 1, wherein the laboratory system further comprises at least one laboratory station, wherein the least one laboratory station is adapted to perform a type of processing of samples being comprised in the laboratory sample containers (Croquette; fig. 1, #120, #130, [0036]).
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Croquette, and further in view of Bellows et al. (US Patent No. 10,095,894 – hereinafter “Bellows”).
Regarding claim 4, Croquette disclose the laboratory system according to claim 3 above, comprising the RFID reader, the at least three teaching devices, and the location information calculating device.
Croquette does not teach wherein the RFID reader is adapted to determine distances between the RFID reader and the at least three teaching devices, and wherein the location information calculating device is adapted to calculate the location information of the at least one rack using multilateration based on the determined distances.
However, Bellows teach the analogous art of an RFID reader (Bellows; figs. 1 & 3, #30, col. 5 line 62 through col. 6 line 4), and location information calculating device (Bellows; fig. 1, #12, col. 5 lines 49-61), at least three teaching devices (Bellows disclose “packages, products or other items” which the location information calculating devices are attached to; fig. 1, col. 5 lines 49-61), wherein the RFID reader is adapted to determine distances between the RFID reader and the at least three teaching devices, and wherein the location information calculating device is adapted to calculate the location information using multilateration based on the determined distances (Bellows; col. 8 lines 19-30).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the RFID reader, the at least three teaching devices, and the location information calculating device of Croquette, to be adapted to determine distances and calculate the location information using multilateration based on the determined distance, as taught by Bellows, because Bellows teach the RFID reader, teaching devices, and location calculating device adapted to determine location using multilateration provides location and direction of travel information by comparing a signal strength for the locating information calculating device (Bellows; col. 8 lines 19-30). The modification thus determining location information of the at least one rack using multilateration. One of ordinary skill in the art would have expected this modification could have been performed with a reasonable expectation of success since Croquette and Bellows both teach RFID tags and readers for determining location information.
Regarding claim 5, Croquette teach the laboratory system according to claim 3 above, comprising the RFID reader, the at least three teaching devices, and the location information calculating device.
Croquette does not teach wherein the RFID reader is adapted to determine angles between the RFID reader and the at least three teaching devices, and wherein the location information calculating device is adapted to calculate the location information of the at least one rack using triangulation based on the determined angles.
However, Bellows teach the analogous art of an RFID reader (Bellows; figs. 1 & 3, #30, col. 5 line 62 through col. 6 line 4), and location information calculating device (Bellows; fig. 1, #12, col. 5 lines 49-61), at least three teaching devices (Bellows disclose “packages, products or other items” which the location information calculating devices are attached to; fig. 1, col. 5 lines 49-61), wherein the RFID reader is adapted to determine angles between the RFID reader and the at least three teaching devices, and wherein the location information calculating device is adapted to calculate the location information using triangulation based on the determined angles (Bellows; col. 8 lines 19-30).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the RFID reader, the at least three teaching devices, and the location information calculating device of Croquette, to be adapted to determine angles and calculate the location information using triangulation based on the determined angles, as taught by Bellows, because Bellows teach the RFID reader, teaching devices, and location calculating device adapted to determine location using triangulation provides location and direction of travel information by comparing a signal strength for the locating information calculating device (Bellows; col. 8 lines 19-30). The modification thus determining location information of the at least one rack using triangulation. One of ordinary skill in the art would have expected this modification could have been performed with a reasonable expectation of success since Croquette and Bellows both teach RFID tags and readers for determining location information.
Claims 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Croquette, and further in view of Pollack et al. (US 2016/0025757 – hereinafter “Pollack”).
Regarding claim 8, Croquette teach the laboratory system according to claim 1 above, comprising the location information calculating device, the at least one rack, and the teaching devices, wherein the location information calculating device is adapted to calculate the location information (Croquette; [0040-0041, 0043]).
Croquette does not specifically teach wherein the location information calculating device comprises a digital camera, wherein the digital camera is adapted to take a digital image of the at least one rack and of the teaching devices being inserted into the corresponding retainers of the at least one rack being placed at the processing position, and wherein the location information calculating device is adapted to calculate the location information based on the digital image.
However, Pollack teach the analogous art of a laboratory system (Pollack; fig. 1, #100, [0047]) comprising at least one rack adapted to carry laboratory sample containers inserted in retainers (Pollack; fig 1., #121, #130, [0047]), a plurality of teaching devices (Pollack teach one or two dimensional QR codes which can be placed on tube caps or on the surface of a tray; [0052]), and a location information calculating device comprising a digital camera (Pollack; fig. 5A, #542/544, [0061]), wherein the digital camera is adapted to take a digital image of the at least one rack and of the teaching devices being inserted into the corresponding retainers of the at least one rack being placed at the processing position (Pollack; [0052]), and wherein the location information calculating device is adapted to calculate the location information based on the digital image (Pollack; fig. 4, [0059]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the location information calculating device and the teaching devices of Croquette to comprise a digital camera adapted to take a digital image of the teaching devices inserted into the corresponding retainers of the at least one rack, and wherein the location information calculating device is adapted to calculate the location information based on the at least one digital image, as taught by Pollack, because Pollack teaches the digital camera that capture an image of the teaching devices to determine location information can also provide various other pieces of information relating to the tray and the tubes (Pollack; [0006, 0052-0053, 0055]). One of ordinary skill in the art would have expected this modification could have been performed with a reasonable expectation of success since Croquette and Pollack both teach sample racks comprising a teaching device for determining location information.
Regarding claim 9, modified Croquette teach the laboratory system according claim 8 above, wherein a respective teaching device comprises a mark visible by the digital camera (The modification of the location information calculating device and the teaching devices of Croquette to comprise a digital camera adapted to take a digital image of the teaching devices inserted into the corresponding retainers of the at least one rack, and wherein the location information calculating device is adapted to calculate the location information based on the at least one digital image, as taught by Pollack, has previously been discussed in claim 8 above. Pollack teach the respective teaching devices comprise a QR code visible by the digital camera [0052]).
Regarding claim 10, modified Croquette teach the laboratory system according claim 9, wherein the mark is a QR code (The modification of the location information calculating device and the teaching devices of Croquette to comprise a digital camera adapted to take a digital image of the teaching devices inserted into the corresponding retainers of the at least one rack, and wherein the location information calculating device is adapted to calculate the location information based on the at least one digital image, as taught by Pollack, has previously been discussed in claim 8 above. Pollack teach the respective teaching devices comprise a QR code visible by the digital camera [0052]).
Regarding claim 11, modified Croquette teach the laboratory system according claim 10 above, wherein the QR code indicates the type of the at least one rack (The modification of the location information calculating device and the teaching devices of Croquette to comprise a digital camera adapted to take a digital image of the teaching devices inserted into the corresponding retainers of the at least one rack, and wherein the location information calculating device is adapted to calculate the location information based on the at least one digital image, as taught by Pollack, has previously been discussed in claim 8 above. Pollack teach the respective teaching devices comprise a QR code visible by the digital camera to determine the type of the at least one rack [0053]).
Response to Arguments
Applicant’s arguments filed on 01/15/2026 have been fully considered but were not found persuasive.
Applicant argues, see pages 5-6 of their remarks, towards the 102 rejection over Croquette, that Croquette does not teach the claim limitation “a location information calculating device that is adapted to calculate the location information of at least one rack being placed at the processing position depending on the location of at least two teaching device”. Applicant argues that Croquette is silent as to disclosing any location information of the sample tray 140 based on location information coming from at least two teaching devices 154/155, and that Croquette tracks the location of a sample container 150 rather than a location of the rack 140 itself.
The examiner respectfully disagrees with applicant’s arguments. As an initial matter, paragraph [0043] of Croquette states “The controller 170 may position, using the drive unit 113, the gripper 111A above a predetermined sample container 150 disposed within, for example, a sample tray 140 or any other suitable sample container holding area”. In other words, the location of the tray is an intrinsic property that is known based on the teaching device 154/155 itself being inserted in the tray. Furthermore, the claims additionally recite “a respective teaching device is geometrically formed such that the respective teaching device is insertable into a retainer of the at least one rack”. See claim 1 lines 10-11. That is, the claimed teaching devices are not integrally formed as part of the tray itself. The teaching devices are “insertable” and “comprise a RFID tag” with respect to the tray (see claim 3 and paragraph [0034] of applicants printed publication). Therefore, the location of the rack is an intrinsic property that is determined based on the teaching device itself being inserted into the rack. That being said, Croquette disclose a cap 152 and/or tube 150 and/or a sleeve 310, each comprising a RFID tag 154, that are inserted into a retainer 200 of at least one rack 140; fig. 2-3, [0040-0041, 0043]. Accordingly, Croquette disclose equivalent structure and function as the claimed invention where the location of the tray is determined as an intrinsic property based on the RFID tag being inserted into the receptacle of the rack.
Applicant’s arguments towards the 103 rejection(s) over Croquette in view of Bellows and Pollack have been fully considered but are moot because the rejection does not rely on Bellows or Pollack for teaching any of the subject matter specifically challenged in their arguments.
Citations to art
In the above citations to documents in the art, an effort has been made to specifically cite representative passages, however rejections are in reference to the entirety of each document relied upon. Other passages, not specifically cited, may apply as well.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CURTIS A THOMPSON whose telephone number is (571)272-0648. The examiner can normally be reached on M-F: 7:00 a.m. - 5:00 p.m..
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E-mail communication Authorization
Per updated USPTO Internet usage policies, Applicant and/or applicant’s representative is encouraged to authorize the USPTO examiner to discuss any subject matter concerning the above application via Internet e-mail communications. See MPEP 502.03. To approve such communications, Applicant must provide written authorization for e-mail communication by submitting the following statement via EFS Web (using PTO/SB/439) or Central Fax (571-273-8300):
Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.
Written authorizations submitted to the Examiner via e-mail are NOT proper. Written authorizations must be submitted via EFS-Web (using PTO/SB/439) or Central Fax (571-273-8300). A paper copy of e-mail correspondence will be placed in the patent application when appropriate. E-mails from the USPTO are for the sole use of the intended recipient, and may contain information subject to the confidentiality requirement set forth in 35 USC § 122. See also MPEP 502.03.
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/C.A.T./Examiner, Art Unit 1798
/BENJAMIN R WHATLEY/Primary Examiner, Art Unit 1798