NON-FINAL 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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-9) in the reply filed on 26 March 2026 is acknowledged.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: reference character 99b in Fig. 9 must be defined in the description or removed from the drawing. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
INFORMATION ON HOW TO EFFECT DRAWING CHANGES
Replacement Drawing Sheets
Drawing changes must be made by presenting replacement sheets which incorporate the desired changes and which comply with 37 CFR 1.84. An explanation of the changes made must be presented either in the drawing amendments section, or remarks, section of the amendment paper. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). A replacement sheet must include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of the amended drawing(s) must not be labeled as “amended.” If the changes to the drawing figure(s) are not accepted by the examiner, applicant will be notified of any required corrective action in the next Office action. No further drawing submission will be required, unless applicant is notified.
Identifying indicia, if provided, should include the title of the invention, inventor’s name, and application number, or docket number (if any) if an application number has not been assigned to the application. If this information is provided, it must be placed on the front of each sheet and within the top margin.
Annotated Drawing Sheets
A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be submitted or required by the examiner. The annotated drawing sheet(s) must be clearly labeled as “Annotated Sheet” and must be presented in the amendment or remarks section that explains the change(s) to the drawings.
Timing of Corrections
Applicant is required to submit acceptable corrected drawings within the time period set in the Office action. See 37 CFR 1.85(a). Failure to take corrective action within the set period will result in ABANDONMENT of the application.
If corrected drawings are required in a Notice of Allowability (PTOL-37), the new drawings MUST be filed within the THREE MONTH shortened statutory period set for reply in the “Notice of Allowability.” Extensions of time may NOT be obtained under the provisions of 37 CFR 1.136 for filing the corrected drawings after the mailing of a Notice of Allowability.
Specification
The 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 of in the specification.
The abstract of the disclosure is acceptable.
The title of the invention is acceptable.
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.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by GB 2582156 (Bennett).
Regarding claim 1, Bennett discloses an insert (specimen container 200, Fig. 2), the insert comprising: a base (vessel 203, Fig. 2) having a central aperture (opening at end 206, Fig. 2) configured to receive a receptacle (base component 204, Fig. 2); and a specimen support (sleeve 202, Fig. 2) configured to be selectively coupled to the base and having at least one aperture (opening at end 301, Fig. 3) extending through the specimen support and in fluid communication with the receptacle.
Furthermore, the phrase “for a centrifuge” is a preamble statement of intended use, and therefore carries no patentable weight. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Additionally, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The Courts have held that it is well settled that the recitation of a new intended use, for an old product, does not make a claim to that old product patentable. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). In this case, Bennett teaches all of the structural limitations of the claimed insert and is capable of being used in a centrifuge, and thus meets the claim.
Regarding claim 2, Bennett discloses wherein the base (vessel 203, Fig. 2) includes a top portion and a bottom portion, wherein a cross-sectional area of the central aperture as viewed along a longitudinal axis of the insert increases proximate the top portion, and wherein the change in cross-sectional area forms a step (see annotated Fig. 2 below).
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Regarding claim 3, Bennett discloses wherein the specimen support includes an axial protrusion (first and second elongate members 303 and 304, Fig. 3) configured to engage the step when the specimen support is coupled to the base (page 13, lines 1-5).
Regarding claim 4, Bennett discloses wherein the at least one aperture (opening at end 301, Fig. 3) includes a first portion having a first cross-sectional area as viewed along a longitudinal axis of the insert and a second portion having a second cross-sectional area as viewed along the longitudinal axis of the insert (see annotated Fig. 3 below).
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Regarding claim 5, Bennett discloses wherein the cross-sectional area of the second portion is smaller than the cross-sectional area of the first portion (see annotated Fig. 3).
Regarding claim 6, Bennett discloses wherein the second portion is closer to an axial protrusion (first and second elongate members 303 and 304, see annotated Fig. 3) than the first portion, wherein the axial protrusion is configured to engage a step when the specimen support is coupled to the base (page 13, lines 1-5).
Regarding claim 7, Bennett discloses wherein the second portion tapers toward a longitudinal axis of the aperture (see annotated Fig. 3).
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 8 is rejected under 35 U.S.C. 103 as being unpatentable over Bennett in view of Sato et al. (U.S. Patent Application Pub. No. 2020/0398286, hereinafter Sato).
Regarding claim 8, Bennett does not disclose wherein the first cross-sectional area is at least one selected from a group consisting of elliptical and polygonal shapes.
Sato discloses analogous art related to an insert, wherein the first cross-sectional area (opening 44, Fig. 2) is at least one selected from a group consisting of elliptical (Abstract), and polygonal shapes. It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the insert of Bennett with an elliptical shaped opening as taught by Sato for the purpose of increasing the total number of sample containers attachable to a rotor (para. [0006], Sato).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Bennett in view of Sato, as applied to claim 8 above, and further in view of Goellnitz et al. (U.S. Patent Application Pub. No. 2019/0151862, hereinafter Goellnitz).
Regarding claim 9, the combination of Bennett and Sato does not disclose wherein the specimen support includes a plurality of apertures, each aperture having a similar cross-sectional shape.
Goellnitz discloses analogous art related to an insert, wherein the specimen support (supplemental element 16, Fig. 2B) includes a plurality of apertures (recesses 72, Fig. 4), each aperture having a similar cross-sectional shape (Fig. 4). It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the insert of the combination of Bennett and Sato with the specimen support configuration as taught by Goellnitz for the purpose of allowing the apertures to have a width that is adaptable to the cross-section of the sample containers (para. [0060], Goellnitz).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHUYI S LIU whose telephone number is (571)272-0496. The examiner can normally be reached MON - FRI 9:30AM - 2:30PM EST.
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, Claire Wang can be reached at 571-270-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Shuyi S. Liu/Examiner, Art Unit 1774
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