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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-11 in the reply filed on February 23, 2026 is acknowledged. Claims 12-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, albeit they are subject to rejoinder upon the allowance of claim 1.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on June 27, 2023, October 30, 2025, December 2, 2025 and February 23, 2026 are being considered by the examiner.
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 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. he 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) 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):
(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). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) 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) 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) 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) because the claim limitations use generic placeholders that are coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholders are not preceded by a structural modifier.
Such claim limitations are: “alignment features” in claims 9-11.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
In this instance, according to the specification (see lines 20-25, p. 6), “alignment feature” refers to a physical barrier against which the flow cell is clamped.
If Applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f), Applicant may:
(1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or
(2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 112
In the event the determination of the status of the application as subject to AIA (or as subject to pre-AIA ) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the rationale supporting the rejection would be the same under either status.
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.
Claims 3 and 7-11 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.
Claim 3 is indefinite because it recites that each separator is attached to the flow cell holder. However, the separators are part of the flow cell holder, meaning claim 3 suggests that each separator can be attached to itself. To obviate the rejection, the claim must specify a part of the flow cell holder to which the separators are attached.
Claims 7 and 8 are indefinite because they do not specify with what the tips form an angle.
Claim 9 recites “the outer edge of the receptacle”. While the receptacle must comprise an outer edge, the limitation impermissibly presumes the existence of a singular outer edge.
Claims not explicitly rejected are rejected due to dependency.
Claim Rejections - 35 USC § 102
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 1-4 and 7-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Unno (US 2014/0251033 A1).
Unno discloses a flow cell holder comprising (see Fig. 1):
a receptacle 104 configured to hold a flow cell 120* (see Fig. 2); and
a separation mechanism comprising one or more actuators 112 operatively coupled to two or more separators 132 each having a body with an angled tip (element 132 is angled with respect to horizontal and vertical axes such that their tips are also angled), wherein the two or more separators 132 are disposed about the perimeter of the receptacle 104 (see Fig. 4A), and actuation by the one or more actuators 112 causes the separators 132 to move substantially towards or away from the perimeter of the receptacle in a substantially uniform manner so as to grip and release the flow cell 120, respectively (see [0026] and compare Figs. 4A and 4B)).
*The flow cell is not a part of the claimed invention. It is recited in the claim solely to provide context for the claimed holder. Consequently, prior art need not disclose the claimed flow cell to reject the claim. The limitations directed to the flow cell are anticipated if the holder taught by the prior art is simply capable of holding the claimed flow cell. In this instance, the holder taught by Unno is capable of holding a multi-layered flow cell having dimensions identical to those of tube 120.
With respect to claim 2, the one or more actuators comprise a rotating lever 142 having an effort side (outer rim of element 142 that is used to rotate the one or more actuator 112) and a resistance side 140 (see Figs. 1 and 2), wherein the resistance side 140 is mechanically coupled to the two or more separators 132 (see Fig. 2), and movement (rotation) of the effort side actuates the two or more separators 132 (see [0026]).
With respect to claim 3, each separator 132 is attached to the receptacle 104 via a pivot point 464/466 (see [0030] and Figs. 4A and 4B illustrating the manner in which the separators 132 pivot about 464/466), wherein moving the effort side of the lever 142 moves each separator around the pivot point (see [0026]).
With respect to claim 4, the separation mechanism comprises three separators 132 (see Fig. 1).
With respect to claim 7 and 8, the claims are indefinite, as discussed above. That said, the axis of the tips are angled at about 30 degrees with respect to the vertical axis (see Fig. 4A).
With respect to claims 9 and 10, the flow cell holder comprises two alignment features 128 disposed at an outer edge of the receptacle (see Figs. 2 and 4A).
With respect to claim 11, the flow cell holder further comprises an alignment clamp 146 configured to apply a clamping force on a flow cell 120 disposed in the receptacle 104 towards the one or more alignment features 128 (by rotating element 142, alignment clamp 146 clamps down on spring 152, see Figs. 3A and 3B, which cause the separators 132 to apply a clamping force on the flow cell 120 towards the alignment features 128).
Claim Rejections - 35 USC § 103
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.
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 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Unno in view of Beckett (US 2002/0001647 A1).
With respect to claim 5 and 6, Unno does not disclose a cross-sectional dimension (e.g. an outside diameter) of the receptacle 104. Instead, Unno discloses that the flow cell 120 has an outside diameter on the millimeter scale (see [0022]), suggesting that bore 216 of the receptacle 104 has dimensions in the millimeter scale (see Fig. 2). Based on the figures illustrating the relative dimensions of bore 216 to the rest of the receptacle 104, the receptacle 104 has a cross-sectional dimension (outer diameter) that greatly exceeds the diameter of bore 216 (see Fig. 2). Moreover, given that laboratory tubes come in various sizes, 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 receptacle 104 to accommodate flow cells 120 having larger dimensions, for example a flow cell having a diameter in the cm scale (e.g. 2 cm), as taught by Beckett (see [0051]). If the modification is made, then the bore 216 of the receptacle 104 would have a diameter in the cm scale (e.g. slightly larger than 2 cm), and a cross-sectional dimension (outer diameter) of the receptacle 104 would have a value that falls within the claimed range (e.g. 7.5 cm).
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.
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, 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