DETAILED CORRESPONDENCE
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
As to the claim amendments, filed on 12/16/25, the previous 112b rejections are withdrawn.
Based on the claim amendments and remarks, filed 12/16/25, the previous prior art rejection has been modified to address the claim amendments (see below).
Claim Status
Claims 1-23 are pending.
Drawing Objections
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “168” has been used to designate two different components in Figure 1. Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to recite “a non-contact dispenser fluidly coupled to the reagent reservoir receptacle”. Support for the newly added limitation of the instant claims was not found by the examiner in the original disclosure, as no mention of the non-contact dispenser being “fluidly coupled” to the reagent reservoir receptacle exists in the disclosure. Thus, the limitation “a non-contact dispenser fluidly coupled to the reagent reservoir receptacle” is considered new matter. The examiner points out that [58] of the instant specification describes the non-contact dispenser fluid coupled to the reagent reservoir; however, the reagent reservoir is a distinct and different structure from the reagent reservoir receptacle. As stated in line 3 of claim 1 and in [4] of the instant specification, the reagent reservoir receptacle receives the reagent reservoir with the reagent. The instant specification in [66] even supports that the reagent sipper 156 connects the non-contact dispenser with the reagent reservoir itself, but there is no discussion of a fluidic connection with the reagent reservoir receptacle. Therefore, there is no support for the reagent reservoir receptacle, which receives a reagent reservoir actually being fluidly coupled to the non-contact dispenser. Therefore, based on the disclosure, the non-contact dispenser obtains fluid from (or can be fluidly connected to) the reagent reservoir holding the reagent itself. Claims 2-23 are rejected based on further claim dependency
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.
Claims 1-23 are 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.
As to claim 1, it is unclear how the non-contact dispenser can be fluidly coupled to the reagent reservoir receptacle. As stated in line 3 of claim 1 and in [4] of the instant specification, the reagent reservoir receptacle receives the reagent reservoir with the reagent. The instant specification in [66] even supports that the reagent sipper 156 connects the non-contact dispenser with the reagent reservoir itself, but there is no discussion of a fluidic connection with the reagent reservoir receptacle. However, it is unclear how the dispenser can be fluidly coupled to the receptacle itself since the receptacle does not hold the reagent/fluid, but simply holds/supports/receives the reagent reservoir that does hold the reagent liquid. Because the reagent reservoir receptacle does not actually hold/support/receive fluid then it is unclear how the receptacle can be fluidly connected to the dispenser. Are applicants intending to state that the non-contact dispenser is fluidly coupled to the reagent reservoir? Because the reagent reservoir (not the reagent reservoir receptacle) is what actually contains the fluid, then the examiner will interpret the claims such that the dispenser is in fluid contact with the reagent reservoir in order to advance prosecution and promote compact prosecution. Claims 2-23 are rejected based on further claim dependency.
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.
Claims 1-5, 10, 13, 14, 18, 19, 22 are rejected under 35 U.S.C. 102a1/a2 as being anticipated by Yacko et al (US 20090090431; hereinafter “Yacko”; already of record).
As to claim 1, Yacko teaches an apparatus (Yack; Fig. 8-9), comprising:
a plate receptacle (Yacko teaches the region of space/structure in that space that supports and/or receives and/or holds 20/120 as the receptacle; Fig. 8, [46, 48]. Structure 20/120 would inherently be supported/received/held by a structure, since nothing can float in space without support, and this support/receiving/holding structure serves as the receptacle as currently broadly claimed. What the receptacle holds is a matter of intended use);
a reagent reservoir receptacle to receive a reagent reservoir containing reagent (Yacko teaches the region of space/structure in that space that supports and/or receives and/or holds 112 as the receptacle; Fig. 8, [46]. Structure 112 would inherently be supported/received/held by a structure, since nothing can float in space without support, and this support/receiving/holding structure serves as the receptacle as currently broadly claimed. What the receptacle holds is a matter of intended use);
a non-contact dispenser fluidly coupled to the reagent reservoir receptacle separate from the plate receptacle, comprising: an inlet; an upstream valve; a syringe pump having a barrel and a hollow plunger movably disposed within the barrel; a downstream valve; and an outlet; wherein a flow path is defined between the inlet and the outlet and through the upstream valve, the barrel, the hollow plunger, and the downstream valve, the barrel being fluidically between the upstream valve and the downstream valve (Yacko teaches an inlet below 163, an upstream valve 163, a syringe pump with a barrel 134 and a hollow plunger 138 with a through hole 137, a downstream valve 154, and an outlet from the upper end of 138 along 122; Fig. 8-9, [46-50]. Yacko teaches that the barrel 134 is between valves 154 and 163; Fig. 9. Conversely, Yacko teaches an inlet from the upper end of 138 along 122, an upstream valve 154, a syringe pump with a barrel 134 and a hollow plunger 138 with a through hole 137, a downstream valve 163, and an outlet below valve 163; Fig. 8-9. Yack teaches that the reagent reservoir receptacle and plate receptacle are separate. In as much as claimed and as best understood, Yacko teaches the dispenser in fluid contact with the reagent reservoir 112; [46-48]),
wherein the plate receptacle is to receive a well plate having a well and the non-contact dispenser is to dispense the reagent from the reagent reservoir into the well of the plate (Yacko teaches the region of space/structure in that space that supports and/or receives and/or holds 20/120 as the receptacle; Fig. 8, [46, 48]. Structure 20/120 would inherently be supported/received/held by a structure, since nothing can float in space without support, and this support/receiving/holding structure serves as the receptacle as currently broadly claimed. What the receptacle holds is a matter of intended use, and the well plate is not positively recited as part of the apparatus structure. Yacko teaches the dispenser dispensing which can dispense any fluid into any structure).
Note: The instant Claims contain a large amount of functional language (ex: “configured to…”). 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 and 2173.05(g)). Therefore, if the prior art structure is capable of performing the function, then the prior art meets the limitation in the claims.
As to claim 2, Yacko teaches the apparatus of claim 1, further comprising an actuator to actuate the hollow plunger (Yacko teaches actuator 144; [46, 48, 49]).
As to claim 3, Yacko teaches the apparatus of claim 1, wherein the non-contact dispenser comprises a nozzle that includes the outlet (Yack teaches a nozzle/outlet along 122; Fig. 8-9. Conversely, Yacko teaches an outlet/nozzle below valve 163).
As to claim 4 (as best understood), Yacko teaches the apparatus of claim 1, further comprising a fluidic line coupled to the upstream valve and the hollow plunger (Yacko teaches tube 164; [47], Fig. 8-9. Conversely, Yacko teaches line 122; [46, 48]).
As to claim 5 (as best understood), Yacko teaches the apparatus of claim 4, wherein the hollow plunger comprises an upstream facing fitting and the fluidic line is coupled to the upstream facing fitting (Yacko teaches tube 164 which connects via a fitting to plunger; [47], Fig. 8-9. Conversely, Yacko teaches line 122 which connects via a fitting to plunger; [46, 48]).
As to claim 10, Yacko teaches the apparatus of claim 1, wherein the hollow plunger carries a seal and the barrel comprises an interior surface that the seal sealingly engages (Yacko teaches a seal on the plunger; Fig. 9, [47]).
As to claim 13, Yacko teaches the apparatus of claim 1, further comprising a shaft coupled to the hollow plunger and having an end (Yacko teaches shaft 140, and also the shaft as the upper region of 138; Fig. 8; [46]).
As to claim 14, Yacko teaches the apparatus of claim 13, further comprising an actuator to interface with the end to actuate the hollow plunger (Yacko teaches actuator 144 to interface with the shaft; Fig. 8; [46]).
As to claim 18, Yacko teaches an apparatus (Yack; Fig. 8-9), comprising: an inlet; an upstream valve; a syringe pump having a barrel and a hollow plunger movably disposed within the barrel; a downstream valve; and an outlet; wherein a flow path is defined between the inlet and the outlet and through the upstream valve, the barrel, the hollow plunger, and the downstream valve, the barrel being fluidically between the upstream valve and the downstream valve (Yacko teaches an inlet below 163, an upstream valve 163, a syringe pump with a barrel 134 and a hollow plunger 138 with a through hole 137, a downstream valve 154, and an outlet from the upper end of 138 along 122; Fig. 8-9, [46-50]. Yacko teaches that the barrel 134 is between valves 154 and 163; Fig. 9. Conversely, Yacko teaches an inlet from the upper end of 138 along 122, an upstream valve 154, a syringe pump with a barrel 134 and a hollow plunger 138 with a through hole 137, a downstream valve 163, and an outlet below valve 163; Fig. 8-9).
As to claim 19, Yacko teaches the apparatus of claim 18, further comprising a shaft coupled to the hollow plunger and extending from the barrel (Yacko teaches shaft 140, and also the shaft as the upper region of 138; Fig. 8; [46]).
As to claim 22, Yacko teaches the apparatus of claim 18, wherein the hollow plunger is self-sealing (Yacko teaches a seal on the plunger; Fig. 9, [47]).
Claim Rejections - 35 USC § 103
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.
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.
Claims 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Yacko et al (US 20090090431; hereinafter “Yacko”; already of record) in view of Taylor et al (US 20160175835; hereinafter “Taylor”; already of record).
As to claims 6-9, Yacko teaches the apparatus of claim 1, with the upstream valve and downstream valve (see above).
Yacko does teach that the valves and not limited and that valves can be added in other spaces and that other valve types can be used (Yacko; [37]). Yacko does not specifically teach the valves are diaphragm valves, each having a diaphragm and a valve seat and an internal curved surface that define a space between the valve seat and the internal curved surface to allow movement of the diaphragm of the corresponding diaphragm valve; wherein the upstream valve comprises a first aperture to allow a pressure to be applied to the diaphragm of the upstream valve to actuate the upstream valve and the downstream valve defines a second aperture to allow a pressure to be applied to the diaphragm of the downstream valve to actuate the downstream valve; and a pressure source coupled to an actuation port of the upstream valve and an actuation port of the downstream valve. However, Taylor teaches the analogous art of valves for controlling the flow of liquid, where the valves are diaphragm valves, each having a diaphragm and a valve seat and an internal curved surface that define a space between the valve seat and the internal curved surface to allow movement of the diaphragm of the corresponding diaphragm valve; wherein there are multiple valves and each valve comprises a first aperture to allow a pressure to be applied to the diaphragm of the valve to actuate the valve; and a pressure source coupled to an actuation port of the valves (Taylor teaches diaphragm b602 that is curved and includes an aperture b603 through which pressure is provided by a pressure source to actuate the valves; Fig. 21a/b, [251-253]. Taylor also teaches the pressure source connecting to a plurality of valves for control; Fig. 22, [253-273]). It would have been obvious to one of ordinary skill in the art to have modified the upstream and downstream valves of Yacko to have been diaphragm valves connected to a pressure source for actuation as in Taylor because Taylor teaches that the valves help to reduce dead volume to control precise fluid volume (Taylor; [291]), and because Taylor teaches that the diaphragm valves are known valves to control fluid flow (Taylor; [251-273]) and because the diaphragm valves help to ensure and prevent liquid passing when closed (Taylor; [273]).
Claim 11 is ejected under 35 U.S.C. 103 as being unpatentable over Yacko et al (US 20090090431; hereinafter “Yacko”; already of record) in view of LaCroix, C (US 20160303557; hereinafter “LaCroix”; already of record).
As to claim 11, Yacko teaches the apparatus of claim 10, with the seal (see above).
Yacko does not specifically teach the seal comprises Teflon. However, LaCroix teaches the analogous art of a seal in a pipettor with a Teflon seal (LaCroix teaches a PTFE seal between the piston and cylinder; [20, 21]). It would have been obvious to one of ordinary skill in the art to have modified the seal of Yacko to have been a Teflon seal as in LaCroix because LaCroix teaches that Teflon seals are well-known to create a sealed plunger to aspirate/dispense liquid (LaCroix; [20]), and one of ordinary skill in the art would also understand that Teflon creates an chemically inert seal which would not alter or contaminate the dispensed fluid.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Yacko et al (US 20090090431; hereinafter “Yacko”; already of record) in view of Thomas, B (US 3977574; hereinafter “Thomas”; already of record).
As to claim 12, Yacko teaches the apparatus of claim 1, where the hollow plunger carries a seal and the barrel comprises an interior surface that the seal sealingly engages (Yacko teaches a seal on the plunger; Fig. 9, [47]).
Yacko does not specifically teach that the plunger includes a pair of spaced apart seals. However, Thomas teaches the analogous art of a plunger which includes multiple spaced apart seals (Thomas; col. 2 line 7-14, claim 9, Fig. 2). It would have been obvious to one of ordinary skill in the art to have modified the seal on the plunger of Yacko to have included multiple seals as in Thomas because Thomas teaches that the multiple seals help to prevent leakage (Thomas; col. 2 line 7-14).
Claims 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Yacko et al (US 20090090431; hereinafter “Yacko”; already of record) in view of Bova et al (US 6387330; hereinafter “Bova”; already of record) and in view of Reichel et al (US 20040112980; hereinafter “Reichel”; already for record).
As to claims 15-17, Yacko teaches the apparatus of claim 14, wherein the shaft has the end defining a groove that forms a knob and the actuator has a gripper assembly having arms that grip the groove to couple the actuator and the shaft (Yacko teaches that the shaft top has a groove between two protrusions, and that the actuator has a gripper to grip the shaft to actuate the plunger; [48]).
Yacko does not specifically teach the gripper arms to be received within the groove of the shaft to couple the actuator and the shaft. However, Bova teaches the analogous art of an actuator with a gripper that moves a plunger, where the gripper grips below the protrusion on the shaft by gripping from above (Bova; Fig. 1, col. 6 line 32-34). It would have been obvious to one of ordinary skill in the art to have rearranged the gripper that grips partially in the groove of Yacko to grip from above such that the gripper was fully in the groove as in Bova because Bova teaches that it is known to arrange an actuator and gripper above the shaft (Bova; Fig. 1), and because it has been generally recognized that to shift location of parts when the operation of the device is not otherwise changed is within the level of ordinary skill in the art (MPEP 2144.04 VI).
Modified Yacko does not specifically teach the gripper arms are movable between a closed and open position, or the gripper assembly including a spring positioned between the arms to bias the arms towards the closed position. However, Reichel teaches the analogous art of a gripper that opens and closes, and includes a spring to bias the arms closed (Reichel; [218]). It would have been obvious to one of ordinary skill in the art to have modified the gripper of modified Yacko to have opened and closed and included a spring to bias the arms closed as in Reichel because Reichel teaches that opening and closing enables the objects to be gripped, and that a spring helps to provide a fail-safe operation (Reichel; [218]).
Claims 20, 21 are rejected under 35 U.S.C. 103 as being unpatentable over Yacko et al (US 20090090431; hereinafter “Yacko”; already of record) in view of Green, J (US 6257458; hereinafter “Green”; already of record).
As to claim 20, Yacko teaches the apparatus of claim 19, with the shaft, and a fluidic line coupled to the upstream valve and coupled to the hollow plunger (Yacko teaches the shaft as the top portion of 138 which is coupled to the hollow plunger as the lower portion of 138 and which is fluidly coupled to the valve; Fig. 8-9).
Yacko does not specifically teach wherein the shaft defines a side opening with the fluid line passing through the opening. However, Green teaches the analogous art of a hollow plunger with an upper shaft with a side opening (Green teaches hollow plunger with a side opening 78 which creates a fluid line between the hollow plunger and line 80; Fig. 2-3, col. 3 line 55 – col. 4 line 10). It would have been obvious to one of ordinary skill in the art to have modified the shaft and fluid line of Yacko to have had a side opening to connect the lines as in Green because Green teaches that the side opening enables the attachment of the external fluid line (Green; Fig. 2-3, col. 3 line 55 – col. 4 line 10). Further, it would have been obvious to change the shape of the hollow plunger with an opening at the top of Yacko to have a side opening as in Green to enable fluidic flow since Green teaches that the side opening still enables fluid flow and because it has been held that changes in shape are not patentably distinct from prior art (MPEP 2144.04 IV).
As to claim 21, Yacko teaches the apparatus of claim 19, with the shaft a fitting defining a port and a passage, the flow path being defined through the fitting and the passage, and a fluidic line coupled to the upstream valve and fitting (Yacko teaches the shaft as the top portion of 138 which has a fitting and a passage, and is coupled to the hollow plunger as the lower portion of 138 and which is fluidly coupled to the valve; Fig. 8-9).
Yacko does not specifically teach wherein the shaft defines a side fitting. However, Green teaches the analogous art of a hollow plunger with an upper shaft with a side fitting (Green teaches hollow plunger with a side fitting 78 which creates a fluid line between the hollow plunger and line 80; Fig. 2-3, col. 3 line 55 – col. 4 line 10). It would have been obvious to one of ordinary skill in the art to have modified the shaft and fluid line of Yacko to have had a side fitting to connect the lines as in Green because Green teaches that the side opening enables the attachment of the external fluid line (Green; Fig. 2-3, col. 3 line 55 – col. 4 line 10). Further, it would have been obvious to change the shape of the hollow plunger with an opening fitting at the top of Yacko to have a side opening fitting as in Green to enable fluidic flow since Green teaches that the side opening still enables fluid flow and because it has been held that changes in shape are not patentably distinct from prior art (MPEP 2144.04 IV).
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Yacko et al (US 20090090431; hereinafter “Yacko”; already of record) in view of Rapoza, E (US 4050316; hereinafter “Rapoza”; already of record).
As to claim 23, Yacko teaches the apparatus of claim 18, with the hollow plunger having an internal surface (see above).
Yacko does not specifically teach the hollow plunger comprises an outwardly tapered internal surface. However, Rapoza teaches the analogous art of a plunger with an outwardly tapered internal surface (Raposa teaches outward taper 39; Fig. 1, col. 3 line 47-60). It would have been obvious to one of ordinary skill in the art to have modified the hollow plunger internal surface of Yacko to have an outward taper as in Rapoza because Rapoza teaches that it is known to have a tapered passageway in the dispenser to provide fluid communication (Raposa; Fig. 1, col. 3 line 47-60). Further, it would have been obvious to change the shape of the hollow plunger internal surface of Yacko to have an outward taper as in Rapoza to enable dispensing since Rapoza teaches that dispensing can occur through the outward taper and because it has been held that changes in shape are not patentably distinct from prior art (MPEP 2144.04 IV).
Response to Arguments
Applicant's arguments filed 12/16/25 have been considered but are moot being they are towards the amended claims and not the current grounds of rejection. However, because the examiner has relied on the same prior art then the examiner has considered the arguments, but they are not persuasive.
Applicants argue on pages 7-8 of their remarks that prior art Yacko does not teach “a non-contact dispenser fluidly coupled to the reagent reservoir receptacle separate from the plate receptacle”. Applicants argue that part 112 is only a source container that cannot possibly be a reagent reservoir receptacle. Applicants also argue that Yacko is silent to any reagent in part 112. Applicants also argue that Yacko is silent regarding a well plate. Applicants on page 8 of their remarks argue that the dispenser is entirely separate from the reagent reservoir receptacle. The examiner respectfully disagrees. First, how the dispenser is fluidly coupled to the receptacle is unclear (see 112(b) above). As to applicants argument that Yacko teaches that part 112 is a source container that cannot possibly be a reagent reservoir receptacle, the examiner respectfully disagrees. The examiner has cited 112 as the reagent reservoir, not the receptacle, and Yacko teaches the region of space/structure in that space that supports and/or receives and/or holds 112 as the receptacle; Fig. 8, [46]. Structure 112 would inherently be supported/received/held by a structure, since nothing can float in space without support, and this support/receiving/holding structure serves as the receptacle as currently broadly claimed. What the receptacle holds is a matter of intended use. As to applicants arguments that Yacko is silent to a reagent in 112, the examiner respectfully disagrees and notes that a reagent (and reagent reservoir) is not positively recited in the claims. 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 and 2173.05(g)). Therefore, if the prior art structure is capable of performing the function, then the prior art meets the limitation in the claims. Yacko teaches 112 as capable of holding reagent, and also Yack teaches 112 as holding a fluid where any fluid could be considered a reagent without further defining the reagent. As to applicants arguments that Yacko is silent regarding a well plate, the examiner notes that the claims are not positively reciting a well plate and that no well plate is actually required by the claims. 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 and 2173.05(g)). Therefore, if the prior art structure is capable of performing the function, then the prior art meets the limitation in the claims. Rather, the claims recite a plate receptacle that must be capable of receiving a well plate, and the structure of the plate receptacle of Yacko is capable of this as Yacko teaches the region of space/structure in that space that supports and/or receives and/or holds 20/120 as the receptacle; Fig. 8, [46, 48]. Structure 20/120 would inherently be supported/received/held by a structure, since nothing can float in space without support, and this support/receiving/holding structure serves as the receptacle as currently broadly claimed. What the receptacle holds is a matter of intended use. As to applicants arguments that the dispenser is entirely separate from the reagent reservoir receptacle, the examiner respectfully disagrees and notes that this argument is not commensurate in scope with the claims because the claims do not require the dispenser to be separate from the reagent reservoir receptacle but rather require the dispenser to be separate from the plate receptacle. Further, the examiner notes that the cited structure of the dispenser is a distinct and separate structure from that of the reagent reservoir receptacle (see the rejection of claim 1 above). Just because the components of the dispenser are interacting with the reagent reservoir does not mean that the components are not separate.
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 BENJAMIN R WHATLEY whose telephone number is (571)272-9892. The examiner can normally be reached Mon- Fri 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Capozzi can be reached at (571) 270-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BENJAMIN R WHATLEY/Primary Examiner, Art Unit 1798
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