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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05MAR2026 has been entered.
Response to Arguments
The Amendment filed 05MAR2026 has been entered. No new matter has been entered. Applicant’s amendments have overcome each and every 103 rejections previously set forth in the Non-Final Office Action mailed 09DEC2025.
Applicant's arguments filed 05MAR2026 have been fully considered.
Regarding SIDDIQI, the reference clearly teaches and/or suggests a motor controller with speed and rotational direction control as the motor can change both its speed and direction as desired (C8/L24,37-38; C12/L44-45; C16/L5-8,15-17). The reference also clearly teaches the intended use of both mixing and magnetic bead attraction (abstract). Note that the device claim only requires a motor controller with speed and rotational direction control, not homogonous mixing.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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.
CLEVELAND is cited for teaching a plurality of pipettors, which is analogous to the claimed invention as being in the technological environment of laboratory devices.
FRONSKE is cited for teaching engagement tabs or slots, which is analogous to the claimed invention as being in the technological environment of mixing containers.
MIKYSKA is cited for teaching a motor drive as is known in the art. The claims do not require homogeneous magnetic particle suspensions.
See new rejections below including the teaching of internal fins.
Claim Objections
Claim 12 line(s) 1-2 sets forth the limitation “the motor comprises direct drive or indirect drive”, which should be corrected to - - the motor comprises a direct drive or an indirect drive - -.
Appropriate correction is required.
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.
Claim(s) 1-4,6-7,9,13,15-16,21-22 are rejected under 35 U.S.C. 103 as being unpatentable over SIDDIQI (US 6033574) in view of NANBA (US 11015159).
Regarding claims 1,6-7,21, SIDDIQI teaches a method for mixing and separation employing magnetic particles (title, Figs.) including a system comprising:
a cylindrical vessel (Fig. 1 #3) with a center and a radius comprising a vessel opening (as shown in Fig. 1), a vessel base exterior (bottom of vessel), an interior vessel wall (internal surface of #3), and an exterior vessel wall (external surface of #3), the vessel further comprising:
a magnet (Fig. 1 #1) positioned adjacent to the exterior vessel wall;
a drive base (Fig. 1 #5) operably connected to the vessel base exterior;
a motor (Fig. 1 #6) operatively connected to the drive base, wherein the motor rotates the vessel along the vessel's center (C12/L30-31); and,
a motor controller (C12/L44-45) with speed and rotational direction control (such is either implied or obvious to provide for flexibility in control of the vessel movement; see also C8/L24,37-38; C16/L5-8,15-17). In considering the disclosure of SIDDIQI, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom (MPEP 2144.01).
SIDDIQI does not teach the vessel comprises a plurality of internal side fins. However, NANBA teaches a single-use cell culturing apparatus and culturing bag (title, Figs.) including a substantially cylindrical vessel (Fig. 1 #1) with a center and a radius comprising a vessel opening (Fig. 1; C7/L60-67), a vessel base exterior (bottom of vessel), an interior vessel wall (internal surface of #2), and an exterior vessel wall (external surface of #2), the vessel further comprising:
a plurality of radial internal side fins (Fig. 1 #4), the side fins comprising a side fin width and a side fin height (see Figs. 2-3), wherein the side fin width does not extend into a region of the center of the vessel (see Fig. 3; C5/L35-59);
a drive base operably connected to the vessel base exterior (implied as the motor #5 is connected to the vessel #2 for rotation);
a motor (Fig. 1 #5) operatively connected to the drive base, wherein the motor rotates the vessel along the vessel's center (C4/L32-36); and,
a controller (Fig. 1 #19).
NANBA teaches that the fins improve the efficiency of stirring (C3/L4-5; C5/L37-43,49-56).
Therefore, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the vessel of SIDDIQI with the fins of NANBA in order to improve the efficiency of stirring and mixing. The references are combinable, because they are in the same technological environment of mixing. See MPEP 2141 III (A) and (G).
Regarding the vessel and fin height and width, size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Regarding claims 2-3, SIDDIQI teaches the magnet is a permanent magnet (C1/L14) or an electromagnet (C12/L23-24);
wherein the magnet generates a magnetic field (it’s a magnet).
Note that the limitation “magnetic beads” sets forth a method and/or the material worked on as an intended use of the apparatus. A claim is only limited by positively recited elements and thus, “inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). See MPEP 2115.
See also C10/L11; C6/L33-37.
Regarding claim 4, SIDDIQI teaches the magnet generates a magnetic field in the range of 25 to 45 MGOe (megaGauss Oersted; C11/L29-33), which overlaps the instantly claimed range of greater than 30 megaGauss-Oersteds and therefore establishes a case of prima facie obviousness. See MPEP 2144.05 I. It would have been obvious to one of ordinary skill in the art to select the instantly claimed range from the prior art range because prior art teaches the same utility over the selected range.
Regarding claim 9, SIDDIQI teaches the container is a test tube (C12/L11-12).
Regarding the vessel height, size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Regarding claim 13, SIDDIQI teaches the vessel comprises plastic (C6/L45-48).
Regarding claim 15, SIDDIQI teaches e.g. four vessels (see e.g. Fig. 3). Note that it is obvious to provide any number of vessels as convenient.
Regarding claim 16, SIDDIQI teaches the motor controller comprises an electronic motor control implying a computer control system (C12/L44-45).
In considering the disclosure of SIDDIQI, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom (MPEP 2144.01).
Regarding claim 22, SIDDIQI teaches the motor controller is configured to set values for e.g. a speed of rotation (C8/L24,37-38).
Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over SIDDIQI (US 6033574) in view of NANBA (US 11015159) and CLEVELAND (US 6461034).
Regarding claim 8, SIDDIQI teaches a pipette (see e.g. Fig. 5a #59) and e.g. a plurality of rotatable test tubes (see e.g. Fig. 4), but does not teach a plurality of pipettors. However, CLEVELAND teaches use of a bubble paddle tumble stirrer to mix the contents of a vessel while the contents are being removed (title, Figs.) including a liquid handling system comprising a plurality of pipettors (Fig. 3 #30) so that the contents (e.g. a plurality of aliquots or samples) can be removed while the contents of the vessel is uniformly mixed for liquid handling applications such as multi-well microplates (C1/L10-31,C3/L15-30).
Therefore, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the device of SIDDIQI to include a plurality of pipettors in order to remove a plurality of mixed samples for multi-sample liquid handling. The references are combinable, because they are in the same technological environment of laboratory devices. See MPEP 2141 III (A) and (G).
Claim(s) 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over SIDDIQI (US 6033574) in view of NANBA (US 11015159) and FRONSKE (US 4166705).
Regarding claims 10-11, SIDDIQI does not teach engagement tabs or slots. However, FRONSKE teaches an apparatus for mixing (title, Figs.) including:
a vessel (Fig. 1 #5);
a vessel base exterior (Figs. 1,7 #42) comprising engagement slots (Figs. 4-5,7 #45); and
a drive base (Figs. 1,7 #2) comprising engagement tabs (Figs. 1,7 #3,4).
FRONSKE teaches that such is a suitable means for removably securing the vessel to the drive base for rotation (abstract; C5/L59-61).
Therefore, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the vessel and drive base of SIDDIQI with the slots/tabs of FRONSKE in order to provide an alternative suitable means for removably securing the vessel to the drive base for rotation as is known in the art. The references are combinable, because they are in the same technological environment of mixing containers. See MPEP 2141 III (A) and (G).
Furthermore, it is obvious to one having ordinary skill in the art that an obvious alternative embodiment is for a vessel base exterior comprising engagement tabs while a drive base comprising engagement slots as both embodiments provide a suitable engagement arrangement for removably attaching two parts together.
Claim(s) 12 is rejected under 35 U.S.C. 103 as being unpatentable over SIDDIQI (US 6033574) in view of NANBA (US 11015159) and MIKYSKA (US 5060151).
Regarding claim 12, SIDDIQI is silent as to the motor drive. However, MIKYSKA teaches a speed control for orbital shaker with reversing mode (title, Figs.) including:
a drive base (Fig. 1 #14);
a motor (Fig. 3 #36) operatively connected to the drive base;
a motor controller with speed and rotational direction control (abstract; speed and reversing selectable modes); and
wherein the motor comprises a direct drive (C2/L31-32).
MIKYSKA teaches that such a motor provides for precise control for reproducible gentle agitation or for more intense agitation as desired (C2/L38-43,59-62).
Therefore, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to specify/modify the motor drive of SIDDIQI with the direct drive of MIKYSKA in order to provide precise control for reproducible gentle agitation or for more intense agitation as desired. The references are combinable, because they are in the same technological environment of mixing. See MPEP 2141 III (A) and (G).
Claim(s) 14 is rejected under 35 U.S.C. 103 as being unpatentable over SIDDIQI (US 6033574) in view of NANBA (US 11015159) and PIASIO (US 4197287).
Regarding claim 14, SIDDIQI is silent as to the type of plastic of the vessel. However, PIASIO teaches an apparatus (title, Figs.) comprising a polymeric tube made of an inert and inexpensive material such as e.g. polypropylene (C10/L64-66).
Therefore, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to specify the vessel of SIDDIQI to be made of polypropylene as an inert and inexpensive material as is known in the art. The references are combinable, because they are in the same technological environment of laboratory containers. See MPEP 2141 III (A) and (G).
Telephonic Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM A ROYCE whose telephone number is (571)270-0352. The examiner can normally be reached M-F ~08:00~15:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Lebron can be reached at (571)272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LIAM A. ROYCE
Primary Examiner
Art Unit 1777
/Liam Royce/ Primary Examiner, Art Unit 1777