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 group II (claims 7-13) in the reply filed on 2/9/2026 is acknowledged.
Claim Status
Claims 1-13 are pending with claims 7-13 being examined and claims 1-6 are withdrawn.
Claim Objections
Claims 8, 9, 11, 12, and 13 are objected to because of the following informalities:
Claim 8 recites “The sample basket in accordance with claim 7 further comprising, wherein” should read as “The sample basket in accordance with claim 7, wherein” in line 1;
Claim 9 recites “The sample basket in accordance with claim 8 further comprising, wherein” should read as “The sample basket in accordance with claim 8, wherein” in line 1;
Claim 11 recites “The sample basket in accordance with claim 7 further comprising, wherein” should read as “The sample basket in accordance with claim 7, wherein” in line 1;
Claim 12 recites “The sample basket in accordance with claim 11 further comprising” should read as “The sample basket in accordance with claim 11, further comprising” in line 1;
Claim 13 recites “The sample basket in accordance with claim 7 further comprising” should read as “The sample basket in accordance with claim 7, further comprising” in line 1. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 7-13 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.
Claim 7 recites the limitation in the preamble “a sample basket for an assembly for handling samples for analysis by an x-ray-based analysis system having a robotic manipulator, the samples of a type required to be maintained at a cryogenic temperature during handling, the assembly adapted to be used with a first plurality of sample magazines each having a magazine base and a removable cover, the magazine base having features for receiving a second plurality of sample pins, the sample pins being removably affixed to the magazine base, the assembly adapted for enabling the first plurality of magazines containing the second plurality of sample pins to be contained in a shipping dewar and transferred to a transfer dewar and thereafter to a staging dewar of the analysis system, comprising;…”. The limitation is unclear as to what structure comprises the following clause of “the sample basket”. Specifically, the preamble recites “a sample basket for an assembly for handling samples for analysis by an x-ray-based analysis system having a robotic manipulator” is interpreted as intended use and/or functional language. The Courts have held that the manner in which a claimed apparatus is intended to be employed does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). A functional recitation 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. See MPEP § 2114. Thus, structures such as “an assembly, an x-ray-based analysis system, and a robotic manipulator” are not positively recited elements. It is unclear as whether the final clause of claim 7 is required, because the structures listed are not positively recited. For the purpose of examination, the examiner does not interpret the word “comprising” to be part of any of the structures. Claims 8-13 are rejected by virtue of dependency on claim 7.
Claim 7 recites the limitation "the samples of a type" in lines 2-3. The term “type” in is a relative term which renders the claim indefinite. The term “type” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically, any sample is capable of being placed in cryogenic temperatures so it is unclear what type of sample the Applicant is claiming. Claims 8-13 are rejected by virtue of dependency on claim 7.
Claim 11 recites the limitation “the first set of pins being relatively longer than the second set of pins” in lines 2-3. The term “relatively” in is a relative term which renders the claim indefinite. The term “relatively” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 13 recites the limitation “the first plurality equal to seven” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim, thus the limitation is unclear. The examiner interprets that the Applicant is referring to the first plurality of magazines.
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.
Claim(s) 7-10 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Geier (EP 3195933 A1; hereinafter “Geier”; English translation attached).
Regarding claim 7, Geier teaches a sample basket for an assembly for handling samples for analysis by an x-ray-based analysis system having a robotic manipulator (Geier; Abstract; the limitation “for an assembly for handling samples for analysis by an x-ray-based analysis system having a robotic manipulator” is interpreted as intended use and/or functional language. The Courts have held that the manner in which a claimed apparatus is intended to be employed does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). A functional recitation 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. See MPEP § 2114. Thus, the limitations of an assembly, x-ray-based analysis system, and a robotic manipulator are not positively recited elements and are not considered to be part of the sample basket), the samples of a type required to be maintained at a cryogenic temperature during handling (Geier; page 1-2, para [1]; a device for the cryoasservation of biological tissue samples), the assembly adapted to be used with a first plurality of sample magazines each having a magazine base and a removable cover, the magazine base having features for receiving a second plurality of sample pins, the sample pins being removably affixed to the magazine base, the assembly adapted for enabling the first plurality of magazines containing the second plurality of sample pins to be contained in a shipping dewar and transferred to a transfer dewar and thereafter to a staging dewar of the analysis system (), comprising;
the sample basket adapted for receiving the first plurality of the sample magazines (Geier; page 12, para [8]; a sample carrier 1 with a sample carrier insert 10), the sample basket forming a basket base and an upstanding perimeter wall cooperating for containing a level of a cryogenic liquid submerging the sample magazines (Geier; Fig. 1; page 4, para [5]; The coolant, which is provided in the recess of the first insert section, may in particular be dry ice or have dry ice. Alternatively, liquid nitrogen would also be conceivable as a coolant if care is taken to ensure that the sample carrier does not become colder than -160 ° C. by isolation or sufficient distance from the liquid nitrogen…page 13, para [5]; The shape and the dimensions of the recess 12 preferably correspond to the shape or the outer dimensions of cooling elements), the basket base forming first locating features for locating each of the first plurality of magazines onto the basket base in an established position (Geier; Fig. 2, 6; page 5, para [4]; a plurality of protrusions, may engage a correspondingly shaped bottom structure of a container, for example a cryopreserved tissue storage container or a container having a refrigerating agent with a correspondingly shaped bottom portion), the sample basket having second locating features for enabling the orientation of the basket to be fixed with respect to the analysis system (Geier; Fig. 1, 6; the Examiner interprets the lid 3 as the second locating feature as this would indicate which way the container would be opened in order to be accessed by the analysis system).
Regarding claim 8, Geier teaches the sample basket in accordance with claim 7, wherein the basket base forms an upper surface receiving the magazines and a bottom surface (Geier; Fig. 2, 5; page 14, para [4]; the second insert portion 20 can be easily stored in the recess 12; examiner notes that the second insert is positioned within the basket which receives the containers that is interpreted as the magazines. The magazines are not structurally defined and is interpreted to be any container that holds the samples such as container 31 which corresponds to receiving portion 21 and containers 32 which corresponds to receiving portion 22), the upper surface forming the first locating features in the form of a plurality of locating pins interacting with the magazine base to locate each of the magazine bases with respect to the basket base upper surface (Geier; Fig. 2; page 5, para [4]; a protrusion formed, for example, at a bottom portion of the receiving portion, or a plurality of protrusions, may engage a correspondingly shaped bottom structure of a container). The examiner interprets the bottom surface to be the base of the sample carrier 1, and the upper surface to be part of the second insert portion positioned in the recess.
Regarding claim 9, Geier teaches the sample basket in accordance with claim 8, wherein the basket bottom surface forms features interacting with a component of the analysis system to locate the basket with respect to the analysis system (Geier; Fig. 1, 2). The Applicants do not define the features, and the limitation “interacting with a component of the analysis system to locate the basket with respect to the analysis system” is interpreted as intended use and/or functional language. The Courts have held that the manner in which a claimed apparatus is intended to be employed does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). A functional recitation 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. See MPEP § 2114. The Examiner notes that the lid orients the basket bottom in the direction that would be accessible by the analysis system.
Regarding claim 10, Geier teaches the sample basket in accordance with claim 8, wherein the basket further comprises an upstanding sensor pin affixed to the basket base upper surface for interacting with the robot manipulator (Geier; Fig. 1; page 12, para [3]; handle 5). The handle is fixed to basket to be lifted by a user. The base upper surface is interpreted to comprise the walls and insert portions.
Regarding claim 13, Geier teaches the sample basket in accordance with claim 7, further comprising the first plurality equal to seven (Geier; Fig. 5). As seen in Fig. 5, any number of containers may be inserted into the openings, thus one of ordinary skill in the art is capable of positioning only seven containers.
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 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 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Geier in view of Komann et al (US 20190298610 A1; hereinafter “Komann”).
Regarding claim 11, Geier teaches the sample basket in accordance with claim 7, with the plurality of locating pins.
Geier does not teach the plurality of locating pins is formed by a first set of pins and a second set of pins, the first set of pins being relatively longer than the second set of pins, the first set of pins interacting with a notch formed by the magazine base and the first and second sets of pins engaged with the outer perimeter of the magazine base to locate the magazines.
However, Komann teaches an analogous art of a holding structure for a plurality of containers (Komann; Abstract) comprising a first set of pins and a second set of pins (Komann; Fig. 1; positioning cylinder 20 is interpreted as the first set of pins and the separating webs is interpreted as the second set of pins), the first set of pins being relatively longer than the second set of pins (Komann; Fig. 1), the first set of pins interacting with a notch formed by the magazine base (Komann; Fig. 5A, 5B) and the first and second sets of pins engaged with the outer perimeter of the magazine base to locate the magazines (Fig. 5B). The cylinders are separated and held within the receptacles as seen in Fig. 5B. It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the second insert portion for Geier to comprise the first set of pins and the second set of pins as taught by Komann, because Komann teaches that the positioning cylinders and the separation webs reinforce the holding structure and prevents direct contact between the containers within the receptacles (Komann; para [34]).
Regarding claim 12, modified Geier teaches the sample basket in accordance with claim 11 (the second insert portion Geier is modified to comprise the first set of pins and the second set of pins as taught by Komann discussed above in claim 11) of further comprising the first set of pins adapted to be engaged by a handle removable affixed to the first set of pins for enabling transporting of the basket. The limitation is interpreted as intended use and/or functional language. The Courts have held that the manner in which a claimed apparatus is intended to be employed does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). A functional recitation 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. See MPEP § 2114. The sample basket of modified Geier teaches all of the structural limitations of the claim and thus is configured for and capable of being engaged by a handle removable affixed to the first set of pins for enabling transporting of the basket.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Austin Q Le whose telephone number is (571)272-7556. The examiner can normally be reached Monday - Friday 9am - 5pm.
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/A.Q.L./Examiner, Art Unit 1796 /DUANE SMITH/ Supervisory Patent Examiner, Art Unit 1759