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 .
Status of Claims
Applicant’s reply filed 4/22/26 is acknowledged. Claims 33-37 are added. Claims 1-37 are pending and are under examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/22/26 was acknowledged. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Reply
Drawings
In light of applicant’s remarks in the reply, the prior drawing objection is withdrawn, and a new objection follows.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the plurality of first standoffs located at a bottom surface of the stand configured to separate the bottom surface of the stand and a top surface of the flask stirrer base (claim 1) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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 Objections
Claim 8 is objected to because of the following informalities: an eight standoff should be amended to an eighth standoff. Appropriate correction is required.
Claim Rejections - 35 USC § 112
In light of applicant’s claim amendments and arguments, the prior art rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, are withdrawn except for the following below, and new rejections follow.
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 1-32 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 1 is rejected because “a plurality of first standoffs . . . further comprising a first standoff and a second standoff” is unclear and raises an antecedent basis issue. The Office recommends amending the rejected claim language to “a plurality of a first set of standoffs . . . , wherein the plurality of the first set of standoffs comprises a first standoff and a second standoff,”. See also claims 2, 4, 5, 7, 13, 15, 18, 22.
Claim 1 is rejected because “a plurality of first standoffs located at a bottom surface of the stand configured to separate the bottom surface of the stand and a top surface of the flask stirrer base, further comprising a first standoff and a second standoff” is unclear. The structural relationship between the first and second standoffs, and the stand is unclear.
Claim 1 is rejected because “wherein when placed on the flask stirrer base” is unclear. What is placed on the flask stirrer base?
Claim 1 is rejected because “wherein when placed on the flask stirrer base, thereby creating a first air gap is created between the first and second standoffs, the bottom surface of the stand, and the top surface of the flask stirrer base that allows air to flow straight through the first air gap in a first direction” is unclear. Because the flask stirrer base is not positively claimed, the claim language fails to particularly point out and distinctly claim how the “first air gap is created” without requiring the flask stirrer base.
Claim 2 is rejected for the following reasons: 1) the plurality of first standoffs is unclear; applicant should amend to “the plurality of the first set of standoffs”; 2) “when placed on the flask stirrer base” is unclear because it is unclear what is being placed on the flask stirrer base; 3) because the flask stirrer base is not positively claimed, the claim language fails to particularly point out and distinctly claim how the “second air gap is created” without requiring the flask stirrer base.
Claims 4, 18 and 28 are rejected because “the first standoffs” is unclear. See explanation above. Applicant should amend to “the plurality of the first set of standoffs”.
Claims 5, 13, 15 and 22 are rejected because “the plurality of first standoffs” is unclear. See explanation above. Applicant should amend to “the plurality of the first set of standoffs”.
Claim 7 is rejected for the following reasons: 1) the plurality of first standoffs is unclear, and is recommended to be amended to “the plurality of the first set of standoffs”; 2) a plurality of second standoffs is unclear and raises an antecedent basis issue, claim language should be amended to “a plurality of a second set of standoffs”; 3) the structural relationship between the fifth and sixth standoffs, and the platform is unclear; 4) when placed on the flask stirrer base” is unclear because it is unclear what is being placed on the flask stirrer base; 5) because the flask stirrer base is not positively claimed, the claim language fails to particularly point out and distinctly claim how the “third air gap is created” without requiring the flask stirrer base.
Claim 8 is rejected for the following reasons: 1) the plurality of second standoffs is unclear, and is recommended to be amended to “the plurality of the second set of standoffs”; 2) when placed on the flask stirrer base” is unclear because it is unclear what is being placed on the flask stirrer base; 3) because the flask stirrer base is not positively claimed, the claim language fails to particularly point out and distinctly claim how the “third air gap is created” without requiring the flask stirrer base; 4) “the flask stirrer based” raises an antecedent basis issue.
Claims 10, 19, 25, 26 and 29 are rejected because “the second standoffs” is unclear. See explanation above. Applicant should amend to “the plurality of the second set of standoffs”.
Claims 11, 13 and 23 are rejected because “the plurality of second standoffs” is unclear. See explanation above. Applicant should amend to “the plurality of the second set of standoffs”.
The prior rejection of claims 3-4, 9-10 and 27 is modified and maintained. The term, “thermal conductivity” deals with a material’s ability to conduct heat. Claim 1 is directed to an “apparatus,” i.e., a structure, and as such, the limitations of the claim serve to further define the structure. Here, the claimed thermal conductivity of the material is not a structure in the sense of being a part or device within a structure. Furthermore, while applicant argues the thermal conductivity restricts the class of materials, the rejected claims do not positively claim any specific type of materials. 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).
Claim 27 is rejected because “a plurality of first standoffs comprising a first standoff and a second standoff” is unclear and raises an antecedent basis issue. The Office recommends amending the rejected claim language to “a plurality of a first set of standoffs comprising a first standoff and a second standoff”. See also claims 28, 35, 36.
Claim 27 is rejected because “a plurality of second standoffs” is unclear. See explanation above. Applicant should amend to “a plurality of a second set of standoffs”.
Claim 27 is rejected because the claim language fails to particularly point out and distinctly claim how the “second air gap is created” without requiring the flask stirrer base.
Claim 32 is rejected because “the at least one flask” raises an antecedent basis issue.
Claim 35 is rejected because “the plurality of first standoffs” is unclear and should be amended to “the plurality of the first set of standoffs”. Also, “1 inches” should be amended to “1 inch”.
Claim 36 is rejected because “a standoff of the plurality of first standoffs” and “the shape” raises an antecedent basis issue. Which standoff? The claim language, “the plurality of first standoffs” should be amended to “the plurality of the first set of standoffs”.
Claim 37 is rejected because “a standoff of the plurality of second standoffs” raises an antecedent basis issue. Which standoff? The claim language, “the plurality of second standoffs” should be amended to “the plurality of the second set of standoffs”.
Claim Interpretation
The Office asserts that terms and phrases like “configured to” and “wherein” constitute recitations of intended use language for purposes of examination. The Office asserts that in the examined claims reciting such “configured to” language, the claim language that follows such recitations does not necessarily denote structure MPEP 2173.05(g). The functional limitation was evaluated and considered, for what it fairly conveys to a person of ordinary skill in the art. Similarly, a “wherein” clause may have a limiting effect on a claim if the language limits the claim to a particular structure. MPEP 2111.04. The determination of whether a “wherein” clause is a limitation in a claim depends on the specific facts of the case. While all words in each claim are considered in judging the patentability of the claim language, including functional claim limitations, not all limitations provide a patentable distinction.
During patent examination, the examined claims must be given their broadest reasonable interpretation consistent with the specification, unless a term has been given a special definition in the specification (“BRI”). See MPEP 2111.
For examination purposes, the flask stirrer base will be considered intended use and/or functional claim language in light of applicant’s remark on p. 8 of 14 of the reply that the flask stirrer base is not being positively claimed
Prior Art Rejections
In light of applicant’s claim amendments, the prior art rejections are withdrawn, and new rejections follow.
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.
Claims 1, 2, 6-8, 12-14, 20, 21, 23, 24 and 33-37 are rejected under 35 U.S.C. 103 as being unpatentable over Visinoni et al. (“Visinoni,” US Pub. No. 2014/0339070, previously cited) in view of Joseph et al. (“Joseph,” US Pub. No. 2010/0009335, newly cited).
As to claim 1, Visinoni discloses a thermal separator apparatus for separating a flask (e.g., glass container) and a flask stirrer base comprising:
a stand (base of holder 65) having a top surface configured to support the flask containing a substance to be stirred by the flask stirrer base (heat-able plate 10; “configured to” is intended use claim language, see above); and
a plurality of first standoffs (at least the legs on one side of the holder, which is around positioning means 80 and 80’; [0039]) located at a bottom surface of the stand configured to separate the bottom surface of the stand (see bottom surface of holder) and a top surface of the flask stirrer base (see top surface of heat-able plate), further comprising a first standoff and a second standoff (the legs on one side of the holder in fig. 3);
wherein when placed on the flask stirrer base, a first air gap (see empty volume between stand and base) is created between the first and second standoffs, and the bottom surface of the stand, and the top surface of the flask stirrer base that allows air to flow straight through the first air gap in a first direction (see claim interpretation above for “wherein” paragraph; and 112 rejections above for the first air gap).
Regarding claim 1, while Visinoni discloses a first air gap, Visinoni does not specifically disclose the first air gap is created including the bottom surface of the flask stirrer base. Because the flask stirrer base is not positively claimed, it is considered an intended use and/or functional limitation. Joseph discloses in e.g., [0085] et seq., the plate (e.g., individual wells of the plate, or portions of the wells) are thermally isolated by the inclusion of an air gap surrounding the plate or each well. An air gap helps to thermally isolate the wells from the surroundings. It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include an air gap because an air gap helps to thermally isolate at least portions of the plate from the surroundings ([0085] of Joseph).
As to claim 2, the combination of Visinoni and Joseph disclose the first air gap as shown in empty volume between stand and base in fig. 3-5 of Visinoni. For the second air gap, see the combination of Visinoni and Joseph. For motivation statements, see above. For “air to flow . . . second direction,” this is considered intended use and/or functional claim language.
As to claim 6, the combination of Visinoni and Joseph disclose there is no vertical voids that connect the first air gap to the top surface of the stand, as shown in figs. 3-5 of Visinoni.
As to claim 7, the combination of Visinoni and Joseph disclose a platform having a top surface (see sidewall(s) and flaps of holder 65 in figs. 3-5 of Visinoni) configured to support the first standoffs. Visinoni discloses a plurality of first standoffs and Joseph discloses a plurality of second standoffs comprising fifth and sixth standoffs. See plurality of legs of 1807 in fig. 18 of Joseph. It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include additional standoffs because it would provide more stability for the platform. The claim language, “allows air to flow straight through the second air gap in a third direction” is considered intended use and/or functional claim language. For the third air gap, see the combination of Visinoni and Joseph. For motivation statement, see above.
As to claim 8, the combination of Visinoni and Joseph disclose the plurality of second standoffs comprising a seventh and eighth standoffs (see plurality of legs of 1807 in fig. 18 of Joseph, and a third air gap. For motivation statements, see above. For “air to flow . . . fourth direction,” this is considered intended use and/or functional claim language.
As to claim 12, the combination of Visinoni and Joseph disclose there is no vertical voids that connect the first air gap to the second air gap, as shown in figs. 3-5 of Visinoni.
As to claim 13, the combination of Visinoni and Joseph disclose first and second standoffs are laterally offset, as shown in figs. 3-5 of Visinoni.
As to claims 14 and 20-21, the combination of Visinoni and Joseph disclose the claimed features in figs. 3-5 of Visinoni.
As to claim 23, the combination of Visinoni and Joseph disclose second standoffs integrally formed with the platform, as shown in figs. 3-5 of Visinoni.
As to claim 24, the combination of Visinoni and Joseph disclose engagement/positioning means 25, 25’ in fig. 2 of Visinoni.
As to claim 34, the combination of Visinoni and Joseph disclose a stepped down portion in fig. 18 of Joseph. It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include a stepped down portion to provide stability to the stand.
As to claim 35, the combination of Visinoni and Joseph disclose the claimed height range in [0055] of Joseph. it would appear that such dimensions are result-effective variables. It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to determine, through routine experimentation, the claimed dimensions because discovering the optimum or workable ranges involves only routine skill in the art.
As to claims 36 and 37, the combination of Visinoni and Joseph disclose the claimed shape in figs. 3-5 of Visinoni and [0055] et seq. of Joseph. It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to have the claimed quarter-circle shape because such a modification would be within the general skill of a worker in the art to select a particular shape on the basis of its suitability for the intended use as a matter of obvious design choice.
Claims 3-5 and 9-11, 22 are rejected under 35 U.S.C. 103 as being unpatentable over Visinoni in view of Joseph, and further in view of Kim et al. (“Kim,” WO 2016013770 A1, previously cited).
See Visinoni and Joseph above.
As to claims 3-5 and 9-11, the combination of Visinoni and Joseph disclose the claimed invention except Visinoni does not specifically disclose the stand and standoffs are made from materials with the claimed thermal conductivities and is made from polyoxymethylene. Kim discloses a multiplex PCR chip 200 in fig. 2 comprising a multiple plates, which include a first plate 210 made of polyoxymethylene. It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to have the stand and standoffs made from polyoxymethylene because it would be desirable to utilize an efficient heat transfer material. As for the claimed thermal conductivities, the combination of Visinoni and Kim properly read on the claimed thermal conductivities because Kim discloses the claimed polyoxymethylene, and thus, the properties of the claimed polyoxymethylene are properly disclosed. See MPEP 2112.01.
As to claim 22, the combination of Visinoni and Joseph disclose the claimed invention except Visinoni does not specifically disclose the first standoffs are fastened to the platform with non-metallic fasteners. Kim discloses the first, second and third plates are bonded together by various bonding methods applicable in the art, such as tape bonding. It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to have the first standoffs fastened to the platform with non-metallic fasteners, such as tape bonding, because it would be desirable to utilize a commonly known attachment mechanism that can withstand various temperatures.
Claims 15-19 and 25-33 are rejected under 35 U.S.C. 103 as being unpatentable over Visinoni in view of Joseph, and further in view of Hayman (US Pub. No. 2008/0056957, previously cited and cited in IDS).
See Visinoni and Joseph above.
As to claims 15-17 and 33, the combination of Visinoni and Joseph disclose the claimed invention, except Visinoni does not specifically disclose a plurality of substantially identical stand sets on top of the platform, which is at least four stand sets; and the top surface of each stand comprises a plurality of different concentric recesses with different diameters. Hayman discloses a plurality of substantially identical stand sets on top of the platform, which is at least four stand sets; and each stand comprises a plurality of different diameter recesses in [0034] et seq. It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to have a plurality of substantially identical stand sets on top of the platform, which is at least four stand sets; and each stand comprises a plurality of different diameter recesses because it would be desirable to have an arrangement capable of accommodating sets of differently sized glass reaction tubes or vial and supports one or more interchangeable reaction block wedges safely and snugly, all to enhance safety and allow excellent heat transfer ([0002] and [0007] of Hayman).
As to claims 18-19 and 28-29, the combination of Visinoni and Joseph disclose the claimed invention except Visinoni does not specifically disclose the claimed cross-sectional area comparisons, Visinoni discloses in figs. 3-5 the cross-sectional area of the stand is greater than the cross-sectional area of the first standoffs, and cross-sectional area of the platform is greater than the cross-sectional area of the second standoffs. Hayman discloses dimensions of each reaction block wedge, and base holder in [0035] et seq. It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to have the claimed cross-sectional area comparisons because it would appear that such dimensions are result-effective variables, and thus, it would be obvious to determine, through routine experimentation, the claimed dimensions because discovering the optimum or workable ranges involves only routine skill in the art.
As to claims 25-26, the combination of Visinoni and Joseph disclose the claimed invention except Visinoni does not specifically disclose the claimed vertical distance. Hayman discloses the vertical distance does not exceed 5 inches, or 1.5 inches in [0035] et seq. It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to have the claimed vertical distance because the claimed dimension would create a safe and effective heat transfer for the liquid samples within each vial and do not to interfere with the magnetic field, being generated from below the hot plate surface ([0008] of Hayman).
As to claim 27, the combination of Visinoni and Joseph disclose a stand (base of holder 65 of Visinoni); a platform having a top surface (see sidewall(s) and flaps of holder 65 in figs. 3-5 of Visinoni); a plurality of first standoffs comprising first and second standoffs located at a bottom surface of the stand (at least the legs on one side of the holder, which is around positioning means 80 and 80’; [0039] of Visinoni; the claim language, “allows air to flow straight through . . . first direction” is considered intended use and/or functional claim language); a plurality of second standoffs comprising third and fourth standoffs (see plurality of legs of 1807 in fig. 18 of Joseph; for motivation statement, see above); the claim language following “configured to” is considered intended use and/or functional claim language); a plurality of tabs (see engagement/positioning means 25, 25’ in fig. 2 of Visinoni); and the first and second standoffs are laterally offset (figs. 3-5 of Visinoni). As for the thermal conductivity, see 112 rejection above. This is considered an intended use and/or functional limitation. As for the plurality of stands, Visinoni does not specifically disclose a plurality of stands. Hayman discloses a plurality of substantially identical stand sets on top of the platform in [0034] et seq. It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to have a plurality of substantially identical stand sets on top of the platform because it would be desirable to have an arrangement capable of accommodating sets of differently sized glass reaction tubes or vial and supports one or more interchangeable reaction block wedges safely and snugly, all to enhance safety and allow excellent heat transfer ([0002] and [0007] of Hayman).
As to claims 30-31, the combination of Visinoni and Joseph disclosed the claimed features in figs. 3-5 of Visinoni.
As to claim 32, the combination of Visinoni and Joseph disclose a method of automatically stirring the contents of a flask while closely maintaining the temperature of the contents, the method comprising: providing an automatic stirring device having a base; providing a thermal separator apparatus according to claim 27 and placing it over the base of the stirring device; placing a flask on at least one of the plurality of stands of the thermal separator apparatus, the at least one flask have contents to be stirred and a stirrer magnetically coupled to the stirring device base; locating the automatic stirring device, the thermal separator apparatus and the at least one flask in a temperature-controlled incubator; and allowing air to circulate through the first and the second air gaps of the thermal separator apparatus. See figs. 2-5 and [0024] et seq. of Visinoni. However, Visinoni does not specifically disclose the claimed a plurality of stands in claim 27. Hayman discloses a plurality of substantially identical stand sets on top of the platform in [0034] et seq. It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to have a plurality of substantially identical stand sets on top of the platform because it would be desirable to have an arrangement capable of accommodating sets of differently sized glass reaction tubes or vial and supports one or more interchangeable reaction block wedges safely and snugly, all to enhance safety and allow excellent heat transfer ([0002] and [0007] of Hayman). See also MPEP 2112.02.
Response to Arguments
Applicant’s arguments with respect to claims 1-37 have been considered but are moot because of the new grounds of rejections.
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 LORE RAMILLANO JARRETT whose telephone number is (571)272-7420. The examiner can normally be reached Monday to Friday.
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/LORE R JARRETT/Primary Examiner, Art Unit 1797
6/27/2026
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