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 .
Claim Interpretation
In the patentability analysis of the instant apparatus claims, aspects or limitations the examiner interprets as functional intended use are generally italicized whereas aspects interpreted as structural components are normally bolded. The bold font and italics are shown when the structure and function are initially introduced though not necessarily repeated, particularly in dependent claims. The examiner applies this formatting for both the examiner and applicant’s convenience. However, absent the referenced typestyles, the patentability analysis will still be clear regarding which limitations the examiner interprets as structural versus functional.
Apparatus type claims require only the recited structural components, although structured with physical features that can perform the stated functions or the intended uses. Functional limitations state either an intended use, process, or operation. The manner of operating a device, apparatus or system, or what the apparatus/system does. Apparatus claims cover what a device is, not what a device does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). Also, a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Of course, in the patentability analysis of the instant apparatus claims, the functional features have not been ignored and Applicant can and should employ such language where appropriate and helpful. However, if a prior art structure is capable of performing the intended use, or if such apparatus can operate in the manner described, then it meets the claim limitation (MPEP §§ 2114, 2173.05(g)).
In summary, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Examiner's referral to Applicant's specification will generally pertain to the corresponding PG published application, if available, otherwise the original specification. The below patentability analysis provides one or more interpretations and claim mappings of the claimed structures and/or limitations although other interpretations may be possible. In the patentability analysis, the Office applies the broadest reasonable interpretation (BRI) consistent with the specification. However, specific limitations from the specification are not read into the claims. See MPEP §§2111, 2173.01 I.
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
i. “connection member” as recited in claims 2, 3, 5, 8 and 9 has been interpreted as corresponding to a bar, lever, link or structural equivalents thereof (see para [0020] et seq. of applicant’s corresponding US publication 2024/0382967; hereinafter ‘967).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1- 14 and 20 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, last line and claim 8, last line recites “lifting gear”. This lacks antecedent basis in the claims.
Claims 10 and 20, recite the movement/engagement of the first gear and the second gear is staggered in time. It is not clear from the claims what this corresponds to structurally. These are vague and indefinite. The examiner recommends applicant recite the particular configuration between the gears to stagger the movement in time.
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 (i.e., changing from AIA to pre-AIA ) 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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Pedina (WO 02/078849) in view of Kadlec (US 6,327,888).
Regarding claim 1, Pedina teaches an apparatus for controlled separation of a labware (microtiter plate 124) from a thermal block (Pedina teaches an ejection arrangement ensures that after a reaction or a number of reactions have been carried out, the container initially held in its operating position on the temperature control block is at least partially detached from the temperature control block and can subsequently be removed much more easily than this is the case with the prior art).
Pedrina teaches a thermal block (temperature control block 12) having a slot (18/20/22/24 through an upper surface and along a lateral edge thereof “through-holes with a slot-like configurations; see Fig. 1).
Pedina teaches an ejection slide 94 (equivalent to a gear rack) including a set of teeth 114, 116 that are linearly aligned along an upper edge thereof, the ejection slide being oriented to extend adjacent the lateral edge of the thermal block (see Fig. 4);
an ejection member 100 positioned to engage the set of teeth (ejection sections 102, 104) to provide lateral movement of the ejection slide; and
a lifting pin (corresponds to leaf spring 108) associated with the ejection slide, the lifting pin being disposed proximate to the lateral edge of the thermal block such that, in a first position, the lifting pin is located resting in the slot, and in a second position, the lifting pin is located above the thermal block, wherein, when the gear rack is moved, the gear rotates, causing the lifting pin to be lifted from the first position to the second position, such that when a labware is placed on the thermal block, the lifting gear lifts the labware away from the thermal block.
Pedina does not disclose the specific configuration of gear racks, gears, and lifting pin to lift the labware from a first position (inside a thermal block) to a second position (outside the of the thermal block).
In the related art of providing controlled lifting of a workpiece 16 from a first position (on lower die 13b die station (Fig. 11) to a second position above the lower 13b die station (Fig. 15)), Kadlec teaches a transfer device including a gear rack 78 including a set of teeth (see Fig. 1b) that are linearly aligned along an upper edge thereof, the gear rack being oriented to extend adjacent the lateral edge of the support surface 90; a gear 76 positioned to engage the set of teeth such that the gear rotates with lateral movement of the gear rack (see Fig. 1b); and a lifting pin 15 associated with the gear, the lifting pin extending from a position that is offset from a central axis 68 of the gear and toward the lower die 13b, the lifting pin being disposed proximate to the lateral edge of the block (lower die 13b) such that, in a first position, the lifting pin is located resting in the slot (formed in Fig. 3 between the upper die 13a and lower die 13b, and in a second position the lifting pin is located above the lower die 13b (see Figs. 13, 14), wherein, when the gear rack 78 is moved, the gear 76 rotates, causing the lifting pin 15 to be lifted from the first position to the second position Fig. 11/12 to Fig. 13/14, such that when a workpiece 16 is placed on the lower die 13b, the lifting gear lifts the workpiece away from the lower die 13b station.
Accordingly, it would have been obvious to one of ordinary skill in the art at the time the claimed invention was effectively filed to substituted the separation and lifting device of Pedina with the particular gear lifting system, as taught by Kadlec, since Kadlec recognizes that this configuration of gears avoids abrupt changes in velocity that causes undesirable stresses to component parts of the transfer apparatus, eventually causing misalignment of such components and thereby compromising the efficiency of transfer operations performed thereby (see Background of Invention section of Kadlec).
Note: the examiner recognizes that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, while the lifting device of Kadlec is not directed to use in the thermal cycling art, Kadlec is directed to providing lifting of a workpiece that using a configuration of gears that avoids abrupt changes in velocity in parts of the transfer device that would make it beneficial to smoothly lift the microwell from the thermal block in Pedina for the expected benefit of preventing spilling the microwell contents during lifting and subsequent removal by the user or automated means.
Regarding claim 2, modified Pedina teaches a connection member 80 that couples a lid 36 of the thermocycler to the gear rack (ejection slide 94; see Fig. 5).
Regarding claim 3, modified Pedina teaches the connection member 80 is coupled to the lid 36 such that an angular rotation of the lid causes a translational movement of the gear rack (ejection slide 94; see Figs. 4-6).
Regarding claims 4, 11 and 18, Kadlec teaches a pair rotary cam 74 disposed between the gear 76 and the lifting pin 15 (see Figs.2, 14 and 15).
Regarding claim 5, modified Pedina teach a connection member 80 connected to the gear rack in a vertically oriented elongated guide aperture 76.
Regarding claims 6 and 12, the gears of Kadlec would be fixed axially (embedded in the lateral edge of the with respect to the thermal block 90 in modified Pedina, see Fig. 2 of Kadlec where two sets of lifting mechanism straddle the outside of the die station and workpiece).
Regarding claim 7, Kadlec teaches the gear rack includes an elongated aperture (slots 210, 212, Fig. 1b) that extends in a length direction of the gear rack.
Regarding claim 8, Pedina teaches an apparatus for controlled separation of a labware (microtiter plate 124) from a thermal block 12 (Pedina teaches an ejection arrangement ensures that after a reaction or a number of reactions have been carried out, the container initially held in its operating position on the temperature control block is at least partially detached from the temperature control block and can subsequently be removed much more easily than this is the case with the prior art).
Pedrina teaches a thermal block (temperature control block 12) having a slot (18/20/22/24 through an upper surface and along a lateral edge thereof “through-holes with a slot-like configurations; see Fig. 1).
Pedina teaches a gear rack 94 (ejection slide) including a set of teeth 114, 116 that are linearly aligned along an upper edge thereof, the ejection slide being oriented to extend adjacent the lateral edge of the thermal block (see Fig. 4);
an ejection member 100 positioned to engage the set of teeth (ejection sections 102, 104) to provide lateral movement of the ejection slide;
connection member 80 configured to couple with the gear rack 94 to a lid 36 of the thermocycler (see Fig. 3); and
a lifting pin (corresponds to leaf spring 108) associated with the ejection slide, the lifting pin being disposed proximate to the lateral edge of the thermal block such that, in a first position, the lifting pin is located resting in the slot, and in a second position, the lifting pin is located above the thermal block, wherein, when the gear rack is moved, the gear rotates, causing the lifting pin to be lifted from the first position to the second position, such that when a labware is placed on the thermal block, the lifting gear lifts the labware away from the thermal block.
Pedina does not disclose the specific configuration of gear racks, gears, and lifting pin to lift the labware from a first position (inside a thermal block) to a second position (outside the of the thermal block).
In the related art of providing controlled lifting of a workpiece 16 from a first position (on lower die 13b die station (Fig. 11) to a second position above the lower 13b die station (Fig. 15)), Kadlec teaches a transfer device including a gear rack 78 including a set of teeth (see Fig. 1b) that are linearly aligned along an upper edge thereof, the gear rack being oriented to extend adjacent the lateral edge of the support surface 90; a gear 76 positioned to engage the set of teeth such that the gear rotates with lateral movement of the gear rack (see Fig. 1b); and a lifting pin 15 associated with the gear, the lifting pin extending from a position that is offset from a central axis 68 of the gear and toward the lower die 13b, the lifting pin being disposed proximate to the lateral edge of the block (lower die 13b) such that, in a first position, the lifting pin is located resting in the slot (formed in Fig. 3 between the upper die 13a and lower die 13b, and in a second position the lifting pin is located above the lower die 13b (see Figs. 13, 14), wherein, when the gear rack 78 is moved, the gear 76 rotates, causing the lifting pin 15 to be lifted from the first position to the second position Fig. 11/12 to Fig. 13/14, such that when a workpiece 16 is placed on the lower die 13b, the lifting gear lifts the workpiece away from the lower die 13b station.
Accordingly, it would have been obvious to one of ordinary skill in the art at the time the claimed invention was effectively filed to substituted the separation and lifting device of Pedina with the particular gear lifting system, as taught by Kadlec, since Kadlec recognizes that this configuration of gears avoids abrupt changes in velocity that causes undesirable stresses to component parts of the transfer apparatus, eventually causing misalignment of such components and thereby compromising the efficiency of transfer operations performed thereby (see Background of Invention section of Kadlec).
Note: the examiner recognizes that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, while the lifting device of Kadlec is not directed to use in the thermal cycling art, Kadlec is directed to providing lifting of a workpiece that using a configuration of gears that avoids abrupt changes in velocity in parts of the transfer device that would make it beneficial to smoothly lift the microwell from the thermal block in Pedina for the expected benefit of preventing spilling the microwell contents during lifting and subsequent removal by the user or automated means.
Regarding claim 9, modified Pedina teaches an end of the gear rack 92 coupled to the connection member 80 has a profile shape that corresponds to a profile shape of the connection member, whereby surface engagement between the end of the gear rack and the connection member causes the gear rack to shift laterally (see Fig. 5).
Regarding claim 10 and 20, as best understood, Kadlec teaches the set of teeth is a first set of teeth, and the gear is a first gear 76, wherein the gear rack further includes a second set of teeth located downstream of the first gear (claim does not require a structural difference between the first and second teeth), wherein the apparatus further comprises a second gear 76, and wherein movement of the first gear and the second gear is staggered in time (which has been interpreted as having different lateral locations on the gear rack 78 (see Fig. 1b).
Regarding claim 13, Kadlec teaches the gear rack includes a plurality of apertures that receive respective guide pins 70 securing the gear rack in position through the plurality of apertures (see Figs. 1 and 3).
Claim 14 is considered a functional limitation which does not limit the apparatus claims, however, the guide pins 70 of Kadlec facilitate stable translational motion of the gear rack as the set of teeth engages the gear).
Regarding claim 15, as discussed above the combination of Pedina and Kadlec teaches an apparatus for controlled separation of a labware from a thermal block, the apparatus comprising a pair of gear racks, a pair of gears, and a pair of lifting pins.
Regarding claim 16, modified Pedina teaches comprising a lid 36 connected to the pair of gear racks (as discussed above).
Claim 17 is considered a functional limitation, which does not limit the apparatus claims, however, modified Pedina teaches when the lid is opened, the pair of gear racks moved laterally.
Regarding claim 18, Kadlec teaches a pair of rotary cams 74 disposed between the pair of lifting pins and the pair of gears see Fig. 1b.
Regarding claim 19, Kadlec teaches a pair of sets of linearly aligned teeth 78, respectively, disposed along upper edges of the pair of gear racks to engage the pair of gears 76 (see Fig. 1b).
Citations to art
In the above citations to documents in the art, an effort has been made to specifically cite representative passages, however rejections are in reference to the entirety of each document relied upon. Other passages, not specifically cited, may apply as well.
Conclusion
No claims are allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
i. Schneedeli (US 6,197,575) which teaches a thermal cycler capable of performing amplification of nucleic acids. This thermal cycler provides for the fully automatic positioning of its movable lid, which can be placed in two positions. The lid is also suitable for heating a plurality of reaction vessels and for shielding them from light from the environment. In addition, the thermal cycler also includes a thermal block having a plurality of chambers each of which receives the lower part of a reaction vessel. Finally, the thermal cycler has a lid carrier for moving the lid from the first position to the second position and vice versa.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to P. Kathryn Wright whose telephone number is (571)272-2374. The examiner can normally be reached between 9:30am-7pm EST.
Examiner interviews are available via telephone and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
E-mail communication Authorization
Per updated USPTO Internet usage policies, Applicant and/or applicant’s representative is encouraged to authorize the USPTO examiner to discuss any subject matter concerning the above application via Internet e-mail communications. See MPEP 502.03. To approve such communications, Applicant must provide written authorization for e-mail communication by submitting the following statement via EFS Web (using PTO/SB/439) or Central Fax (571-273-8300):
Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.
Written authorizations submitted to the Examiner via e-mail are NOT proper. Written authorizations must be submitted via EFS-Web (using PTO/SB/439) or Central Fax (571-273-8300). A paper copy of e-mail correspondence will be placed in the patent application when appropriate. E-mails from the USPTO are for the sole use of the intended recipient, and may contain information subject to the confidentiality requirement set forth in 35 USC § 122. See also MPEP 502.03.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Capozzi can be reached on 571-270-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/P. Kathryn Wright/Primary Examiner, Art Unit 1798