FINAL OFFICE ACTION
This application has been assigned or remains assigned to Technology Center 1700, Art Unit 1774 and the following will apply for this application:
Please direct all written correspondence with the correct application serial number for this application to Art Unit 1774.
Telephone inquiries regarding this application should be directed to the Electronic Business Center (EBC) at http://www.uspto.gov/ebc/index.html or 1-866-217-9197 or to the Examiner at (571) 272-1139. All official facsimiles should be transmitted to the centralized fax receiving number (571)-273-8300.
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/Restriction Requirement
Applicant’s election without traverse of GROUP II - claims 10-12 (tubing assembly) in the reply filed on 17 FEB 2026 is acknowledged.
Claims 1-9 and 13-14 are thereby withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in said reply.
Priority
Acknowledgment is made of applicant's claim for priority based on an application filed in EPO on 8 JULY 2022. It is noted, however, that the file is lacking a certified copy of the application as required by 35 U.S.C. § 119.
Specification
The substitute Abstract of the Disclosure is objected to because:
the implied phrase “is disclosed herein” is improper but is otherwise approved for content.
Correction is required. See MPEP § 608.01(b):
“[The abstract] should avoid using phrases which can be implied, such as, "This disclosure concerns," "The disclosure defined by this invention," "This disclosure describes," etc.”
The revised title of the invention is approved.
Claim Rejections - 35 U.S.C. § 112(b)
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.
The inquiry during examination is patentability of the invention as the inventor or a joint inventor regards such invention. If the claims do not particularly point out and distinctly claim that which the inventor or a joint inventor regards as his or her invention, the appropriate action by the examiner is to reject the claims under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. In re Zletz, 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989).
Claims 10 and 15-16 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or joint inventor regards as the invention.
In the instant application, the preambles of claims 10 and 15-16 recite the elected “tubing assembly” and establishes that the subcombination of this tubing assembly is being claimed and the nonelected retaining ring is only functionally recited. The scope of the claims is clear as long as no further mention of the retaining ring appears in the claims, or the bodies of the claims refer to the retaining ring in a functional manner. A question arises as to whether the claims recite a combination or subcombination when the retaining ring is positively recited within the bodies of the claims wherein an inconsistency develops in the claims. The preamble indicates a subcombination of the tubing assembly, while in the bodies of one or more claims, there is at least one occurrence of a positive recital of structure indicating that the combination of the tubing assembly and retaining ring is being claimed. It is not clear if Applicant’s intent is to claim merely the tubing assembly or the tubing assembly in combination with the retaining ring.
Claims 10 and 15-16 are therefore inconsistent and indefinite under 112(b) because the preambles of the claims recite the subcombination (the tubing assembly) for use with the combination (the tubing assembly in combination with the retaining ring) yet the elements of the tubing assembly and retaining ring are positively claimed in structural combination in the bodies of the claims. If the elements of the invention are claimed in combination in the bodies of the claims, the preambles must also claim them in combination or the subject matter of the preambles would not be considered consistent with limitations recited in the bodies of the claim rendering the scope of the claims indefinite.
In the instant case, it is not clear as to whether the claims are intended to be combination claims of the tubing assembly and retaining ring or intended to be subcombination claims of the tubing assembly only. The question has arisen based on the present claiming of the " each feed hose at a first end directly connected to the main hose via a respective notch of a corresponding retaining ring arrangement” (claim 10); “the retaining ring arrangement comprising a plurality of notches, wherein each notch is configured for receiving a respective a feed hose of the plurality of feed hoses” (new claim 15); and “wherein a spacing between the connection of the first feed hose and the second feed hose to the main hose is substantially equal to a length of an arc between a centre of two rotationally adjacent notches in the retaining ring arrangement” (claim 16). Since the claimed hoses being connected via a notch of the retaining ring, the notches each receiving a feed hose, and the spacing of the hoses is clearly a function of the cooperation between the subcombination of the tubing assembly and the required presence of the retaining ring, it appears that there are several occurrences of a positive recital of structure indicating that the combination of the tubing assembly and retaining ring is being claimed which renders the scope of the claims indefinite.
New claim 16: A claim may be rendered indefinite by reference to an object that is variable. For example, the Board has held that a limitation in a claim to a bicycle that recited “said front and rear wheels so spaced as to give a wheelbase that is between 58 percent and 75 percent of the height of the rider that the bicycle was designed for” was indefinite because the relationship of parts was not based on any known standard for sizing a bicycle to a rider, but on a rider of unspecified build. Ex parte Brummer, 12 USPQ2d 1653 (Bd. Pat. App. & Inter. 1989). Claim 16 is of indeterminate scope since it is unclear what hose spacings are included or excluded by the claim language. Thus, the metes and bounds of this claim is so unclear as to obscure the specific subject matter the claim encompasses. Since the arc between a center of adjacent notches in an effectively unclaimed retaining ring arrangement a variable at any given time, the recited spacings can be deemed a reference to an object that is variable (i.e., the locations of the notches in the “retaining ring” which forms no part of the elected tubing assembly), thus claim 12 is indefinite as relating the spacings to an undetermined/unspecified variable (see MPEP 2173.05(b)). A claim that requires the exercise of subjective judgment without restriction may render the claim indefinite. In re Musgrave, 431 F.2d 882, 893 (CCPA 1970). Claim scope cannot depend solely on the unrestrained, subjective opinion of a particular individual purported to be practicing the invention. Datamize, LLC v. Plumtree Software, Inc. 417 F.3d 1342, 1350 (Fed. Cir. 2005). Since claim 12 relies upon subjective judgment or opinion to determine what spacings are either sufficient or insufficient to meet the requirements of this claim, this claim is of wholly indeterminate scope.
Claim 10, line 10: “the second feed hose” lacks antecedent basis.
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 terms used in this respect are given their broadest reasonable interpretation in their ordinary usage in context as they would be understood by one of ordinary skill in the art, in light of the written description in the specification, including the drawings, without reading into the claim any disclosed limitation or particular embodiment. See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
The Examiner interprets claims as broadly as reasonable in view of the specification, but does not read limitations from the specification into a claim. Elekta Instr. S.A.v.O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000). "A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. Inc. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987).
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness." In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983). See MPEP 2112.
The claims are being treated on the merits by considering the elected claims being drawn to the subcombination of the tubing assembly only. The claimed features of the retaining ring in claims 10 and 15-16 are not germane to the patentability of the elected tubing assembly subcombination, itself. If Applicant desires the structural features of the retaining ring and tubing assembly to be considered for patentability, they must be claimed in combination, although this would be outside the scope of the elected invention. Shifts in invention after action(s) on the merits are generally NOT permitted per MPEP 819.
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.
Claims 10 and 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 96/33023 that discloses the subcombination of a tubing assembly in FIGURE 18 including a main hose 1121; a plurality of sample containers 1104; a plurality of feed hoses 1114 having a first end connected to the main hose 1121; wherein a different sample container 1104 of the plurality of sample containers 1104 is directly connected to a second end of each feed hose 1114 of the plurality of feed hoses 1114, the second end being opposite to the first end, and wherein a first feed hose 1114 of the plurality of feed hoses 1114 is connected to the main hose 1121 and the second feed hose 1114 of the plurality of feed hoses 1114 is connected to the main hose 1121 adjacent to the connection of the first feed hose 1114 as seen in Figure 18, since the feed hoses 1114 are connected to the main hose 1121 adjacent to each other in seriatim - Figure 18; and the feed hoses 1114 being spaced apart by a distance as seen in Figure 18.
Claims 10 and 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 85/02561 that discloses the subcombination of a tubing assembly in FIGURE 13 including a main hose 76; a plurality of sample containers 78, 80, 82, 84, and 85; a plurality of feed hoses (unlabeled) having a first end connected to the main hose 76; wherein a different sample container of the plurality of sample containers 78, 80, 82, 84, and 85 is directly connected to a second end of each feed hose of the plurality of feed hoses 78, 80, 82, 84, and 85, the second end being opposite to the first end, and wherein a first feed hose of the plurality of feed hoses 78, 80, 82, 84, and 85 is connected to the main hose 76 and the second feed hose of the plurality of feed hoses 78, 80, 82, 84, and 85 is connected to the main hose 76 adjacent to the connection of the first feed hose as seen in Figure 13, since the feed hoses are connected to the main hose 76 adjacent to each other in seriatim - Figure 13; and the feed hoses being spaced apart by a distance as seen in Figure 13.
Claims 10 and 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by BALLHAUSE et al. (US 2021/0016296 A1) that discloses the subcombination of a tubing assembly in FIGURE 11 including a main hose 72G, 72E, and/or 72F; a plurality of sample containers 700; a plurality of feed hoses 72A, 72B, 72C, 72D having a first end connected to the main hose at 77; wherein a different sample container 700 of the plurality of sample containers 700 is directly connected to a second end of each feed hose of the plurality of feed hoses 78, 80, 82, 84, and 85; the second end being opposite to the first end; and wherein a first feed hose 72A of the plurality of feed hoses is connected to the main hose at 77 and the second feed hose 72B of the plurality of feed hoses is connected to the main hose at 77 thus being adjacent to the connection of the first feed hose as seen in Figure 11 since this connection at 77 is coextensive; and the feed hoses 72A-72D being spaced apart by a distance as seen in Figure 11.
Allowable Subject Matter
No elected claims stand allowed.
Response to Amendment
Applicant's arguments filed 17 JUNE 2026 have been fully considered but they are not persuasive. Since Applicant persists in effectively claiming the elected subcombination of a tubing assembly by including positively claimed features of the nonelected retaining ring, the combination/subcombination rejection under 35 USC 112(b) is warranted. Since the subcombination is set forth by the claims as argued above, the features of the retaining ring are not germane to the patentability of the tubing assembly subcombination, contrary to Applicant’s remarks on this issue. First and second feed hoses of the plurality of feed hoses of the prior art tubing assemblies are connected to the main hose in the broad manner set forth in amended claim 10, as explained in the rejections, contrary to Applicant’s conclusions on this issue.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. § 1.136(a).
Per Rule 1.116(b)(3): “An amendment touching the merits of the application or patent under reexamination may be admitted upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.” Thus, an amendment after final lacking such showing will be denied entry.
A SHORTENED STATUTORY PERIOD FOR RESPONSE TO THIS FINAL ACTION IS SET TO EXPIRE THREE MONTHS FROM THE DATE OF THIS ACTION. IN THE EVENT A FIRST RESPONSE 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 EXTENSION FEE PURSUANT TO 37 C.F.R. § 1.136(a) WILL BE CALCULATED FROM THE MAILING DATE OF THE ADVISORY ACTION. IN NO EVENT WILL THE STATUTORY PERIOD FOR RESPONSE EXPIRE LATER THAN SIX MONTHS FROM THE DATE OF THIS FINAL ACTION. ANY RESPONSE FILED AFTER THE MAILING DATE OF THIS FINAL REJECTION WILL BE SUBJECT TO THE PROVISIONS OF MPEP 714.12 AND 714.13 - NO EXCEPTIONS.
NOTE: The examiner of record follows the interview after-final policy set forth in MPEP 713.09:
Normally, one interview after final rejection is permitted. However, prior to the interview, the intended purpose and content of the interview [agenda] should be presented briefly, preferably in writing. Such an interview may be granted if the examiner is convinced that disposal or clarification for appeal may be accomplished with only nominal further consideration. Interviews merely to restate arguments of record or to discuss new limitations which would require more than nominal reconsideration or new search should be denied. (emphasis added)
The agenda will be made of record per PTO policy.
New USPTO policy limits time for interviews to one per new application or RCE (utility), when during prosecution, the examiner conducts an interview. More than one interview and additional time will only be granted if it is ensured “that the interviews are being used to advance prosecution”.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES COOLEY whose telephone number is (571)272-1139. The examiner can normally be reached M-F 9:30 AM - 6:00 PM.
Examiner interviews are available via telephone, in-person, 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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CLAIRE X. WANG can be reached at 571-272-1700. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHARLES COOLEY/ Examiner, Art Unit 1774
26 JUNE 2026
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