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 .
Priority
Acknowledgment is made of applicant's claim for domestic priority under 35 U.S.C. § 119(e).
Information Disclosure Statement
Note the attached PTO-1449 form submitted with the Information Disclosure Statement filed 16 JAN 2024.
Election/Restriction
Claims 4, 5, 6, 13, and 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention (method) and nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 6 AUG 2026 and in the non-responsive version. Elected claims 1-3, 7-12, and 14-17 are therefore treated on the merits below. The requirement is not in error and made final.
However, Applicant has traversed the requirement twice, with specious and trifling arguments such as “In this regard, Applicant does not believe that a complete search of the apparatus and kit of Group I cannot be made without searching the method of Group II. Consequently, the search of group Il's method claims would include a search in the place where Group I's apparatus and kit claims are primarily classified” and “Applicant respectfully submits that the examination of the full scope of the claimed species can be made without occasioning a serious search burden on the Patent Office. The search of one species would necessarily include the search of another species”. Accordingly, since Applicant appears aggrieved on this issue, Applicant should seek relief and file a petition pursuant to 37 CFR 1.144:
After a final requirement for restriction, the applicant, in addition to making any reply due on the remainder of the action, may petition the Director to review the requirement. Petition may be deferred until after final action on or allowance of claims to the invention elected, but must be filed not later than appeal.
Nevertheless, the non-elected subject matter and species will be rejoined with the elected subject matter and species upon allowance of elected subject matter as requested by Applicant, but only pursuant to the requirements of MPEP 821.04 (REJOINDER):
In order to be eligible for rejoinder, a claim to a nonelected invention must depend from or otherwise require all the limitations of an allowable claim. A withdrawn claim that does not require all the limitations of an allowable claim will not be rejoined. Furthermore, where restriction was required between a product and a process of making and/or using the product, and the product invention was elected and subsequently found allowable, all claims to a nonelected process invention must depend from or otherwise require all the limitations of an allowable claim for the claims directed to that process invention to be eligible for rejoinder. See MPEP § 821.04(b). In order to retain the right to rejoinder, applicant is advised that the claims to the nonelected invention(s) should be amended during prosecution to require the limitations of the elected invention. Failure to do so may result in a loss of the right to rejoinder.
Drawings
The drawings are objected to under 37 CFR § 1.84 in view of the following deficiencies that require correction:
Figures 1A-5 should each be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g).
The drawings filed 15 JULY 2023 are objected to as incorporating a form of shading that does not aid in understanding the invention and reduces legibility of the elements forming the invention - 37 CFR 1.84(m). For example, the labeled elements in the elected Species of Figures 6A and 6B are obscured by the shading and extraneous matter seen in the Figures. Accordingly, proper line drawings (except for Figure 22) that comply with 37 CFR 1.84 are required. See 37 CFR 1.84(l): All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views.
Applicant should review the specification and drawing Figures to ensure a proper one-to-one correspondence between the specification and drawings in accordance with MPEP 608.01(g) and 37 CFR 1.84(f). The brief description of the drawings and the descriptive portion of the specification will require revision in accordance with any drawing objections listed herein or those noticed by Applicant during said review, such as the Prior Art designations added to the Figures representing known subject matter.
From MPEP 608.01(g): The reference characters must be properly applied, no single reference character being used for two different parts or for a given part and a modification of such part. See 37 CFR 1.84(p). Every feature specified in the claims must be illustrated, but there should be no superfluous illustrations.
Applicant should thus verify that (1) all reference characters in the drawings are described in the detailed description portion of the specification and (2) all reference characters mentioned in the specification are included in the appropriate drawing Figure(s) as required by 37 CFR 1.84(p)(5).
INFORMATION ON HOW TO EFFECT DRAWING CHANGES
Replacement Drawing Sheets
Drawing changes must be made by presenting replacement figures which incorporate the desired changes and which comply with 37 CFR 1.84. An explanation of the changes made must be presented either in the drawing amendments, or remarks, section of the amendment. Any replacement drawing sheet must be identified in the top margin as “Replacement Sheet” (37 CFR 1.121(d)) and include all of the figures appearing on the immediate prior version of the sheet, even though only one figure may be amended. The figure or figure number of the amended drawing(s) must not be labeled as “amended.” If the changes to the drawing figure(s) are not accepted by the examiner, applicant will be notified of any required corrective action in the next Office action. No further drawing submission will be required, unless applicant is notified.
Identifying indicia, if provided, should include the title of the invention, inventor’s name, and application number, or docket number (if any) if an application number has not been assigned to the application. If this information is provided, it must be placed on the front of each sheet and centered within the top margin.
Annotated Drawing Sheets
A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be submitted or required by the examiner. The annotated drawing sheets must be clearly labeled as “Annotated Marked-up Drawings” and accompany the replacement sheets.
Timing of Corrections
Applicant is required to submit acceptable corrected drawings within the time period set in the Office action. See 37 CFR 1.85(a). Failure to take corrective action within the set period will result in ABANDONMENT of the application.
If corrected drawings are required in a Notice of Allowability (PTOL-37), the new drawings MUST be filed within the THREE MONTH shortened statutory period set for reply in the “Notice of Allowability.” Extensions of time may NOT be obtained under the provisions of 37 CFR 1.136 for filing the corrected drawings after the mailing of a Notice of Allowability.
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The abstract is acceptable.
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed (MPEP 606.01).
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).
Elected claims 1-3, 7-12, and 14-17 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 a joint inventor, or for pre-AIA the applicant regards as the invention.
NOTE: Per 37 CFR 1.75(c), dependent claims shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim. Accordingly, by definition, any claims that depend from a claim that is deemed indefinite under 35 USC 112(b) will also be considered indefinite and identified in the list of rejected claims above, even if such claims are themselves free of indefiniteness under § 112(b).
Claim 1: 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 1 is of indeterminate scope since this claim recites an overall width of the tube retainer with tubes therein to a variable, i.e., less than two times the length of an unspecified (and not positively claimed) tube. Accordingly, the metes and bounds of this claim is so unclear as to obscure the specific subject matter the claims encompass. Furthermore, since the length of an undefined tube is likely a variable at any given time, the recited overall width can be deemed a reference to an object that is variable (i.e., the size/length of some unspecified tube).
Claim 1 and the claims depending therefrom are thus indefinite as relating a feature of the retainer an undetermined/unspecified variable (see MPEP 2173.05(b)).
Claims 8-9 are indefinite since these claims recite an overall width (which must include the tubes), yet no tubes are positively recited in claims 1, 8, or 9. Claims 8-9 are thus incomplete as lacking components essential to generate the “overall width” (the tubes) and are accordingly of indeterminate scope.
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.
Initial remarks on the rejections to follow: Claims 1-3, 10-12, and 14 are considered drawn to the subcombination of the rotor only. Accordingly, any language relating to the tubes such as the particular cooperation between the rotor and the tubes is not considered germane to the patentability of the rotor subcombination. The use of the rotor with unspecified tubes that are not part of the claimed subcombination in these claims is tantamount to an intended use of the rotor. Although the applied prior art below teaches a rotor that indeed receives sample tubes, the claim language "capable of holding a tube”, “when tubes are inserted into the two or more tube retainers”, and the like are merely intended uses which impart no structure to the claimed apparatus. It is well settled that the intended use of an apparatus is not germane to its patentability. In re Self, 671 F.2d 1344, 213 USPQ 1 (CCPA 1982); In re Yanush, 477 F.2d 958, 177 USPQ 705 (CCPA 1973); In re Finsterwalder, 436 F.2d 1028, 168 USPQ 530 (CCPA 1971 ); In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967).
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 1, 2, 3, 7, 10, 14, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by ANDERS et al. (US 2016/0250608 A1) that discloses a compact centrifuge rotor 10 (per [0001] and [0018]) with an axis (about 70) compatible for use with a compact centrifuge 14 (per [0001] and [0018]); two or more tube retainers 80, 84 and/or 88, 92 positioned opposite each other with the rotation axis 70 therebetween; wherein each of the two or more tube retainers capable of holding a tube 96 or 98, wherein when two or more tubes are inserted into the two or more tube retainers 80, 84 and/or 88, 92, the tube retainers 80, 84 and/or 88, 92 with the tubes 96, 98 therein have an overall width which is less than two times the length of a tube (Figures 1-2);
wherein the two or more tube retainers 80, 84 and/or 88, 92 hold the two or more tubes 96 or 98 at a 90-degree angle with respect to the rotation axis 70 (Figures 1-2);
wherein when the two or more tubes 96, 98 are inserted into the two or more tube retainers 80, 84 and/or 88, 92, the two or more tubes overlap at the rotation axis 70 (Figures 1-2);
further comprising two sample tubes 96 or 98 positioned in the tube retainers;
wherein the two or more tube retainers are capable of holding sample tubes having a length from about 2.5 cm to about 5.5 cm, merely an intended use of the tube retainers;
although claim 14 recites no further structure of the claimed apparatus and certainly not a compact centrifuge operating from power at 30 to 60 Hertz, the rotor 10 of ANDERS et al. is compatible (capable of use with) a compact centrifuge (such as 14 in ANDERS et al.) having a power requirement of about 30 to about 60 hertz (Hz) or at other power requirements, merely an intended use of the rotor subcombination;
and a kit for remote sample collection with the kit comprising the centrifuge rotor 10 and the sample tubes 96 and/or 98 of ANDERS et al.
Claim Rejections - 35 USC § 103
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).
To determine whether subject matter would have been obvious, "the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved .... Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented." Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).
The Supreme Court has noted:
Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.
KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1740-41 (2007). "Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." (Id. at 1742).
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.
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.
The instant office action conforms to the policies articulated in the Federal Register notice titled “Updated Guidance for Making a Proper Determination of Obviousness” at 89 Fed. Reg. 14449, February 27, 2024, wherein the Supreme Court’s directive to employ a flexible approach to understanding the scope of prior art is reflected in the frequently quoted sentence, ‘‘A person of ordinary skill is also a person of ordinary creativity, not an automaton.’’ Id. at 421, 127 S. Ct. at 1742. In this section of the KSR decision, the Supreme Court instructed the Federal Circuit that persons having ordinary skill in the art (PHOSITAs) also have common sense, which may be used to glean suggestions from the prior art that go beyond the primary purpose for which that prior art was produced. Id. at 421–22, 127 S. Ct. at 1742. Thus, the Supreme Court taught that a proper understanding of the prior art extends to all that the art reasonably suggests, and is not limited to its articulated teachings regarding how to solve the particular technological problem with which the art was primarily concerned. Id. at 418, 127 S. Ct. at 1741 (‘‘As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.’’). ‘‘The obviousness analysis cannot be confined . . . by overemphasis on the importance of published articles and the explicit content of issued patents.’’ Id. at 419, 127 S. Ct. at 1741. Federal Circuit case law since KSR follows the mandate of the Supreme Court to understand the prior art— including combinations of the prior art—in a flexible manner that credits the common sense and common knowledge of a PHOSITA. The Federal Circuit has made it clear that a narrow or rigid reading of prior art that does not recognize reasonable inferences that a PHOSITA would have drawn is inappropriate. An argument that the prior art lacks a specific teaching will not be sufficient to overcome an obviousness rejection when the allegedly missing teaching would have been understood by a PHOSITA—by way of common sense, common knowledge generally, or common knowledge in the relevant art. For example, in Randall Mfg. v. Rea, 733 F.3d 1355 (Fed. Cir. 2013), the Federal Circuit vacated a determination of nonobviousness by the Patent Trial and Appeal Board (PTAB or Board) because it had not properly considered a PHOSITA’s perspective on the prior art. Id. at 1364. The Randall court recalled KSR’s criticism of an overly rigid approach to obviousness that has ‘‘little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications.’’ Id. at 1362, citing KSR, 550 U.S. at 415–22, 127 S. Ct. at 1727. In reaching its decision to vacate, the Federal Circuit stated that by ignoring evidence showing ‘‘the knowledge and perspective of one of ordinary skill in the art, the Board failed to account for critical background information that could easily explain why an ordinarily skilled artisan would have been motivated to combine or modify the cited references to arrive at the claimed inventions.’’ Id.
From Norgren Inc. v. Int’l Trade Comm’n, 699 F.3d 1317, 1322 (Fed. Cir. 2012) (‘‘A flexible teaching, suggestion, or motivation test can be useful to prevent hindsight when determining whether a combination of elements known in the art would have been obvious.’’); Outdry Techs. Corp. v. Geox S.p.A., 859 F.3d 1364, 1370–71 (Fed. Cir. 2017) (‘‘Any motivation to combine references, whether articulated in the references themselves or supported by evidence of the knowledge of a skilled artisan, is sufficient to combine those references to arrive at the claimed process.’’). In keeping with this flexible approach to providing a rationale for obviousness, the Federal Circuit has echoed KSR in identifying numerous possible sources that may, either implicitly or explicitly, provide reasons to combine or modify the prior art to determine that a claimed invention would have been obvious. These include ‘‘market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.’’ Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013), quoting KSR, 550 U.S. at 418–21, 127 S. Ct. at 1741–42.
The Federal Circuit has also clarified that a proposed reason to combine the teachings of prior art disclosures may be proper, even when the problem addressed by the combination might have been more advantageously addressed in another way. PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014) (‘‘Our precedent, however, does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away.’’) (emphasis in original). One aspect of the flexible approach to explaining a reason to modify the prior art is demonstrated in the Federal Circuit’s decision in Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 796 (Fed. Cir. 2021), which confirms that a proposed reason is not insufficient simply because it has broad applicability. Patent challenger Intel had argued in an inter partes review before the Board that some of Qualcomm’s claims were unpatentable because a PHOSITA would have been able to modify the prior art, with a reasonable expectation of success, for the purpose of increasing energy efficiency. Id. at 796–97. The Federal Circuit explained that ‘‘[s]uch a rationale is not inherently suspect merely because it’s generic in the sense of having broad applicability or appeal.’’ Id. The Federal Circuit further pointed out its pre-KSR holding ‘‘that because such improvements are ‘technology independent,’ ‘universal,’ and ‘even common-sensical,’ ‘there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves.’ ’’ Id., quoting DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (emphasis added by the Federal Circuit in Intel). When formulating an obviousness rejection, the PTO may use any clearly articulated line of reasoning that would have allowed a PHOSITA to draw the conclusion that a claimed invention would have been obvious in view of the facts. MPEP 2143, subsection I, and MPEP 2144. Acknowledging that, in view of KSR, there are ‘‘many potential rationales that could make a modification or combination of prior art references obvious to a skilled artisan,’’ the Federal Circuit has also pointed to MPEP 2143, which provides several examples of rationales gleaned from KSR. Unwired Planet, 841 F.3d at 1003.
When considering the prior art in its entirety, note Allied Erecting v. Genesis Attachments, 825 F.3d 1373, 1381, 119 USPQ2d 1132, 1138 (Fed. Cir. 2016) ("Although modification of the movable blades may impede the quick change functionality disclosed by Caterpillar, ‘[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.’" (quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165, 77 USPQ2d 1865, 1870 (Fed Cir. 2006) (citation omitted))). However, "the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
Although indefinite, claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over the ANDERS et al. (US 2016/0250608 A1) publication that does not necessarily disclose the recited overall width.
With respect to the limitation of the parameter regarding the ”overall width” which is present in the claims at issue, the examiner has found that the specification contained no disclosure of any unexpected results arising therefrom, and that as such the parameter is arbitrary and therefore obvious. Such unsupported limitations cannot be a basis for patentability, since where patentability is said to be based upon particular chosen parameters or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990) and MPEP 2144.05(III).
With respect to the limitation of the overall width, it would have been obvious to one of ordinary skill in the art to have provided the apparatus defined by the disclosure of ANDERS et al. with the configurations and/or dimensions recited in the claims which are considered at most optimum choices, lacking any disclosed criticality.
Applicant has the burden of proving such criticality. In re Swenson et al., 56 USPQ 372; In re Scherl, 70 USPQ 204. However, even though applicant's modification may result in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art. In re Sola, 25 USPQ 433; In re Normannet et al., 66 USPQ 308; In re Irmscher, 66 USPQ 314. More particularly, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); In re Swain et al., 70 USPQ 412; Minnesota Mining and Mfg. Co. v. Coe, 38 USPQ 213; Allen et al. v. Coe, 57 USPQ 136; MPEP 2144.05(II)(A).
No probative evidence is of record to demonstrate that the dimensions and/or other variables of the invention are significant or are anything more than one of numerous dimensions a person of ordinary skill in the art would find obvious for purposes of merely changing the configurations and/or dimensions to obtain different results. Graham v. John Deere Co., 148 USPQ 459.
Accordingly, the examiner argues that these parameters are rather arbitrary and thus obvious over the prior art per MPEP 2144.05(II)(III).
Furthermore, the Federal Circuit has explained that a reason to optimize prior art parameters may be found in a PHOSITA’s desire to improve on the prior art. In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017) (‘‘The normal desire of artisans to improve upon what is already generally known can provide the motivation to optimize variables such as the percentage of a known polymer for use in a known device.’’).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over ANDERS et al. (US 2016/0250608 A1) in view of TOYAMA (US 6045494).
ANDERS et al. does not disclose the recited materials forming the rotor. TOYAMA discloses a centrifuge rotor 10 that is made of stainless steel because of its high resistance to medicine. Alternatively, the rotor may be made of other materials such as plastic or aluminum. If the rotor is made of aluminum, it is preferable to perform alumite treatment so as to enhance corrosion resistance. Further, it is preferable that the rotor is made of plastic that is formed by injection molding. The rotor can also be made of stainless steel or aluminum that is formed by a press, etc. It is preferable that the rotor is in the shape which is symmetric with the rotation center point thereof in order to secure balance during its rotation. Thus, the shape of the rotor is preferably circle, square, regular triangle and other regular polygons. It would have been obvious to one skilled in the art before the effective filing date of the invention to have formed the rotor of ANDERS et al. from one of the recited materials as taught by TOYAMA since to form a centrifuge rotor from such materials is well-known in the art as exemplified by TOYAMA (col. 2, lines 18-31).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over ANDERS et al. (US 2016/0250608 A1) in view of SCHAFF et al. (US 2021/0316317 A1).
ANDERS et al. does not disclose the recited elastomeric material forming the rotor. SCHAFF et al. discloses a centrifuge rotor 401 that is made of rubber, plastic, or other elastomeric materials for example, where the upper clasp 405 and lower clasp 406 (see FIG. 4B) contact the sample tube 102, to increase friction with the sample tube 102 and prevent it from shifting during operation; in particular, during starting and stopping rotation [0047]. It would have been obvious to one skilled in the art before the effective filing date of the invention to have formed the rotor of ANDERS et al. an elastomeric material as taught by SCHAFF et al. since to form a centrifuge rotor from this material is well-known in the art as exemplified by SCHAFF et al.
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Claims 11-12 are further obvious since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416; Sinclair & Carroll Co., Inc. v. Interchemical Corp., 65 USPQ 297 (1945).
It is observed that artisans must be presumed to know something about the art apart from what the references disclose (see In re Jacoby, 309 F.2d 513, 135 USPQ 317 (CCPA 1962)). Moreover, skill is presumed on the part of those practicing in the art. See In re Sovish, 769 F.2d 738, 226 USPQ 771 (Fed. Cir. 1985). Therefore, it is concluded that the selection of a well-known material in the art for the rotor such as the recited materials of claims 11-12 would have been obvious to one of ordinary skill in this art, if for no other reason than to achieve the advantage of using a more modern material or a lower cost or more easily fabricated material.
This exemplifies the Supreme Court's analysis in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 [82 USPQ2d 1385] (2007). “When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id. at 417. As further emphasis on the substitution of one material for another, there is the venerable case of Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1851), cited approvingly in KSR Int'l Co. v. Teleflex Inc., supra, 550 U.S. at 406, 415, which denied patentability to an invention consisting of the substitution of a clay or porcelain knob for a metallic or wood knob in a doorknob (the doorknob itself, as distinct from the knob on the end of it, being an assemblage of knob, shank, and spindle). Other substitution cases in which patentability was denied on grounds of obviousness include Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1535–38 [218 USPQ 871] (Fed. Cir. 1983); Brunswick Corp. v. Champion Spark Plug Co., 689 F.2d 740, 749-50 [216 USPQ 1] (7th Cir. 1982), and Lyle/Carlstrom Associates, Inc. v. Manhattan Store Interiors, Inc., 635 F.Supp. 1371, 1381-83 [230 USPQ 278] (E.D.N.Y. 1986), aff'd, 824 F.2d 977 (Fed. Cir. 1987).
Among the inventions that the law deems obvious are those modest, routine, everyday, incremental improvements of an existing product or process that confer commercial value (otherwise they would not be undertaken) but do not involve sufficient inventiveness to merit patent protection. This class of inventions is well illustrated by efforts at routine experimentation with different standard grades of a material used in a product—standard in the sense that their properties, composition, and method of creation are well known, making successful results of the experimentation predictable. Ritchie v. Vast Resources Inc., 90 USPQ2d 1668 (Fed. Cir. 2009).
Accordingly, it is well settled that a predictable substitution of one material for another is well within the grasp of 35 U.S.C 103(a) and common sense. A rejection to overcome an obviousness rejection will not be withdrawn when the allegedly missing teaching of the rejection would have been understood by a PHOSITA—by way of common sense, common knowledge generally, or common knowledge in the relevant art. Randall Mfg. v. Rea, supra. Choosing an appropriate material for a specific application or structural member such as the recited rotor can unquestionably be determined by a PHOSITA by innate common sense, the common knowledge generally, or the common knowledge in the relevant art.
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Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over ANDERS et al. (US 2016/0250608 A1) in view of BRIMHALL (US 5665047).
ANDERS et al. discloses a compact centrifuge 14 for use with the rotor 10 but not the recited weight of the centrifuge.
BRIMHALL discloses an analogous compact portable centrifuge 10 having a weight of less than about three kilograms, thus encompassing the weight ranges set forth in clams 16-17. It would have been obvious to one skilled in the art before the effective filing date of the invention to have formed the centrifuge in ANDERS et al. to be within the recited weights as taught by BRIMHALL for the purpose of facilitating the use of the centrifuge in filed operations (col. 3, lines 18-24).
Allowable Subject Matter
No elected claims stand allowed - all elected claims are rejected over prior art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure by disclosing compact centrifuges and rotors. For claim 14, STANSELL et al. discloses a centrifuge that is completely contained and requires no external power source for prolonged periods. The charger unit, by using a 60 Hertz transformer can be used on either 60 Hertz or 400 Hertz. By simple circuit modification, the charger can operate on 24 to 28 volts DC or on any other available power source. The centrifuge, furthermore, features a high speed (up to 18,000 r.p.m.) motor, thus permitting especially short (30 sec.) centrifugation durations. The unit also has a thermal surge resistor which minimizes initial current surge, thus adding greatly to battery charge life and motor commutator life. A spring return, momentary contact, brake switch is utilized to bring the centrifuge to a rapid stop. The brake shorts the armature winding, and the reverse EMF creates an opposing magnetic field which brings the centrifuge rotor to a total stop from full speed in approximately 12 seconds. The internal nickel-cadmium cells, arranged radially about the motor can be recharged hundreds of times and their physical arrangement lends stability to the centrifuge. The centrifuge has its own handle permitting it to be carried while in operation and an O-ring seal is located between its body and its hinged lid. It also has vent holes connecting the rotor chamber to the outside thereby facilitating partial evacuation of the rotor chamber thus permitting a greater top angular velocity. A miniature hematocrit reading scale and a simple magnifying lens can be attached to and carried with the centrifuge of the instant invention.
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/CHARLES COOLEY/
Examiner, Art Unit 1774
DATED: 21 AUG 2026
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