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 .
Drawings
The drawings were received on 8/18/2023. These drawings are acceptable.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-4 and 9-12, in the reply filed on July 31, 2026 is acknowledged.
Claims 5-8 and 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 the reply filed on July 31, 2026.
Claim Interpretation
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: position limit mechanism in claim 4.
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:
Para. 0101 of the USPGPub (US 2024/0050952 A1) discloses that the position-limit mechanism can be a convex block, a stopper, a convex plate, a convex ring, a concave-convex mosaic structure between the elastic tube plug and the tube body, and a clamping structure between the elastic tube plug and the tube body.
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 1-4 and 9-12 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.
With respect to claim 1, it is unclear what it trying to be encompassed by the last two clauses of the claim. The clause that begins in line 8 allows for two conditions (1: the elastic tube plug is capable of being in non-interference fit with the first inner diameter segment, or 2: the elastic tube plug is capable of having a first amount of interference fit), but the following clauses are presented with both of those conditions being present at the same time. The examiner believes that the term “or” may be missing between “zero;” and “when” in line 12, but clarification is requested.
Claims 2-4 and 9-12 are ultimately dependent upon claim 1 and thus, inherit the same deficiencies.
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 (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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-4 and 9-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by MersKelly et al (USP 5,681,742) (provided by applicant in IDS dated 8/18/2023).
With respect to claim 1 MersKelly discloses a reagent container, comprising:
a tube body (containment tube 10), which comprises a tube plug accommodating segment (second open end 14), and the tube plug accommodating segment comprises a first inner diameter segment and a second inner diameter segment along the depth direction of the tube body (second end 14 of the containment tube 10 has a slight outward directed flare with respect to the longitudinal axis of the containment tube, as shown by the angle “B”, which angle is about 10 to 20 degrees; inner wall 18 tapers to provide a decreasing inside diameter of the container in the direction away from the second end 14 of the tube 10; See Fig. 1 and Col. 4, line 62 – Col. 5, line 2), the inner diameter of the second inner diameter segment is smaller than the inner diameter of the first inner diameter segment;
an elastic tube plug (resilient plug 16), in which the elastic tube plug is provided with a through-channel (longitudinally directed central bore 24) along the direction of entering the tube body (See Col. 5, lines 7-10);
wherein, the elastic tube plug is capable of being in non-interference fit or having a first amount of interference fit with the first inner diameter segment, and the elastic tube plug is capable of having a second amount of interference fit with the second inner diameter segment;
when the elastic tube plug is capable of being in non-interference fit with the first inner diameter segment, the second amount of interference fit is greater than zero; when the elastic tube plug is capable of having the first amount of interference fit with the first inner diameter segment, the second amount of interference fit is greater than the first amount of interference fit;
wherein, the through-channel is configured to be compressed and sealed with the radial contraction of the elastic tube plug when the elastic tube plug has the second amount of interference fit with the second inner diameter segment (See Col. 5, lines 23-39).
Applicant should note these limitations are directed to the function of the apparatus and/or the manner of operating the apparatus. All the structural limitations of the claim have been disclosed by MersKelly and the apparatus of MersKelly is capable of the recitation of claim 1. As such, it is deemed that the claimed apparatus is not differentiated from the apparatus of MersKelly (see MPEP §2114).
With respect to claim 2 MersKelly discloses that the inner diameter of the first inner diameter segment is greater than or equal to at least one outer diameter of the elastic tube plug (See Fig. 1 for depiction of how the inner diameter of the tube 10 is larger than a diameter of section 33 of the resilient plug 33).
With respect to claim 3 MersKelly discloses that the first inner diameter segment gradually decreases in an inner diameter at a position adjacent to the inner diameter segment (See Fig. 1 and Col. 5, lines 7-10).
With respect to claim 4 MersKelly discloses that the tube body and the elastic tube plug are each provided with a position-limit mechanism that prevents the elastic tube plug from rising and/or descending relative to the tube body along the depth direction (annular lip 20 on tube 10 engages with annular groove 32 of the plug 16 when the plug is arranged in its first position, See Fig. 1 and Col. 5, lines 16-22).
With respect to claim 9, applicant should note these limitations are directed to the function of the apparatus and/or the manner of operating the apparatus. All the structural limitations of the claim have been disclosed by MersKelly and the apparatus of MersKelly is capable of the recitation of claim 9. As such, it is deemed that the claimed apparatus is not differentiated from the apparatus of MersKelly (see MPEP §2114).
With respect to claim 10 MersKelly discloses that the through channel comprises a second channel segment (lower portion of channel 24) and a first channel segment (upper portion of channel 24), wherein the cross-sectional area of the first channel segment is greater than the cross-sectional area of the second channel segment (See Col. 5, lines 23-39 for discussion of how, when the plug is pressed into the tube 10, the resilient plug is thereby squeezed radially inwardly, wherein the upper portion of channel 24 would, for a period to time, be larger than the lower portion of the channel 24).
With respect to claim 11 MersKelly discloses the inclusion of a sealing element (outer cap 30), the sealing element being used to seal the through-channel and being pierceable (See Fig. 1 and Col. 5, lines 7-15).
With respect to claim 12, applicant should note these limitations are directed to the function of the apparatus and/or the manner of operating the apparatus. All the structural limitations of the claim have been disclosed by MersKelly and the apparatus of MersKelly is capable of the recitation of claim 12 (being used as a PCR tube). As such, it is deemed that the claimed apparatus is not differentiated from the apparatus of MersKelly (see MPEP §2114).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRITTANY I FISHER whose telephone number is (469)295-9182. The examiner can normally be reached IFP.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached at (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRITTANY I FISHER/Examiner, Art Unit 1796 August 22, 2026
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