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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-13 in the reply filed on 8/3/2026 is acknowledged.
Claim 14 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 8/3/2026.
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 2, 4, 6, 7, and 10 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 2, 4, 6, 7, and 10 recite a broad recitation, then the claim also recites “in particular” followed by a statement which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 2 recites “comprises precisely” which is unclear to the metes and bounds of the claim because “comprising” is an open-ended transitional phrase, but “precisely” appears to make the transitional phrase closed, but the language does match any traditional closed transitional phrases. For prosecution, the limitation will be interpreted as “comprises” and be open-ended.
Claim 10 recites the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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) 1-3, 5, 7, 9, 11 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Andres et al (US 20130288382)
Regarding claim 1 , Andres et al teach a hand-held pipetting device for pipetting at least one liquid sample,
comprising a connecting section (Para. 0076; Fig. 1: 11 connecting cone) for connecting at least one pipetting container (Para. 0076; Fig. 1: pipette tip 10),
an electrically controlled moving member (Para. 0073: electrically driven movement of the piston) for aspirating the at least one sample into the at least one pipetting container, holding the sample in the at least one pipetting container, and discharging sample from the at least one pipetting container when performing a pipetting operation (Para. 0025-0026: aspiration, delivery, intervals between steps),
with a touch-sensitive screen for entering the parameter values of user-definable pipetting parameters (Para. 0048: touch screen), where a parameter set of pipetting parameters completely defines the pipetting operation (Fig. 4a,4b; Para. 0093: pipetting mode),
with an electrical control device comprising a data processing device programmed to control the moving member in dependence on the at least one pipetting parameter (Fig. 1: 17: control device; Para. 0010),
with at least one actuating element which can be actuated by a finger pressure of a user and whose actuation starts the pipetting operation defined according to the parameter set (Par. 0082: rocker 13 used in operation of the pipette for aspirating and delivery of sample),
characterized in that the data processing device is programmed to, display in the screen an input screen page for displaying and entering pipetting parameters of a parameter set of pipetting parameters (Fig. 5a), and, when the actuation of the at least one actuating element is detected, displaying in the screen, instead of the input screen page, an output screen page for displaying pipetting parameters of the parameter set defined in the input screen page (Fig. 5b), and, when this actuation of the at least one actuating element is detected or upon the subsequent actuation of one of these actuating elements, starting the pipetting operation defined according to this pipetting parameter set, wherein said output screen page or a subsequently displayed output screen page includes a special button (Fig. 5c), touching of which causes the output screen page to be closed and said input screen page or another input screen page to be displayed on the screen (Para. 0096; Fig. 5c: 34a or 34b).
Regarding claim 2, Andres et al teach the pipetting device comprises precisely one first and one second actuating element, which are operable separately from one another, in particular by an operating rocker (Para. 0082; Fig. 1: 13a,13b of rocker 13), wherein the data processing device is programmed to detect, starting from the display of the input screen page, the actuation of the first actuating element by the user and to start the pipetting operation defined according to the parameter set. (Para. 0082: first actuation of 13a, Para. 0093-0094 pipetting mode adjusted by rocker 13)
Regarding claim 3, Andres et al teach the pipetting device comprises an operating rocker (Fig. 1: 13), and comprises a first and a second actuating element which are operable separately from one another by the operating rocker (Para. 0082; Fig. 1: 13a, 13b), in that pressing a first pressure surface of the operating rocker actuates the first actuating element and pressing a second pressure surface of the operating rocker actuates the second actuating element, wherein the first and second pressure surfaces are haptically distinguishable (Para. 0082: no function initiated when it is not being operated).
Regarding claim 5, Andres et al teach the data processing device is programmed to execute a recorder function (Para. 0041: history mode) , in which the GUI comprises at least one input field for starting and/or ending a recording (Fig. 3a,3b) and, after the start, the steps of a pipetting program for carrying out a pipetting operation defined by the user are recorded, wherein the user carrying out these steps by actuating the at least one actuating element and by inputting values of the pipetting parameters in one or more input screen pages (Para. 0041, Fig. 4a,4b, and 4c: operating history mode).
Regarding claim 7, Andres et al teach a housing with a connecting section for at least one pipetting container (Fig. 1: 3 lower shaft section) and with an ejector button (Fig. 1: 8 release button), the contact surface of which is movable along a path into the housing by pressing the ejector button (Para. 0076; Fig. 1: 9 spring mounted release sleeve), the pipetting device is configured such that, when the end of this path is reached, the ejection of the pipetting container, in particular of the pipette tip, is executed (Para. 0076) (it is noted that "or that an electrical signal is generated which triggers the ejection of the at least one pipetting container" is an alternative limitation and therefore not required by the claim).
Regarding claim 9, Andres teach the data processing device is programmed to, display in the screen a screen page for displaying the pipetting parameters of a parameter set of pipetting parameters (Para. 0047: display; Para. 0024-0031: operation modes), wherein the screen page includes at least one first input tile that displays the value of at least one first pipetting parameter of a base parameter set (Para. 0024-0028: operating parameters to define volume to be pipetted), and touching the input tile opens an input interface that allows the user to enter the value of the at least one first pipetting parameter (Para. 0048: touch screen), wherein the screen page contains an input field, the touching of which causes the display of a selection list containing a list of short descriptions of further selectable pipetting parameters (Para. 0027: one mode of operation "dispensing" and Para. 0028: one mode of operation "automatic dispensing"), from which the user can select at least one second pipetting parameter, which is added to the at least one first pipetting parameter of the basic set, in order to define with this the pipetting parameters of the parameter set of pipetting parameters determining the pipetting operation, wherein, after the selection of the at least one second pipetting parameter is completed, the selection list is closed and the screen page is displayed which now also displays, in addition to the at least one first input tile, at least one second input tile which displays the value of the at least one second pipetting parameter and the touching of which opens an input interface which enables the user to enter the value of the at least one second pipetting parameter. (Para. 0027: associated operating parameters include volume of the individual sample, relating to the pipetting volume during one of a plurality of delivery steps; the number of delivery steps; the speed at which the sample(s) is/are admitted; the speed at which the sample(s) is/are delivered)
Regarding claim 11, Andes et al teach the data processing device is programmed to, display in the screen a screen page showing one or more input tiles extending in particular substantially over the entire screen page. (Para. 0090; Fig. 5a: upper bar 31, upper second title bar 32, central information box 33, and lower bar 34 extend over the entire screen page)
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Andres et al (US 20130288382).
Regarding claim 4, Andres et al teach the pipetting device comprises a housing which is arranged as a handle for holding the pipetting device with a single hand of the user (Fig. 1; Para. 0076: grip area 7 with holding tongue for index finger and thumb able to reach the release button 8) and which comprises an axial portion containing the moving member (Para. 0075; Fig. 1: rocker 13 on the upper section 4 along axis B), along the longitudinal axis of which the moving member extends, and wherein the pipetting device comprises a first and a second actuating element, which are operable separately from one another by an operating rocker (Fig. 1: 13a,13b on rocker 13), which is mounted on a thumb support surface (Para. 0076:area where thumb is able to reach 8 and 13 read on "thumb support surface"), which is arranged at an angle to the longitudinal axis and is arranged in particular inclined downwards.
Andres et al is silent to the angle of 100 to 150 degrees to the longitudinal axis. In re Boesch (205 USPQ 215) teaches the optimization of a result effective variable is ordinarily within the skill of the art. A result effective variable is one that has well known and predictable results. The choice of an angle of the operating rocker is a result effective variable that gives the well-known and expected results of providing comfortable angle for the thumb to actuate the rocker. In the absence of a showing of unexpected results, the Office maintains the 100 to 150 degrees to the longitudinal axis would have been within the skill of the art as optimization of a results effective variable.
Claim(s) 6, 8, 10, 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Andres et al (US 20130288382) in view of Telimaa et al US 20150013476).
Regarding claim 6, Andres et al teach the pipetting device comprises a housing with an axial portion containing the moving member (Para. 0073: electrically driven movement of the piston), along the longitudinal axis of which the moving member extends, and a head portion comprising a front surface inclined to the longitudinal axis (Par. 0075, Fig. 1: upper section 4), formed by the surface of the screen and a frame enclosing the screen (Fig. 1: frame around screen 5); wherein in particular a frame front surface lies in a first plane and the screen lies in a second plane identical to or parallel to the first plane. (Fig. 1: frame in same plane as the screen 5)
Andres et al is silent to the screen occupying at least 80% of the front surface.
Telimaa et al teach a touch screen occupying at least 80% of the front surface. (Fig. 1: 3 touch screen) It is desirable to provide a touch screen occupying at least 80% of the front surface to allow for multiple options to be actuated by a manual touch. Simple substitution of one known element for another to obtain predictable results is held to be obvious. Therefore, it would have been obvious to one of ordinary skill in the art to substitute the touch screen of Andres for the touch screen of Telimaa et al to provide the above advantage of allowing for multiple options to be actuated by a manual touch.
Regarding claim 8, Andres et al teach the data processing device is programmed to display in the screen a screen page including at least one first input tile displaying the value of at least one first pipetting parameter (Para. 0025: defining a pipetting volume) and touching of which opens an input interface allowing the user to enter the value of the at least one first pipetting parameter (Para. 0027: dispensing volume and number of delivery steps). Andres is silent to wherein said input interface is a screen area in which a numeric keypad is displayed, the numeric keys of which are individually touchable and usable by the user to enter a sequence of digits defining the value of the at least one first pipetting parameter.
Telimaa teach wherein said input interface is a screen area in which a numeric keypad is displayed, the numeric keys of which are individually touchable and usable by the user to enter a sequence of digits defining the value of the at least one first pipetting parameter. (Para. 0030, Fig. 4B). It is desirable to provide a numeric touchpad to enter the volume amount to easily enter the final desired volume with the fewest touches required. Combining prior art elements according to known methods to yield predictable results is known. Therefore it would have been obvious to one of ordinary skill in the art to combine the numeric keypad of Telimaa to the Andres device to provide the above advantage of easily enter the final desired volume with the fewest touches required.
Regarding claim 10, Andes et al teach is silent to the data processing device is programmed to, if the value entered by a user via an input interface for a pipetting parameter is invalid, information is displayed on the screen and preferably at least one correction button is displayed, the touching of which, either instead of the value entered by the user, automatically performs at least one correction operation, which may have the following embodiments: - instead of the invalid value, a valid value is automatically set; - at least one pipetting parameter alternative to the said pipetting parameter is selected and, in particular, is occupied by the value of the user or another suitable value; - it will undo the user's input and, in particular, allow it to be re-entered; and/or " an error message is output; and/or " the change of the previously current value is ignored and the previously current value is kept; and/or " another non-combinable pipetting parameter representing a non- combinable function is automatically deselected.
Telimaa et al teach if the value entered by a user via an input interface for a pipetting parameter is invalid, information is displayed on the screen and preferably at least one correction button is displayed, the touching of which, either instead of the value entered by the user, automatically performs at least one correction operation, which may have the following embodiments: it will undo the user's input and, in particular, allow it to be re-entered (Fig. 4A-4F Para. 0030: change the volume if incorrect). It is desirable to provide a means to change the volume to the correct volume by allowing the new volume to be re-entered to ensure the user has the ability to input the correct volume. Combining prior art elements according to known methods to yield predictable results is known. Therefore it would have been obvious to one of ordinary skill in the art to combine the volume correcting of Telimaa et al to the device of Andes to provide the above advantage of ensuring the user has the ability to input the correct volume.
Regarding claim 12, Andes teach the data processing device is programmed to, display in the screen a start screen page, replaced by a second screen page (Fig. 5a-5b), and which is replaced by a third screen page (Fig. 5c), wherein in particular the second screen page comprises a list of input fields, wherein each input field comprises a short designation and wherein touching the input field loads a predetermined parameter set defining a predetermined pipetting operation, wherein in particular after touching this input field a further screen page is displayed (Fig. 5b: seq. dispensing); and wherein in particular the third screen page comprises a list of input fields, wherein each input field comprises a short designation and wherein touching the input field loads a historical parameter set (Fig. 5c: history), used in the past and automatically stored, which defines a historical pipetting operation, wherein in particular after touching this input field another screen page is displayed (Fig. 5c: back or select).
Andes is silent to using a sideways swipe gesture to operate the screen display. Telimaa et al teach sliding finger along the touch screen to operate the operations (claim 6). It is desirable to provide a touch screen operated by sliding finger operation to improve user control of operations. Combining prior art elements according to known methods to yield predictable results is known. Therefore it would have been obvious to one of ordinary skill in the art to combine the finger sliding of the operation of operations of Telimaa et al to the device of Andes to provide the above advantage of ensuring the user input for control of operations.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Andres et al (US 20130288382) in view of Hurwitz et al (US 20170370956 A1)
Regarding claim 13, Andes teach a system for input of pipetting parameters, comprising the hand-held pipetting device according to claim 1 (see rejection supra). Andes is silent to an external data processing device comprising an external screen and data processing device programmed to display in the external screen an external input screen page for displaying and inputting the pipetting parameters of a parameter set of pipetting parameters, wherein the external input screen page and the input screen page of the pipetting device are substantially the same in content, wherein the system is configured to transmit the pipetting parameters defined on the external data processing device to the pipetting device and to use them there to define a pipetting operation.
Hurwitz et al teach the handheld pipette 200 having a display of the pipette 120 and an external display of the computer system 190 in which the desired volume may be input. (Para. 0068: reads on "substantially the same in content"). It is desirable to provide an external display and computer to allow for input with a more user friendly display and user input on a larger computer device. Combining prior art elements according to known methods to yield predictable results is known. Therefore it would have been obvious to one of ordinary skill in the art to combine the external computer of Hurwitz to the system of Andes to provide the above advantage of allowing for input with a more user friendly display and user input on a larger computer device.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DENNIS MICHAEL WHITE whose telephone number is (571)270-3747. The examiner can normally be reached M-F 8:30am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Maris R. Kessel can be reached at (571) 270-7698. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Dennis White/Primary Examiner, Art Unit 1758
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