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 1-2,4,6,8,12-16,20,23 in the reply filed on 5/12/2026 is acknowledged.
Claims 24,27,31 and 39-43 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected medical product, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/12/2026.
Claims 1-2,4,6,8,12-16,20,23 are pending examination in this response.
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 1 is rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Korpela et. al. (US-7347338-B2).
Regarding claim 1, Korpela teaches “A lid assembly for a sample tube for collecting magnetic beads from the sample tube and subsequently releasing said beads, the lid assembly comprising:” (Col. 4 lines 33-36, Col 1 line 66- Col 2 line 5, Col 11 lines 34-36, test tubes, vessels. The plug intended for a method according to the invention and for closing a vessel can further be covered with various protective plugs, such as screw plugs or aluminum plugs.);
“a closure part including” (Col. 8 lines 28-29, when needed, as a seal, when the test tube 28 is closed with the plug 2');
“an attachment part for removably attaching the closure part to the opening of the sample tube, to close the sample tube,” (Col. 6 lines 42-44, a flange 14 which is substantially larger than the opening 10 to be closed);
“and a bead-collecting platform arranged to locate within or above the opening of the sample tube when the closure part is attached to the sample tube,” (Fig. 6a-6k and Col. 8 lines 1-15, plug 2’);
“wherein the bead-collecting platform has a bead-collecting surface on one side, for coming into contact with liquid in the sample tube during use,” (Fig. 6a-6k, side of plug 2’ seen in Fig. 6e where the magnetic particles 24 towards the tip of plug 2’);
“and a magnet-receiving cavity on the other side, behind the bead-collecting surface;” (Fig. 6a-k, within Fig. 6e other side of plug 2’ where the magnet 30 is placed near);
“and a magnet-bearing part comprising a magnet,” (and Col. 8 lines 1-15 and Fig. 6a-6k, magnet 30).
The recitations “wherein the magnet is removably insertable into the magnet-receiving cavity, towards the bead-collecting surface, such that, when the magnet is present within the magnet-receiving cavity, the magnet is capable of holding magnetic beads against the bead-collecting surface, and when the magnet is not present within the magnet-receiving cavity, the lid assembly is incapable of magnetically holding magnetic beads against the bead-collecting surface.” are capabilities of the magnet and lid assembly taught within (Figs. 6d-6k, and Columns 8 and 9).
Regarding claim 2, Korpela teaches all of claim 1 as above in addition to “wherein the magnet-bearing part is separable from the closure part; or wherein the magnet-bearing part is coupled to the closure part whilst permitting the magnet to be moved within the magnet-receiving cavity, towards or away from the bead-collecting surface.” (Figs, 6d-6k, magnet 30 and plug 2’).
Regarding claim 4, Korpela teaches all of claim 1 in addition to “wherein the magnet-bearing part further comprises a user-grippable part to which the magnet is attached;” (Col. 8 lines 35-37 and Fig. 6d-6k The extending device according to this embodiment is provided with a detaching element 32 for the plug 2' or extendable membrane.); “wherein the user-grippable part has a cross-sectional profile such as to enable it to act as a stand, for supporting the magnet-bearing part upside-down.” (Fig. 6d-6k, magnet 30 and detaching element 32)
Regarding claim 6, Korpela teaches all of claim 1 in addition to, “wherein the magnet-receiving cavity is in the form of a socket shaped to receive at least the magnet of the magnet-bearing part;” (Figs. 6d-6k, cone shape of plug 2’ and transferring device 4' with magnet 30). Therefore the cone shape is a type of socket cone which is socket shaped.
The recitation “optionally wherein the magnet-bearing part is rotatable within the socket; optionally wherein the socket comprises gripping parts for gripping the magnet- bearing part.” is optional features of the present claimed invention however the gripping parts are taught within (Col. 8 lines 26-29, The purpose of the wall thickness of the boss 19 greater than the wall thickness of the other portions of the plug 2' is to function, when needed, as a seal, when the test tube 28 is closed with the plug 2'.).
Regarding claim 8, Korpela teaches all of claim 1 in addition to “wherein the magnet-bearing part and the closure part are mutually engageable when the magnet is inserted into the magnet-receiving cavity;” (Col. 3 lines 14-19, d) the extending is reduced to such an extent that the plug closes the opening and adheres to it so tightly that the extending device is removable from the plug i) either by pulling, or ii) by means of a special removing element associated with the extending device.).
The recitations “optionally wherein the magnet-bearing part is rotatable within the socket, the magnet-bearing part comprises one or more radial protrusions and the socket comprises one or more complementary channels into which the one or more radial protrusions are engageable, or the magnet-bearing part and the socket comprise mutually-engageable threads.” is optional features of the present claimed invention. Korpela teaches to all of the positively required claimed features.
Regarding claim 12, Korpela teaches all of claim 1 in addition to “wherein the attachment part comprises a press-fit part adapted to engage with the opening of the sample tube.” (Col. 8 lines 51-58, In FIG. 6/, the extended plug 2' attached to the extending device 4' and the magnetic particles 24 attached to the tip of the plug 2' by the force of the magnetic field of the magnet 30 are transferred into a second vessel 28. In FIG. 6g, 55 extending has been reduced by transferring the extending element 20 and the magnet 30 on the tip thereof back inside the extending device to such an extent that the plug 2' has closed the mouth 10 of the vessel 28.).
Regarding claim 13, Korpela teaches all of claim 12 in addition to “wherein the press-fit part is the bead-collecting platform.” (Fig. 6d-6k, plug 2').
Regarding claim 15, Korpela teaches all of claim 1 in addition to, wherein the closure part, when viewed from above, has an elongate shape. (Col. 1 lines 31-42- Tubes, as for instance so called Eppendorff tubes, can have a closure solution consisting of a plug fixed in the tube. This is a relatively simple solution for closing a tube. However, tubes with this kind of closing solution are not easy to use, because for opening a small and tightly closed 35 tube, relatively strong effort is needed. Consequently, different devices for opening the plug of this type of tube have been developed.). Therefore Eppendorff tubes have elongate shape closure parts and teach to the shape when viewed from above being elongate shape.
Regarding claim 16, Korpela teaches all of claim 1 in addition to, “wherein the closure part comprises first and second finger-tabs on opposite sides of the closure part,” (Fig. 6d, Col. 8 lines 26-29, The purpose of the wall thickness of the boss 19 greater than the wall thickness of the other portions of the plug 2' is to function, when needed, as a seal, when the test tube 28 is closed with the plug 2'.).
The recitation “to enable it to be gripped by a user's thumb and finger in use” is capability of the closure part however taught within (Fig. 6d).
The recitations “optionally wherein the first and second finger-tabs extend below the bead- collecting surface and can act as a stand for supporting the lid assembly in an upright orientation when separated from the closure part; optionally wherein the first and second finger-tabs extend above the bead- collecting surface and can act as a stand for supporting the lid assembly in an upside- down orientation; optionally wherein the bead-collecting platform extends parallel to, and separate from, the first and second finger-tabs.” is optional features of the present claimed invention. Korpela teaches to all of the positively required claimed features.
Regarding claim 20, Korpela teaches all of claim 1 in addition to, “wherein the bead-collecting surface incorporates a recessed or concave region; or wherein the bead-collecting surface is convex; or wherein the bead-collecting surface incorporates an array of depressions or recesses.” (Fig. 6d-6k, outside tip of plug 2' is convex shaped, which is where the magnetic particles 24 are shown within Fig. 6e).
Regarding claim 23, Korpela teaches all of claim 1 in addition to, “wherein the bead-collecting surface incorporates a fluid wicking member.” (Col. 11 lines 21-22 and col. 5 lines 8-13, The plug can be manufactured from elastic material and the vessel from inelastic material. The elasticity of the plug can be achieved by appropriate choice of material of the plug or of its parts. Especially suitable material include elastomeric materials, such as silicone rubber, caoutchouc, fluorosilicon, fluoroelastomers,). Therefore, a plug of polyurethane which has the bead-collecting surface on it is fluid wicking member.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Korpela et. al. (US-7347338-B2) as applied to claim 1 and in further view of Singh et. al. (WO 2012154257 A1).
Regarding claim 14, Korpela teaches all of claim 1 as above but does not teach “attachment part comprises a snap-fit mechanism.”.
Singh teaches capture antibodies immobilized or restrained on a solid support such as magnetic beads in addition to “attachment part comprises a snap-fit mechanism.” (Para [0106], This upper portion 201 can optionally have a cap 215 that snaps shut to prevent spilling of the sample.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Korpela to incorporate the teachings of Singh wherein the attachment part comprises a snap-fit mechanism. Doing so would prevent spilling of the sample as taught within Korpela.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VELVET E HERON whose telephone number is (571)272-1557. The examiner can normally be reached M-F.
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/V.E.H./Examiner, Art Unit 1798
/CHARLES CAPOZZI/Supervisory Patent Examiner, Art Unit 1798
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