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 with traverse of Group I and of species A.2, B.2, and C.3 in the reply filed on 05/11/2026 is acknowledged. The traversal is on the ground(s) that: 1. DE 202011110503 U1: the large common chamber of the cited reference supplies multiple filling openings and therefore is not a reservoir suitable for filling only one well. Specifically, the large common chamber is designed to fill multiple wells. If, instead, it was treated as the fluid reservoir, the below figure still does not disclose the required off-center relationship between the filling opening and the outlet; and 2. US 2018/0284102 A1: the geometric sum of the output results in a different output direction. This is not found persuasive because: 1. The upper middle chamber in Fig. 1d of DE 202011110503 U1 would read on the claimed liquid reservoir. 2. As to US 2018/0284102 A1, it is noted that the features upon which applicant relies (i.e., the geometric sum of the output) are not recited claim 1.
See also Desilets et al. (US 2006/0286003 A1) below.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1, 2, 4 and 6 are being examined.
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, 2, 4 and 6 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.
Claim 1 recites the limitation "the filling nozzle" in L6. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the axis of symmetry" in L8. There is insufficient antecedent basis for this limitation in the claim.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 and 2 is/are rejected under 35 U.S.C. 102a1/a2 as being anticipated by Desilets et al. (US 2006/0286003 A1).
Regarding claim 1, Desilets et al. teach:
1. Device (e.g., 10) comprising
a flat attachment (e.g., 20) for a microtiter plate (e.g., 30) having one or more liquid reservoirs (e.g., 22) capable for filling in each case one well (e.g., 32) of the microtiter plate per liquid reservoir (see Fig. 3 for example),
wherein each liquid reservoir having an upper filling opening (i.e., opening of 22) capable for receiving a filling liquid, one or more lower filling nozzles (i.e., lower side of 22) capable for dispensing the filling liquid into the well of the microtiter plate (see Fig. 3 for example), and
a reservoir wall (i.e., body of the filter plate 20 including the filter plate well 22 and legs 34) connecting the filling opening and the filling nozzle to one another (see Fig. 3 for example), wherein the filling nozzle is arranged eccentrically to the axis of symmetry of the microtiter plate well and eccentrically to the axis of symmetry of the filling opening of the filling device in a partial region of the reservoir wall (see i.e., reference point R of a receiver well 32 and reference point K of a corresponding filter plate well 22 do not align; ¶ 0024 & Fig. 8b for example).
Regarding claim 1, Desilets et al. meet all the structural limitations recited by the instant invention. Applicants’ preamble recites “for simultaneous filling of microtiter plate wells by means of centrifugal forces”. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
With regard to limitations in claim 1 (e.g., [...] for a microtiter plate having one or more liquid reservoirs for filling in each case one well of the microtiter plate per liquid reservoir, [...]
for receiving a filling liquid, one or more lower filling nozzles for dispensing the filling liquid into the well of the microtiter plate), these claim limitations are considered process or intended use limitations, which do not further delineate the structure of the claimed apparatus from that of the prior art. The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
Regarding claims 2, Desilets et al. teach: 2. Device according to claim 1, wherein the reservoir wall of the liquid reservoir is designed asymmetrically in the course from the filling opening to the filling nozzle (see i.e., reference point R of a receiver well 32 and reference point K of a corresponding filter plate well 22 do not align; ¶ 0024 & Fig. 8b for example).
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 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Desilets et al. (US 2006/0286003 A1) in view of Kvist et al. (WO 2020/15726 9 A1).
Regarding claims 4 and 6, Desilets et al. teach:
4. Device according to claim 1, wherein at least a partial area of the reservoir wall has an angle in the vertical course from the filling opening to the lower end of the liquid storage tank (see Figs. 3-4 for example; see also incorporated reference at ¶ 0004 WO 02/102962 showing at least a partial area of a reservoir wall has two different angles in the vertical course from the filling opening (Fig. 5 108; Figs. 6A-6B)).
6. Device according to claim 1, wherein the filling nozzle or the filling nozzles are round or oval in shape (see Fig. 8b for example).
However, Desilets et al. do not explicitly teach: 4. Device according to claim 1, wherein at least a partial area of the reservoir wall has two different angles in the vertical course from the filling opening to the lower end of the liquid storage tank with an angular difference of greater than or equal to 5° and less than or equal to 45°. 6. Device according to claim 1, wherein the filling nozzle or the filling nozzles have a diameter greater than or equal to 0.01 mm and less than or equal to 2 mm.
Kvist et al. teach:
wherein at least a partial area of a reservoir wall has two different angles in the vertical course from a filling opening to a lower end of a liquid storage tank with an angular difference of greater than or equal to 5° and less than or equal to 45° (see P31/L32-P32/L4; P44/L2-20+ for example).
wherein a filling nozzle or filling nozzles are round or oval in shape and have a diameter greater than or equal to 0.01 mm and less than or equal to 2 mm (see P33/L27-31+ for example).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the device of Desilets et al. with the teachings of Kvist et al. to facilitate a complete withdrawal of the liquids during operation (Kvist et al. P31/L32-P32/L4). The Court in KSR, “[w]hen 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”, 550 U.S. at ___, 82 USPQ2d at 1396 (emphasis added), or solves a problem which is different from that which the applicant was trying to solve, may also be considered for the purposes of 35 U.S.C. 103. See MPEP 2141. Therefore, selecting appropriate dimension, such as different angles and diameters for the design of the device would have been obvious to one of ordinary skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEAN KWAK whose telephone number is (571)270-7072. The examiner can normally be reached M-TH, 4:30 am - 2:30 pm EST.
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, CHARLES CAPOZZI can be reached at (571)270-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEAN KWAK/Primary Examiner, Art Unit 1798
DEAN KWAK
Primary Examiner
Art Unit 1798
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