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 in the reply filed on 12/30/25 is acknowledged. The traversal is on the ground(s) that the recited method requires all of the features of the apparatus device and are substantial to the operation of the processor. This is not found persuasive because the apparatus device as currently claimed recites a general purpose controller that does not include a program with the recited method of claims 17-18 and the apparatus is not required to perform only the recited method. Therefore, the requirement is still deemed proper and is therefore made FINAL. Claims 18 and 19 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5, 7, 8, 11, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,066,203. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claims 1, 11 and 16 – Claims 1-17 of the ‘203 Patent recites a body having a seating portion (basket, claims 1 and 13) where the test tube inserted into the test tube labeling apparatus is seated, and at least a portion of the seating portion is formed to correspond to the outer appearance of the test tube; a rotation driving unit (swing bar, claims 1 and 13) for rotating the seating portion with respect to the body in response to the test tube being seated on the seating portion; and a contact sensor (first sensor, claim 13) rotatably fixed with respect to the body at a position corresponding to an upper portion of the seating portion and detecting a contact with the test tube seated on the seating portion; an angle sensor (second sensor, claim 13) measuring rotation angle information of the rotation driving unit; a label attaching device positioned inside the body and attaching a label to the test tube; and a processor operatively connected to the rotation driving unit, the contact sensor, the angle sensor, and the label attaching device.
Regarding claims 1-5 – Claims 1-17 of the ‘203 Patent recite a controller for receiving information from a first and second sensor and then controlling the device to rotate and rotation driving unit and label attaching apparatus. The instant claims recite a processor operative connected to the rotation unit, sensors, and label attaching device, but the instant claims do not recite software or specific program. The Examiner submits the processor recited in the instant claims is capable of performing the functional limitations recited in the claims. Therefore, the controller of Kang meets the instant claims.
Regarding claims 7 and 8 – Claims 1-17 of the ‘203 Patent recite “a first area including a first groove and in which the cap is disposed; a second area including a second groove and in which the end of the tube is disposed; and a third area located between the first area and the second area and in which a portion of the tube is disposed” in reciting the first buffer, second buffer, inclined wall and seating groove in the claims 2-6 and 13-16 of the patented claims.
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 1-17 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 of the processor receives rotation angle information generated from the angle sensor, identifies information on the outer diameter of the test tube based on the received rotation angle information, identifies the test tube by comparing information on the outer diameter of the identified test tube with pre-stored test tube identification information, identifies the labeling information corresponding to the identified test tube, and controls the label attaching device so that the label attaching device may attach a label printed with the identified labeling information to the identified test tube. The Examiner submits the highlighted terms are unclear as it is unclear to the Examiner as to what combination and/or functions of features are required to allow for the processor to control the movement and interaction(s) of the label attaching device, rotation driving unit, and seating portion such that the result is the positioning of the label attaching device and the test tube in a manner that a label may be attached to the test tube by the label attaching device. The Examiner notes claims 2-17 are also rejected based on being dependent upon claim 1.
Claim 2 recites the limitation "the test tube identification information" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 5 recites the term “it” in line 4. The Examiner submits it is unclear as to which element of the device is being referred to with the term “it”.
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.
Claims 1-5, 7, 8, 11 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kang et al. (US 20190389612). Kang teaches an automatic alignment and label attachment apparatus for test tubes. The portions of the device most relevant to the instant claims are shown in Figures 1A-3E.
Regarding claims 1, 11 and 16 – As shown in Figures 1A-3E, Kang recites a body having a seating portion (baskets 1100) where the test tube (2000) inserted into the test tube labeling apparatus is seated, and at least a portion of the seating portion is formed to correspond to the outer appearance of the test tube; a rotation driving unit (swing bar 1210) for rotating the seating portion with respect to the body in response to the test tube (2000) being seated on the seating portion; and a contact sensor (first sensor 1225) detecting a contact with the test tube seated on the seating portion; an angle sensor (second sensor 1237) measuring rotation angle information of the rotation driving unit; a label attaching device (1100) positioned inside the body and attaching a label to the test tube (2000); and a processor operatively connected to the rotation driving unit (1210), the contact sensor (1225), the angle sensor (1237), and the label attaching device (1100). See also claims 1 and 10-17. Kang recites use of a controller (not shown) throughout the Specification.
Regarding claims 1-5 – Kang teaches a controller for receiving information from a first and second sensor and then controlling the device to rotate and rotation driving unit and label attaching apparatus. The instant claims recite a processor operative connected to the rotation unit, sensors, and label attaching device, but the instant claims do not recite software or specific program. The Examiner submits the processor recited in the instant claims is capable of performing the functional limitations recited in the claims. Therefore, the controller of Kang meets the instant claims.
Regarding claims 7 and 8 – Kang discloses “a first area including a first groove (groove 1221) and in which the cap is disposed; a second area including a second groove (1231) and in which the end of the tube is disposed; and a third area (buffers 1220, 1230) located between the first area (groove 1221) and the second area and in which a portion of the tube is disposed” in Figure 2B and Paragraphs 0028-0043.
Allowable Subject Matter
Claims 6, 10, 12-15 and 17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DWAYNE K HANDY whose telephone number is (571)272-1259. The examiner can normally be reached M-F 10AM-7PM.
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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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/DWAYNE K HANDY/Examiner, Art Unit 1798 May 30, 2026
/CHARLES CAPOZZI/Supervisory Patent Examiner, Art Unit 1798
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